Exhibit 1
`
`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 1 of 100 PageID #: 2001
`
`
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 2 of 100 PageID #: 2002
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Plaintiffs,
`
`Defendants.
`
`)
`)
`)
`)
`)
`) C.A. No. 2:15-CV-37-RWS-RSP
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`ELBIT SYSTEMS LAND AND C4I LTD.; and
`ELBIT SYSTEMS OF AMERICA, LLC,
`
`
`
`v.
`
`
`HUGHES NETWORK SYSTEMS, LLC;
`BLACK ELK ENERGY OFFSHORE
`OPERATIONS, LLC; BLUETIDE
`COMMUNICATIONS, INC.; and COUNTRY
`HOME INVESTMENTS, INC.,
`
`
`
`
`
`DEFENDANTS’ JOINT INVALIDITY CONTENTIONS
`
`Pursuant to Local Patent Rule (“P.R.”) 3-3 and the Docket Control Order (Dkt. No. 57),
`
`Defendants Hughes Network System, LLC; Bluetide Communications, Inc.; and Country Home
`
`Investments, Inc. (collectively “Defendants”)1 respectfully set forth their invalidity contentions
`
`for the asserted claims of the patents-in-suit, U.S. Patent No. 6,240,073 (the ‘073 Patent) and
`
`U.S. Patent No. 7,245,874 (the “874 Patent”).
`
`Defendants’ invalidity contentions address the following claims of the patents-in-suit,
`
`which are the claims currently asserted by Plaintiffs Elbit Systems Land and C4I LTD. and Elbit
`
`System of America, LLC (“Elbit”) according to its Infringement Contentions of December 3,
`
`2015:
`
`
`
`
`1 Black Elk Energy Offshore Operations, LLC is currently stayed. D.I. 56.
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 3 of 100 PageID #: 2003
`
`
`Patent
`‘073 patent
`‘874 patent
`
`2, 3, 4, 5, 6, 7 and 28
`1, 2, 3, 4, 5, 7, 8, 9, 11, and 12
`
`Claims Addressed
`
`To the extent that Defendants’ P.R. 3-3 invalidity contentions rely on or otherwise em-
`
`body particular constructions of terms or phrases in the asserted claims, Defendants are not pro-
`
`posing any such constructions as proper constructions of those terms or phrases at this time. The
`
`Court established separate deadlines for the parties’ proposed claim constructions in the Docket
`
`Control Order (Dkt. No. 57), and Defendants will disclose their proposed constructions accord-
`
`ing to those deadlines. For purposes of these invalidity contentions, Defendants may adopt alter-
`
`native claim construction positions and will generally apply the broadest conceivable construc-
`
`tions of each term or phrase. In particular, certain of these invalidity contentions may be based
`
`on claim constructions that appear to underlie Elbit’s infringement contentions. Defendants,
`
`however, do not concede that Elbit’s apparent constructions are proper, and reserve the right to
`
`contest any such constructions. Moreover, Defendants do not admit that any accused product,
`
`method, or service, or any of Defendants’ other products, methods, or services, infringe any of
`
`the asserted claims. Nothing stated herein shall be treated as an admission or suggestion regard-
`
`ing either the scope of any of the asserted claims or that any of the accused technology meets any
`
`limitations of the asserted claims.
`
`Nothing stated herein shall be construed as an admission or a waiver of any particular
`
`construction of any claim term. Moreover, the use of terms herein from the patents-in-suit
`
`should not be understood to mean that such terms as used in the patents-in-suit or claims thereof
`
`are definite or otherwise comply with 35 U.S.C. § 112. Likewise, the use of terms herein from
`
`the patents-in-suit should not be understood to suggest or imply a common, usual, ordinary, cus-
`
`tomary, plain, or accepted meaning in the art for any such term.
`
`
`
`2
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 4 of 100 PageID #: 2004
`
`
`Pursuant to P.R. 3-3(c), Defendants have, in the attached appendices, identified where the
`
`prior art references disclose subject matter recited in preambles of the asserted claims, without
`
`regard to whether the preambles are properly considered to be limitations of the asserted claims.
`
`Defendants reserve the right to argue that the preambles are or are not limitations during the
`
`claim construction proceedings in this case.
