`
`Filed on behalf of Intellectual Ventures I LLC
`By: Peter J. McAndrews
`
`Andrew B. Karp
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street
`Chicago, Illinois 60661
`Tel.: (312) 775-8000
`Fax: (312) 775-8100
`Email: pmcandrews@mcandrews-ip.com
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`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`ERICSSON INC. AND TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners
`
`v.
`
`INTELLECTUAL VENTURES I LLC
`Patent Owner
`______________
`
`Case IPR2018-00727
`Patent No. 6,628,629
`______________
`
`PATENT OWNER PRELIMINARY RESPONSE
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`

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`Patent Owner Preliminary Response
`IPR2018-00727
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`
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`TABLE OF CONTENTS
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`
`
`I. 
`
`II. 
`
`SUMMARY OF THE ARGUMENT .............................................................. 1 
`
`THE PRIORITY DATE OF THE CHALLENGED CLAIMS ....................... 2 
`
`III.  THE ’629 PATENT FAMILY (“JORGENSEN FAMILY”) .......................... 2 
`
`IV.  THE ’629 PATENT ......................................................................................... 4 
`
`V. 
`
`BACKGROUND OF THE TECHNOLOGY .................................................. 6 
`
`A.  Circuit-Switched Networks .................................................................... 6 
`
`B. 
`
`C. 
`
`Packets and Packet-Switched Networks ................................................. 7 
`
`Packet-Switched Networks Versus Circuit-Switched Networks ............ 9 
`
`D.  ATM Cells, Unlike Packets, Are Communicated Using Circuit-
`Switched Networks ............................................................................... 12 
`
`E. 
`
`Petitioners Wrongly Allege That ATM Is Packet-Centric ................... 15 
`
`VI.  STATEMENT OF PRECISE RELIEF REQUESTED ................................. 22 
`
`VII.  CLAIM CONSTRUCTION .......................................................................... 22 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`“Isochronous” ....................................................................................... 23 
`
`“Periodic Variation” ............................................................................. 25 
`
`“No Periodic Variation” ....................................................................... 25 
`
`“Packet” ................................................................................................ 26 
`
`VIII.  PETITIONERS FAILED TO MEET THEIR BURDEN UNDER
`35 U.S.C. § 314(a) ......................................................................................... 28 
`
`A.  Petitioners Have Not Met Their Burden To Show A Reasonable
`Likelihood That Claims 1, 3, And 4 Are Obvious Over Dyson
`And Raychaudhuri (Ground 1) ............................................................. 29 
`
`1. 
`
`Dyson Discloses Only ATM Techniques And Not
`“Packets” ................................................................................... 29 
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`Patent Owner Preliminary Response
`IPR2018-00727
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`2. 
`
`
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`
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`Raychaudhuri Discloses ATM And Not “Packets” .................. 32 
`
`B. 
`
`C. 
`
`Petitioners Have Not Met Their Burden To Show A Reasonable
`Likelihood That Claim 2 Is Obvious Over Dyson, Raychaudhuri,
`And Chennakeshu (Ground 2) .............................................................. 34 
`
`Petitioners Have Not Met Their Burden To Show A Reasonable
`Likelihood That Claim 4 Is Obvious Over Dyson, Raychaudhuri,
`Goodman, And Yang (Ground 3) ......................................................... 34 
`
`IX.  CONCLUSION .............................................................................................. 35 
`
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`Patent Owner Preliminary Response
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`TABLE OF AUTHORITIES
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`
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`
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`Cases 
`Intellectual Ventures I LLC v. T-Mobile USA, Inc. et al.,
`Case No. 2:17-cv-00577-JRG (E.D. Tex.) ........................................................... 24
`
`InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) ............................................................................ 30
`
`Kearns v. Chrysler Corp.,
`32 F.3d 1541 (Fed. Cir. 1994) .............................................................................. 31
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................ 22
`
`Vitronics Corp. v. Conceptronic,
`90 F.3d 1576 (Fed. Cir. 1996) .............................................................................. 31
`
`Wellman, Inc. v. Eastman Chem. Co.,
`642 F.3d 1355 (Fed. Cir. 2011) ............................................................................ 23
`
`Statutes 
`
`35 U.S.C. § 103 .......................................................................................................... 1
`
`35 U.S.C. § 314(a) ............................................................................................ 22, 28
`
`Rules 
`
`Fed. R. Evid. 401 ..................................................................................................... 32
`
`Fed. R. Evid. 402 ..................................................................................................... 32
`
`Regulations 
`
`37 C.F.R. § 42.108(c) ............................................................................................... 22
`
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`Patent Owner Preliminary Response
`IPR2018-00727
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`
`
`Exhibit
`Number
`2001
`2002
`2003
`2004
`2005
`2006
`2007
`2008
`
`2009
`
`2010
`2011
`2012
`2013
`2014
`2015
`2016
`2017
`2018
`
`2019
`
`LIST OF EXHIBITS
`
`Description
`
`IPR2014-00527 final written decision
`Jorgensen family listing of patents and applications from PAIR
`IPR2018-01058 petition
`IPR2018-01121 petition
`U.S. Appl. No. 09/349,975, applicant's response of 2002-11-06
`U.S. Pat. No. 6,188,671 (“Chase”)
`U.S. Appl. No. 09/349,477, applicant's response of 2001-12-20
`U.S. Appl. No. 09/349,477,applicant's response of 2001-11-30
`Wireless Intelligent ATM Network and Protocol Design for
`Future Personal Communication Systems (“Cheng”)
`IPR2018-01007 petition
`U.S. Pat. No. 6,682,622
`U.S. Appl. No. 09/349,477, applicant's response of 2001-05-14
`U.S. Pat. No. 6,640,248
`U.S. Pat. No. 5,787,080 (“Hulyalkar”)
`U.S. Appl. No. 09/349,482, applicant's response of 2003-04-02
`IPR2018-01007 Petitioners’ expert’s declaration
`U.S. Pat. No. 4,916,691 (“Goodman”)
`2:17-cv-00577, Ericsson’s claim construction proposals
`2:17-cv-00577, Intellectual Ventures I claim construction
`proposals
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`Patent Owner Preliminary Response
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`SUMMARY OF THE ARGUMENT
`
`I.
