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15 Rehearing Request in re Petition Institution Decision Denied: Petitioners Request for Rehearing

Document IPR2016-00629, No. 15 Rehearing Request in re Petition Institution Decision Denied - Petitioners Request for Rehearing (P.T.A.B. Sep. 19, 2016)
First, the Board improperly disregarded ViaSat’s explanation that a POSITA would find motivation to combine Norand and Eng because they employ similar Case IPR2016-00629 U.S. Patent No. 5,960,074 architectures to achieve a common goal of connecting mobile devices in an overall network.
Alternatively, ViaSat contends that even under the heightened obviousness standard set forth by the Board, the record clearly establishes that an express moti- vation to specifically incorporate TCP/IP into Norand is provided by the Petition, the prior art references, and the knowledge of a POSITA.
Norand’s Express Discussion of Using Packet-Based Com- munications Suggests the Use of TCP/IP Providing further TCP/IP-specific motivation to combine, ViaSat explained Case IPR2016-00629 U.S. Patent No. 5,960,074 how Norand expressly discloses transmission of data in “packets” across its net- works.
Such a requirement would effective- ly eviscerate obviousness as a separate ground for invalidity.4 The conclusion that Norand’s teaching of “data packets” would have sug- gested TCP/IP at the relevant time is further bolstered by the ’074 patent itself, which, as ViaSat argued in the Petition, draws a direct connection between the “ethernet packet switching protocol” of the “present invention” and what is de- scribed as the pre-existing TCP/IP protocol.
Given that, as ViaSat repeatedly ex- plained in the Petition, Norand and Eng share the common goal of linking together mobile users, e.g., Pet. at 25, Eng’s teaching that TCP/IP is particularly well-suited to “mobility management” answers the Board’s “why” question.
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1 Petition: Petition for Inter Partes Review

Document IPR2016-00628, No. 1 Petition - Petition for Inter Partes Review (P.T.A.B. Feb. 18, 2016)
operable to connect to at least one computer; and a mobile hub station configured to transfer information as a single nomadic transmission/ reception point between the microwave communication system and the wireless LAN using an Internet protocol.
Norand makes clear that the terminals in this vehicular LAN embodiment are “roaming computing device[s]” that “communicate within a limited area while moving within an independent wireless network that provides coverage over a much broader service area” (at 5:12-18 (emphases added)).
Further, Norand actually suggests the use of TCP/IP (an example of the “ethernet packet switching protocol” of the broadest independent claims) to communicate information in the disclosed network, providing additional motivation to incorporate the standardized prior art protocols of Eng.
Norand’s “summary of the invention” teaches terminals associated with this vehicular LAN embodiment are “roaming computing device[s]” that “communicate within a limited area while moving within an independent wireless network that provides coverage over a much broader service area.” (Norand at 5:12-18 (emphases added).)
Norand teaches a vehicular LAN embodiment, wherein a “roaming computing device[s]” is able to “communicate within a limited area while moving within an independent wireless network that provides coverage over a much broader service area” (at 5:12-18 (emphases added)).
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3 Petition: Petition for Inter Partes Review of US Patent No 5960074

Document IPR2016-00347, No. 3 Petition - Petition for Inter Partes Review of US Patent No 5960074 (P.T.A.B. Dec. 16, 2015)
To the extent the Board disagrees with the italicized portion of Petitioners’ construction—or declines to reach the issue—the grounds provided in this Petition would apply with equal or greater force if the ’074 patent is deemed to disclose and claim TCP/IP as commonly understood at the time.
“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” KSR, 550 U.S. at 421.
982414 Case IPR2016-00347 Petition for Inter Partes Review of Patent 5,960,074 Claim (c) and; a mobile hub station configured to transfer information as a single nomadic transmission/reception point between the microwave communication system and the wireless
A system comprising (a) a communication subsystem configured to operate as a secured private intranet to transfer broadband information using an ethernet packet switching protocol Rebec (Ex. 1004) in light of Meier (Ex. 1036) See discussion of claim 1 (preamble), above.
“[A]dapting existing electronic processes to incorporate modern internet and web browser technology does not render an invention novel.” See Muniauction v. Thomson 982414 Case IPR2016-00347 Petition for Inter Partes Review of Patent 5,960,074 Corp., 532 F.3d 1318, 1327 (Fed. Cir. 2008).
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8 Preliminary Response: Patent Owners Preliminary Response