`
`Defendants’ invalidity contentions are based on their current knowledge of the patents-in-
`
`suit, the prior art, Elbit’s infringement contentions, and upon information presently and reasona-
`
`bly available to Defendants. This litigation is in the early stages and Defendants’ investigation
`
`of the prior art is ongoing. Defendants reserve the right to supplement, amend, modify, revise, or
`
`correct any aspect of their invalidity contentions, and to provide additional information as such
`
`information becomes available through discovery or otherwise. In particular, Defendants reserve
`
`the right to supplement their invalidity contentions as discovery continues and after the Court’s
`
`claim construction rulings.
`
`Defendants reserve the right to supplement their invalidity contentions should Elbit sub-
`
`sequently attempt to amend its P.R. 3-1 or 3-2 disclosures in any way, (e.g., via P.R. 3-1(g) as
`
`modified in the Discovery Order of December 2, 2015), or to otherwise modify their infringe-
`
`ment allegations against Defendants or seek to establish an earlier date of invention (while re-
`
`serving all rights to challenge any attempt by Elbit to do so). Defendants identify obviousness
`
`combinations below and, to the extent Plaintiffs allege that a reference does not disclose or teach
`
`a specific element, Defendants specifically identify which references render that element obvious
`
`as well as reasons to combine such references. Nevertheless, Defendants acknowledge that the
`
`Parties are discussing, and intend to enter into, an order to limit asserted claims and prior art ref-
`
`erences. Accordingly, at the time that Defendants are required to reduce the number of prior art
`
`
`
`3
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 5 of 100 PageID #: 2005
`
`
`references, Defendants expressly reserve the right to update the of specific obviousness combina-
`
`tions in accordance with such reduction.
`
`I.
`
`‘874 PATENT - INVALIDITY UNDER 35 U.S.C. §§ 102 AND 103
`
`The asserted claims are invalid as anticipated by the prior art under various subsections of
`
`35 U.S.C. § 102 and/or as obvious in view of the prior art under 35 U.S.C. § 103. Pursuant to
`
`P.R. 3-3(c), the charts attached as appendices to these invalidity contentions set forth how prior
`
`art identified by Defendants anticipates either expressly or inherently, and/or renders obvious,
`
`each asserted claim. Defendants cite the most relevant portions of the identified prior art refer-
`
`ences. However, other portions of the identified prior art may additionally anticipate, either ex-
`
`pressly or inherently, and/or render obvious one or more of the asserted claims.
`
`Where Defendants cite a particular drawing or figure in the accompanying charts, the ci-
`
`tation encompasses the description of the drawing or figure, as well as any text associated with
`
`the drawing or figure (even if the associated text is not itself expressly cited). Similarly, where
`
`Defendants cite particular text concerning a drawing or figure in the accompanying charts, the
`
`citation encompasses that drawing or figure as well (even if the associated drawing or figure is
`
`not expressly cited).
`
`Certain pieces of identified prior art inherently disclose features of the asserted claims.
`
`Defendants may rely on inherency to demonstrate the invalidity of the asserted claims. Moreo-
`
`ver, certain prior art references and solutions may inherently anticipate certain features of the
`
`asserted claims as construed by Elbit. Defendants may rely on other portions of the prior art,
`
`other documents, and expert testimony to establish the inherency of certain features of the prior
`
`art to invalidate the asserted claims. Defendants also may rely on any reference identified in
`
`these invalidity contentions or any other reference to prove that the references are enabled or to
`
`explain the meaning of a term used in the solutions or any reference.
`
`
`
`4
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 6 of 100 PageID #: 2006
`
`
`A.
`
`Admitted Prior Art
`
`The ‘874 Patent acknowledges that all of the following was prior art:
`
` Cellular networks “comprise a series of base stations arranged to allow mobile
`
`stations within range of the network to contact other mobile stations and be able
`
`to access the public switched telephone network (PSTN).” ‘874 Patent 1:13-16.
`
` Cellular base stations maintain wireless communication links with nearby mobile
`
`stations” and “generally require hard infrastructure in the form of wiring to link
`
`the base stations to other parts of the cellular network and to outside networks and
`
`backbone networks.” Such “hard infrastructure” may include “backup provi-
`
`sion[s]”. ‘874 Patent 1:16-23.
`
` “The telephony system including cellular networks and the PSTN, is generally
`
`based on the E1, or possibly T1, protocol for multiplexing transmissions into time
`
`slots.” Those protocols are “strongly synchronous in that the individual transmis-
`
`sion to which a time slot is assumed to belong to is determined from its temporal
`
`position amongst the other time slots.” ‘874 Patent 1:26-31.
`
` The TCP/IP protocol “involves individual data packets being sent out over a net-
`
`work in accordance with destination information contained in a packet header. A
`
`single transmission is thus broken down into numerous packets which are each
`
`sent out independently over the network. The packets may be sent along different
`
`routes depending on availability and may not arrive in the order in which they
`
`have been sent. However the packet headers may be used by the receiving appli-
`
`cation to rebuild an original sequence from the packets.” ‘874 Patent 34-43.
`
`
`
`5
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 7 of 100 PageID #: 2007
`
`
`B.
`
`Prior Art References
`
`Pursuant to P.R. 3-3(a), and in light of Elbit’s infringement contentions, Defendants iden-
`
`tify the following prior art references and systems now known to Defendants that anticipate
`
`and/or render obvious one or more of the asserted claims:
`
`Author/Inventor Title
`
`Date
`
`Patent Number/
`Patent Country
`of Origin
`N/A
`
`Short Name
`
`PES
`
`3/23/1990
`
`Nov. 1991
`
`N/A
`
`PES*
`
`8/25/1998
`
`N/A
`
`1/10/1997
`
`N/A
`
`PES*
`
`PES*
`
`4/1/2000
`
`N/A
`
`Hassan
`
`1993
`
`N/A
`
`Normoyle
`
`12/1/1999
`
`N/A
`
`Whang
`
`6/29/1995
`(11/18/1997)
`
`US 5,689,568
`
`Laborde
`
`2000
`
`N/A
`
`EUROSKYWAY
`
`Hughes Network
`Systems (HNS)
`
`Hughes Network
`Systems (HNS)
`
`Hughes Network
`Systems (HNS)
`
`Hughes Network
`Systems (HNS)
`
`Hassan et al.
`
`Normoyle et al.
`
`Whang et al.
`
`Laborde
`
`Losquadro &
`Marziale
`
`Personal earth sta-
`tion (PES) network
`system theory of
`operation
`Integrated Satellite
`Business Network
`System Theory of
`Operation, Release
`7.2
`G-13327 – ISBN
`Voice Communica-
`tions
`G-4911 – ISBN Op-
`timized Transmis-
`sion
`Internet Telephony:
`Services, Technical
`Challenges, and
`Products.
`A Tactical Deploya-
`ble Wireless Multi-
`media LAN
`Network Element
`Management Archi-
`tecture for the 7 R/E
`Trunk Access Gate-
`way
`Medium Access
`Control for a Mobile
`Satellite System
`The
`EUROSKYWAY
`Network with On
`Board Processing to
`Support Fast Inter-
`
`
`
`6
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 8 of 100 PageID #: 2008
`
`
`Author/Inventor Title
`
`Date
`
`Patent Number/
`Patent Country
`of Origin
`
`Short Name
`
`net and Interactive
`TV Services for
`Residential Users
`Idle Mode Meas-
`urement
`
`Method and System
`for Providing Rural
`Subscriber Telepho-
`ny Service Using an
`Integrated Satel-
`lite/Cell System
`Method and Appa-
`ratus for Selectively
`Retrieving Infor-
`mation from a
`Source Computer
`Using a Terrestrial
`or Satellite Interface
`Low Earth Orbit
`Communication
`Satellite Gateway-
`to-Gateway Relay
`System
`ISDN-to-ISDN
`Communication Via
`Satellite Microwave
`Radio Frequency
`Communications
`Link
`Two-system proto-
`col conversion
`transceiver repeater
`Interface circuit for
`interfacing between
`asynchronous data
`in start/stop format
`and synchronous
`data
`Asynchronous data
`transmission method
`and arrangement
`
`Grayson et al.
`
`Youssefzadeh et
`al.
`
`Dillon et al.
`
`Wiedeman
`
`Chen et al.