Document IPR2016-01255, No. 8 Preliminary Response - Patent Owners Preliminary Response (P.T.A.B. Oct. 12, 2016)
Moreover, Petitioner’s motivation to combine the references amounts to nothing more than conclusory statements or arguments that are completely void of any factual basis and contrary to the well-established state of Case IPR2016-01255 Patent Owner Preliminary Response the art at the relevant time.
Each of independent Claims 1, 128, and 160 require “a mobile hub station configured to transfer information as a single nomadic transmission/reception point between the microwave communication system and the wireless LAN” (or a substantially similar version).
Therefore, any purported reliance on Wejke to further support or remedy deficiencies in the combination of Dao, Rebec, Binder, and the knowledge of a POSITA would be an improper incorporation of arguments from the expert declaration into the Petition.
Moreover, Petitioner’s motivation to combine the references amounts to nothing more than conclusory statements or arguments that are completely void of any factual basis Case IPR2016-01255 Patent Owner Preliminary Response and contrary to the well-established state of the art at the relevant time.
This incompatibility exists because an airplane flying at hundreds of miles per hour Case IPR2016-01255 Patent Owner Preliminary Response would not be in range of the neighborhood wireless network of Rudrapatna for sufficient time to establish a connection much less to accomplish any useful transfer of data.
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9 Exhibit List: Patent Owner Exhibit List

Document IPR2016-01255, No. 9 Exhibit List - Patent Owner Exhibit List (P.T.A.B. Oct. 12, 2016)
Patent Owner’s Exhibit List Case IPR2016-01255 U.S. Patent No. 5,960,074 Ex. 2001 Y. Zhang and S. Dao, “Integrating Direct Broadcast Satellite with Wireless Local Access,” First International Workshop on Satellite- based Information Services, Rye, New York, November 1996 Ex. 2002 Reexam No. 90/013,383: 6/15/15 Response to Office Action Ex. 2003 Reexam No. 90/012,729: 3/11/14 Notice of Intent to Issue a Reexam Certificate Ex. 2004 Reexam No. 90/012,728: 4/10/14 Examiner’s Interview Summary Ex. 2005 Reexam No. 90/012,729: 12/24/13 Final Office Action Ex. 2006 Reexam No. 90/012,729: 3/10/14 Patent Owner’s Interview Summary Ex. 2007 U.S. Patent No. 5,606,596 (“Jain”) Ex. 2008 U.S. Patent No. 5,537,467 (“Cheng”) Ex. 2009 U.S. Patent No. 5,889,953 (“Thebaut”) Ex. 2010 U.S. Patent No. 6,130,892 (“Short”) Ex. 2011 Reexam No. 90/012,729: 2/24/14 Response to Final Office Action Ex. 2012 Random House Unabridged Dictionary, 2d Edition (1993) Ex. 2013 U.S. Patent Application No. 09/217,682: 9/17/01 Non-Final Office Action Ex. 2014 U.S. Patent Application No. 09/217,682: 2/1/02 Response to Office Action Ex. 2015 U.S. Patent Application No. 09/217,682: 4/18/02 Notice of Allowance Ex. 2016 Declaration in Support of Patent Owner’s Preliminary Response by Dr. James Olivier Ex. 2017 Andrew S. Tanenbaum, “Computer Networks” (3rd Ed., 1996) Ex. 2018 U.S. Patent No. 5,550,818 (“Brackett”) Patent Owner’s Exhibit List Case IPR2016-01255 U.S. Patent No. 5,960,074 Respectfully submitted, Oblon, McClelland, Maier & Neustadt, LLP
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26 Response: Patent Owners Response to the Petition

Document IPR2016-00349, No. 26 Response - Patent Owners Response to the Petition (P.T.A.B. Oct. 12, 2016)

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7 Motion: Motion to Correct Petition

Document IPR2016-00349, No. 7 Motion - Motion to Correct Petition (P.T.A.B. Feb. 5, 2016)

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10 Other: Patent Owner Motion to Accept Email Submission

Document IPR2016-01253, No. 10 Other - Patent Owner Motion to Accept Email Submission (P.T.A.B. Oct. 6, 2016)

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9 Other: Patent Owner Motion and Certification Under 37 CFR 42100b

Document IPR2016-01253, No. 9 Other - Patent Owner Motion and Certification Under 37 CFR 42100b (P.T.A.B. Oct. 6, 2016)

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24 Notice: Joint Notice of Stipulation to Revised Schedule

Document IPR2016-00347, No. 24 Notice - Joint Notice of Stipulation to Revised Schedule (P.T.A.B. Aug. 15, 2016)

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8 Other: Patent Owner Motion to Accept Email Submission

Document IPR2016-01253, No. 8 Other - Patent Owner Motion to Accept Email Submission (P.T.A.B. Oct. 5, 2016)

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6 Preliminary Response: Patent Owner Preliminary Response

Document IPR2016-01253, No. 6 Preliminary Response - Patent Owner Preliminary Response (P.T.A.B. Oct. 5, 2016)

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7 Notice: Patent Owner Exhibit List

Document IPR2016-01253, No. 7 Notice - Patent Owner Exhibit List (P.T.A.B. Oct. 5, 2016)

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16 Rehearing Request in re Petition Institution Decision Denied: Petitioners Reques...

Document IPR2016-00628, No. 16 Rehearing Request in re Petition Institution Decision Denied - Petitioners Request for Rehearing (P.T.A.B. Sep. 19, 2016)

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2 Petition: Petition for Inter Partes Review of US Patent No 5960074

Document IPR2016-00349, No. 2 Petition - Petition for Inter Partes Review of US Patent No 5960074 (P.T.A.B. Dec. 16, 2015)

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