`
`Wiedeman
`
`Dellande
`
`Rasanen
`
`
`
`6/24/1998
`2/16/1999
`(5/4/2004)
`11/16/1998
`(3/6/2001)
`
`US 6,731,931
`
`Grayson
`
`US 6,198,921
`
`Youssefzadeh
`
`5/21/1998
`(10/19/1999)
`
`US 5,968,129
`
`Dillon
`
`6/6/1995
`(5/27/1997)
`
`US 5,634,190
`
`Wiedeman
`
`9/10/1993
`(5/2/1995)
`
`US 5,412,660
`
`Chen
`
`US 5,640,386
`
`Wiedeman 386
`
`US 4,569,062
`
`Dellande
`
`US 6,292,496
`WO1997/018660
`
`Rasanen
`
`06/06/1995
`(06/17/1997)
`
`06/28/1984
`(02/04/1986)
`
`11/15/1995
`11/13/1996
`06/19/1998
`(09/18/2001)
`
`7
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 9 of 100 PageID #: 2009
`
`
`Author/Inventor Title
`
`Data/Voice/Fax Ad-
`vanced Priority Sta-
`tistical Multiplexer
`Apparatus and
`Method for Provid-
`ing T1/E1 Tele-
`communications
`Trunks Over IP
`Networks
`TDM Over IP (IP
`Circuit Emulation
`Service)
`Trunked Radio Fre-
`quency Communica-
`tion System for Ac-
`commodating Both
`Frequency and Time
`Division Based RF
`Communications
`Protocols, Perfor-
`mance, and Controls
`for Voice over Wide
`Area Packet Net-
`works
`Voice over IP Ser-
`vice and Perfor-
`mance in Satellite
`Networks
`The Lucent Tech-
`nologies Softswitch-
`-Realizing the Prom-
`ise of Convergence
`C6x Solutions for
`Voice Over IP
`Gateway
`Voice over ATM
`High Bandwidth
`Transmission Sys-
`tem and Method
`Having Local Inser-
`tion, Delay Play and
`Demand Play
`Method and Appa-
`
`Arimilli
`
`Cox
`
`Silverman
`
`Janky
`
`Doshi et al.
`
`Nguyen et al.
`
`Lakshmi-Ratan
`
`Cassing
`
`Chambers et al.
`Hinderks
`
`Lim
`
`
`
`Date
`
`Patent Number/
`Patent Country
`of Origin
`11/2/1995 WO 1995/29576
`(corresponding to
`US 6,275,502)
`US 6,459,708
`
`12/21/1999
`(10/1/2002)
`
`Short Name
`
`Arimilli
`
`Cox
`
`7/26/2000
`(5/4/2004)
`
`12/20/1994
`(8/4/1998)
`
`US 6,731,649
`
`Silverman
`
`US 5,790,527
`
`Janky
`
`12/1/1998
`
`N/A
`
`Doshi
`
`3/1/2001
`
`N/A
`
`VOIP
`
`6/1/1999
`
`N/A
`
`Lucent
`Softswitch
`
`1998
`
`N/A
`
`Cassing
`
`Chambers
`N/A
`US 2001/0025377 Hinderks
`
`12/1/1998
`12/30/1999
`12/29/2000
`(9/27/2001)
`
`7/31/2001
`
`US 7,065,321
`
`Lim
`
`8
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 10 of 100 PageID #: 2010
`
`
`Author/Inventor Title
`
`Date
`
`ratus of Using Satel-
`lites to Augment
`Traffic Capacity of a
`Wireless Network
`Infrastructure
`System for Selec-
`tively Routing Data
`Via Either a Net-
`work that Supports
`Internet Protocol or
`Via Satellite Trans-
`mission Network
`Based on Size of the
`Data
`Remote Connection
`Control Using a
`Tunneling Protocol
`Satellite Internet
`Backbone Network
`System using Virtu-
`al Onboard Switch-
`ing
`A New Satellite
`Communication
`System Integrated
`into Public Switched
`Networks-DYANET
`Broadband Satellite
`Systems
`COMSYS VSAT
`Report
`Internet Calling Ap-
`paratus and Method
`Self-Contained
`Demonstration Node
`in a Satellite Based
`Content Delivery
`System
`Enhanced Integrated
`Data Delivery Sys-
`tem
`Internet Communi-
`cation System and
`
`Willis et al.
`
`Valentine et al.
`
`Massey
`
`Ohnuki et al.
`
`Bem et al.
`
`COMSYS
`
`Hakim et al.
`
`Lausier
`
`Kikinis
`
`Puente et al.
`
`
`
`Patent Number/
`Patent Country
`of Origin
`
`Short Name
`
`(6/20/2006)
`
`8/18/1997
`(5/7/2002)
`
`US 6,385,647
`
`Willis
`
`10/15/1997
`(3/28/2000)
`
`2/23/2001
`(10/4/2001)
`
`US 6,044,070
`
`Valentine
`
`US 2001/0026537 Massey
`
`2/1/1992
`
`N/A
`
`DYANET
`
`2000
`
`2001
`
`N/A
`
`N/A
`
`Bem
`
`VSAT report
`
`US 2002/0167943 Hakim
`
`US 7,174,373
`
`Lausier
`
`US 6,289,389
`
`Kikinis
`
`US 6,038,594
`
`Puente
`
`1/2/1998
`(11/14/2002)
`3/13/2001
`9/21/2001
`(2/6/2007)
`
`6/3/1997
`(9/11/2001)
`
`2/2/1998
`(3/14/2000)
`
`9
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 11 of 100 PageID #: 2011
`
`
`Author/Inventor Title
`
`Date
`
`Patent Number/
`Patent Country
`of Origin
`
`Short Name
`
`Nokia
`
`Punj
`
`Europe Online
`Networks
`
`Henkel et al.
`
`Brueckheimer et
`al.
`
`Lev
`
`Zheng
`
`J.L. Massey
`
`Method with
`Asymmetric Terres-
`trial and Satellite
`Links
`User terminal for
`mobile communica-
`tions
`Telecommunications
`System with Syn-
`chronous-
`Asynchronous Inter-
`face
`Integrated High
`Speed Terrestrial &
`Satellite Communi-
`cations Systems for
`Internet and Other
`Uses
`Method and System
`for Controlling the
`Use of Satellite
`Transmission Ca-
`pacity in Terrestrial
`Networks
`Asynchronous trans-
`fer mode adaptation
`arrangements
`Method for transmit-
`ting data packets
`based on message
`type
`Data transmission
`system and schedul-
`ing protocol for
`connection-oriented
`packet or cell
`switching networks
`Some New Ap-
`proaches to Ran-
`dom—Access
`Communications,
`Reprinted from Per-
`formance 87, pp.
`
`
`
`10
`
`8/7/1998
`
`EP 0,852,448
`
`Nokia
`
`12/7/1994
`(5/21/1996)
`
`US 5,519,700
`
`Punj
`
`4/8/1999
`(12/10/2000)
`
`WO 2000/060770 EON
`
`7/1/1997
`6/19/1998
`(01/28/1999)
`
`7/2/1999
`(2/11/2003)
`
`5/9/1994
`(3/17/1998)
`
`4/7/1994
`(2/21/1995)
`
`CA 2290967
`
`Henkel
`
`US 6,519,261
`
`Brueckheimer
`
`US 5,729,544
`
`Lev
`
`US 5,392,280
`
`Zheng
`
`1998
`
`N/A
`
`Massey 1
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 12 of 100 PageID #: 2012
`
`
`Author/Inventor Title
`
`Date
`
`Patent Number/
`Patent Country
`of Origin
`
`Short Name
`
`J.L. Massey and
`P. Mathys
`
`McKenna et al.
`
`Hughes Network
`Systems (HNS)
`
`Bonomi et al.
`
`Meier-Hellstern
`et al.
`
`Everitt
`
`ITU-T
`
`551-569, 1988 ‘P.J.
`Courtois and G.
`Latouche, Eds. New
`York : Elsevier Sci-
`ence, 1998
`“The Collision
`Channel Without
`Feedback,” IEEE
`Trans. Inform. The-
`ory, vol. IT-31, pp.
`192-204
`System for integrat-
`ing an airborne
`wireless cellular
`network with terres-
`trial wireless cellular
`networks and the
`public switched tel-
`ephone network
`Hughes Network
`Systems (HNS) Dig-
`ital Cellular Systems
`(DCS) E-TDMA
`Interoperability
`Specification, Ver-
`sion 0.3
`Carrying Frame-
`Relay Traffic over
`ATM Backbone
`The Use of SS7 and
`GSM to Support
`High Density Per-
`sonal Communica-
`tions
`Analytic Traffic
`Models of CDMA
`Cellular Networks
`G.711 – Pulse code
`modulation (PCM)
`of voice frequencies
`Appendix II: A
`comfort noise pay-
`load definition
`
`
`
`11
`
`Mar. 1985
`
`N/A
`
`Massey 2
`
`US 7,113,780
`
`McKenna
`
`3/6/1992
`12/7/2003
`(9/26/2006)
`
`12/10/1991 N/A
`
`DCS
`
`1994
`
`1992
`
`N/A
`
`N/A
`
`Bonomi
`
`Meier-Hellstern
`
`1994
`
`N/A
`
`Feb. 2000
`
`N/A
`
`Everitt
`
`PCM
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 13 of 100 PageID #: 2013
`
`
`Author/Inventor Title
`
`Date
`
`Patent Number/
`Patent Country
`of Origin
`
`Short Name
`
`J. Labetoulle et
`al.
`
`for ITU-T G.711 use
`in packet-based mul-
`timedia
`communication sys-
`tems
`“The Fundamental
`Role of Teletraffic
`in the Evolution of
`Telecommunications
`Networks”
`(ELSEVIER)
`
`April 1994
`
`N/A
`
`Labetoulle
`
`C.
`
`Anticipation
`
`The prior art references or items listed below anticipate the asserted claims identified be-
`
`low, and thus those claims are invalid under 35 U.S.C. § 102(a), (b), (e) and/or (g). Pursuant to
`
`P.R. 3-3(c), each of the following charts identifies where specifically in each alleged item of pri-
`
`or art each element of each anticipated claim is found:
`
`
`
`
`
`
`
`Prior Art
`
`PES
`
`Silverman
`
`Cox
`
`Arimilli
`
`Chambers
`
`Lim
`
`Doshi
`
`‘874 Patent
`
`Claims Anticipated
`(implicitly or inherently)
` or Obvious
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`Appendix
`
`A1
`
`A2
`
`A3
`
`A4
`
`A5
`
`A6
`
`A7
`
`
`
`12
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 14 of 100 PageID #: 2014
`
`
`
`
`
`
`
`
`Prior Art
`
`Hassan
`
`Normoyle
`
`Whang
`
`Laborde
`
`EUROSKYWAY
`
`Grayson
`
`Youssefzadeh
`
`Dillon
`
`Wiedeman
`
`Chen
`
`Wiedeman 386
`
`Dellande
`
`Rasasen
`
`Janky
`
`VOIP
`
`Lucent Softswitch
`
`Cassing
`
`Hinderks
`
`Willis
`
`Valentine
`
`Massey
`
`‘874 Patent
`
`Claims Anticipated
`(implicitly or inherently)
` or Obvious
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`Appendix
`
`A8
`
`A9
`
`A10
`
`A11
`
`A12
`
`A13
`
`A14
`
`A15
`
`A16
`
`A17
`
`A18
`
`A19
`
`A20
`
`A21
`
`A22
`
`A23
`
`A24
`
`A25
`
`A26
`
`A27
`
`A28
`
`
`
`13
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 15 of 100 PageID #: 2015
`
`
`
`
`
`
`
`
`Prior Art
`
`DYANET
`
`VSAT report
`
`Hakim
`
`Lausier
`
`Kikinis
`
`Puente
`
`Nokia
`
`Punj
`
`EON
`
`Brueckheimer
`
`DCS
`
`
`
`D.
`
`Obviousness
`
`‘874 Patent
`
`Claims Anticipated
`(implicitly or inherently)
` or Obvious
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`1, 2, 3, 4, 5, 7, 8, 9, 11, 12
`
`Appendix
`
`A29
`
`A30
`
`A31
`
`A32
`
`A33
`
`A34
`
`A35
`
`A36
`
`A37
`
`A38
`
`A39
`
`Based on contentions advanced by Plaintiffs in its Infringement Contentions, the asserted
`
`claims are anticipated and/or rendered obvious as set forth in Exhibits A1-A39 and as further
`
`discussed below.
`
`To the extent that any of the references contained in Exhibits A1-A39 are found not to
`
`anticipate the asserted claims, the foregoing references render the asserted claims obvious either
`
`alone or in combination with each other under 35 U.S.C. § 103.
`
`A massive body of relevant, analogous prior art existed as of the effective filing dates of
`
`each of the asserted claims. Taken together, this prior art discloses each and every element of
`
`
`
`14
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 16 of 100 PageID #: 2016
`
`
`every asserted claim. Example combinations of specific prior art references that Defendants may
`
`rely upon at trial to demonstrate the obviousness of the asserted claims are set forth below. Such
`
`obviousness combinations are provided in the alternative to Defendants’ anticipation contentions
`
`and are not to be construed to suggest that any reference included in the combinations is not by
`
`itself anticipatory or that any particular limitation is missing from a particular reference.
`
`Given the scope and content of these prior art references, the lack of any substantial dif-
`
`ferences between these references and the asserted claims, and the level of ordinary skill in the
`
`art at the time of the alleged invention, it would have been obvious to combine the specified ref-
`
`erences. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Moreover, a person of ordinary
`
`skill in the art had a motivation to combine these references because—at a minimum—they all
`
`pertain to the subject of communications systems and most involve the transmission of voice and
`
`other data over synchronous and/or asynchronous media.
`
`One or more combinations of the prior art references identified above would have been
`
`obvious because these references would have been combined using: known methods to yield
`
`predictable results; known techniques in the same way; a simple substitution of one known,
`
`equivalent element for another to obtain predictable results; and/or a teaching, suggestion, or mo-
`
`tivation in the prior art generally. In addition, it would have been obvious to try combining the
`
`prior art references identified above because there were only a finite number of predictable solu-
`
`tions and/or because known work in one field of endeavor prompted variations based on predict-
`
`able design incentives and/or market forces either in the same field or a different one. In addi-
`
`tion, the combination of the prior art references identified above would have been obvious be-
`
`cause the combination represents the known potential options with a reasonable expectation of
`
`success.
`
`
`
`15
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 17 of 100 PageID #: 2017
`
`
`Additional evidence that there would have been a motivation to combine the prior art ref-
`
`erences identified above includes the interrelated teachings of multiple prior art references; the
`
`effects of demands known to the design community or present in the marketplace; the existence
`
`of a known problem for which there was an obvious solution encompassed by the asserted
`
`claims; the existence of a known need or problem in the field of the endeavor at the time of the
`
`invention(s); and the background knowledge that would have been possessed by a person having
`
`ordinary skill in the art.
`
`Thus, the motivation to combine the teachings of the prior art references disclosed herein
`
`is found in the references themselves and: (1) the nature of the problem being solved; (2) the
`
`express, implied and inherent teachings of the prior art; (3) the knowledge of persons of ordinary
`
`skill in the art; (4) the predictable results obtained in combining the different elements of the pri-
`
`or art; (5) the predictable results obtained in simple substitution of one known element for anoth-
`
`er; (6) the use of a known technique to improve similar devices, methods, or products in the
`
`same way; (7) the predictable results obtained in applying a known technique to a known device,
`
`method, or product ready for improvement; (8) the finite number of identified predictable solu-
`
`tions that had a reasonable expectation of success; and (9) known work in various technological
`
`fields that could be applied to the same or different technological fields based on design incen-
`
`tives or other market forces.
`
`Any reference or combination of references that anticipates or makes obvious an asserted
`
`independent claim also makes obvious any asserted claim dependent on that independent claim
`
`because every element of each dependent claim was known by a person of ordinary skill at the
`
`time of the alleged invention, and it would have been obvious to combine those known elements
`
`with the independent claims at least as a matter of common sense and routine innovation. Ac-
`
`
`
`16
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 18 of 100 PageID #: 2018
`
`
`cordingly, Defendants contend that each asserted claim would have been obvious not only by the
`
`combinations explicitly defined in these contentions, but also by any combination of references
`
`that renders obvious an asserted claim.
`
`Numerous prior art references, including those identified above, reflect common
`
`knowledge and the state of the prior art prior to the priority date that Applicants claimed on the
`
`face of the asserted patent.
`
`For at least the reasons described above and below in the examples provided as well as in
`
`the attached claim charts, it would have been obvious to one of ordinary skill in the art to com-
`
`bine any of a number of prior art references, including any combination of those identified in
`
`Exhibits A-1 - A-39, to meet the limitations of the asserted claims. As such, Defendants’ inclu-
`
`sion of exemplary combinations does not preclude Defendants from identifying other invalidat-
`
`ing combinations as appropriate.
`
`To the extent the claim element of “wherein said synchronous data protocol allows non-
`
`data carrying time slots, and said 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 of
`
`said datastream” is not explicitly or inherently disclosed in a charted reference, such an element
`
`is disclosed and/or taught by each of the following prior art references, as specifically indicated
`
`in the attached claim charts for each references:
`
` PES
`
` Arimilli
`
` Chambers
`
`
`
`17
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 19 of 100 PageID #: 2019
`
`
` Everitt2
`
` PCM
`
` Janky
`
` Doshi
`
` DCS
`
` PCM
`
`A person of ordinary skill in the art desiring to provide a conversion between synchro-
`
`nous and asynchronous protocols would seek to do so in a data-sparing manner. Each of the ref-
`
`erences above demonstrate that an obvious way to save bandwidth would be to omit transmission
`
`of non-data carrying time slots. E.g, Doshi, 308 (“For wide area networking, the early motivat-
`
`ing factor was the use of voice compression and silence suppression to reduce the transport
`
`bandwidth requirement.”); Arimilli, 4:6-8 (“In voice over data communications it is possible to
`
`greatly reduce bandwidth allocated to the high priority voice packet information by eliminating
`
`transmissions of repeated silence packets.”); Janky at 7:47-52 (“The slow associated control
`
`channel (SACCH) field includes control information sent simultaneously with the voice/data.
`
`SACCH data preferably replace sub-audible data used in existing FDMA land mobile radio
`
`(LMR) systems such as the EDACS system described above and provide various LMR functions
`
`such as priority scan.”). Here to, each of the identified prior art references deals with communi-
`
`cations systems Given that these issues are the exact issues that are dealt with by, and are the
`
`focus of, the ‘874 Patent, a person of ordinary skill in the art at the time of invention would have
`
`been motivated to combine the teachings of the specifically identified prior art references with
`
`
`2 E.g., Everitt at pg. 350-51 (“An important feature of CDMA is that it makes use of the si-
`lences in speech to improve the performance….and taking account of silence suppression…”).
`
`
`
`18
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 20 of 100 PageID #: 2020
`
`
`the teachings of a charted reference to include a converter that also compressed data in order to
`
`best address the problems purportedly addressed by the inventors of the ‘874 Patent.
`
`To the extent the claim elements of “the peripheral branches being connected to a central
`
`high-capacity data trunking region and . . . 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 to back up said terrestrial connection” or “wherein said inter-
`
`faces are arranged to provide said satellite link as a parallel path to a terrestrial data link” are not
`
`explicitly or inherently disclosed in a charted reference, such an element is disclosed and/or
`
`taught by each of the following prior art references, as specifically indicated in the attached
`
`claim charts for each references:
`
` PES
`
` Silverman
`
` Lim
`
` Kikinis
`
` Doshi
`
` VoIP
`
` DYNANET
`
` Henkel3
`
`
`3 E.g., Henkel at Fig. 1; Henkel at pg. 10 (“Fig. 1 shows a basic circuit diagram required
`for the realization of the system and process for the automatic, decentralized control of the use of
`satellite transmission capacity for the substitution of out-of-order data lines in terrestrial net-
`works. Fig. 1 shows a terrestrial network 1 which is connected via each of lines 2 and 3 to a rout-
`er or similar circuit 6. In the example shown, it is assumed that the line 2 is out of order. The ter-
`restrial network 1 is also connected to a so-called hub 4 via a modem 5. The routers 6 are each
`connected to customer devices 8 and to terminals 9 for data input and output. In addition, the
`routers 6 are each connected to a stored-program controller 7, in each case via a line 12. Fur-
`thermore, each of the two stored-program controllers 7 is connected to a modem 5 via which the
`
`
`
`19
`
`

`

`Case 2:15-cv-00037-RWS Document 87-3 Filed 02/05/16 Page 21 of 100 PageID #: 2021
`
`
` Massey
`
` Brueckheimer
`
` Bonomi4
`
` Dillon
`
` EO