`
`
`
`
`On March 1, 2018, Ericsson Inc. and Telefonaktiebolaget LM Ericsson
`
`(“Petitioners”) filed a Petition for Inter Partes Review, alleging that Claims 1–4 of
`
`U.S. Patent No. 6,628,629 (“the ’629 patent”; Ex. 1001) are unpatentable as
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`obvious under 35 U.S.C. § 103. The Board should deny the Petition and decline to
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`institute Inter Partes Review, because Petitioners have not met their burden to
`
`show a reasonable likelihood that at least one of Claims 1–4 is unpatentable.
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`The only challenged independent claim (Claim 1) of the ’629 patent recites
`
`different “packets.” Ex. 1001 at 83:26 (“a data packet in the transmission frame”);
`
`83:29–30 (“a first data packet of an internet protocol (IP) flow”); 83:33–34 (“a
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`second data packet of said IP flow”).1 In a previous IPR filed by Petitioners,
`
`(IPR2014-00527) against a related patent (U.S. Pat. No. 7,496,674), the Board
`
`construed “packet” to mean “a piece or segment of a data/media stream that serves
`
`as a unit of transmission over a packet switched network.” Ex. 2001 at pp. 8–9.
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`Yet, the Petition in the present IPR asserts only circuit-switched network
`
`references—Dyson and Raychaudhuri—against Claim 1. These references employ
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`so-called asynchronous transfer mode or “ATM,” which is implemented in a
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`1 All emphasis to quotes is added, unless specified otherwise.
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`Patent Owner Preliminary Response
`IPR2018-00727
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`circuit-switched network and is fundamentally different from and exclusive of a
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`
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`packet-switched network.
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`As will be explained in detail, Petitioners have not shown a reasonable
`
`likelihood that any challenged claim is unpatentable. 
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`II. THE PRIORITY DATE OF THE CHALLENGED CLAIMS
`Petitioners allege that the ’629 patent is not entitled to its priority claim.
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`Patent Owner takes no position as to this allegation, because it is not necessary to
`
`resolve this issue in deciding whether or not to institute trial.
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`III. THE ’629 PATENT FAMILY (“JORGENSEN FAMILY”)
`The ’629 patent is a member of a large family of patents and applications
`
`resulting from the inventive contributions of Jacob Jorgensen (“Jorgensen
`
`Family”). The shared specification for the Jorgensen Family teaches many
`
`inventions. Indeed, the ’629 patent itself identifies 20 different Jorgensen Family
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`applications that were filed on the same day (July 9, 1999) and claim priority to the
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`same provisional application (Appl. No. 60/092,452; Ex. 1013). Ex. 1001 at 1:5–
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`2:39. Each of these applications has a unique title. Id.
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`There are now 15 issued U.S. patents in the Jorgensen Family. Ex. 2002.
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`Petitioners have challenged 6 of these patents by filing 11 IPRs, all of which name
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`the same Petitioners and Patent Owner. Eight of these IPRs are currently pending.
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`The following table summarizes the Jorgensen Family IPRs:
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`
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`2
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`Patent Owner Preliminary Response
`IPR2018-00727
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`IPR Number
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`Patent
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`Challenged
`Claims
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`Result
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`
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`Claims found unpatentable;
`affirmed by the Federal
`Circuit
`Institution denied
`Institution denied
`Pending – Petition filed
`
`Pending – petition filed
`
`Pending – petition filed
`
`Pending – petition filed
`
`Pending – petition filed
`
`Pending – petition filed
`
`Pending – petition filed
`
`Pending – petition filed
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`IPR2014-00527
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`7,496,674
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`1–22
`
`IPR2014-01331
`IPR2015-01873
`IPR2018-00727
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`6,640,248
`6,640,248
`6,628,629
`
`IPR2018-00758
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`RE46,206
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`IPR2018-00782
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`RE46,206
`
`IPR2018-01007
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`7,412,517
`
`IPR2018-01058
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`7,359,971
`
`IPR2018-01121
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`RE46,206
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`IPR2018-01256
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`RE46,406
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`IPR2018-01318
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`RE46,206
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`
`
`
`
`1–20
`1–20
`1–4
`109, 121, 126,
`129, 132, 134,
`140, 144, and
`146
`111–115, 118,
`120, 133, and
`135
`12, 14–15, 18,
`21–22, 25, 27,
`33, and
`12, 14, 15, 18,
`21, 22, 25, 27,
`33, and 37
`1, 45, 46, 48,
`122, 123, and
`124
`2, 6–8, 15–16,
`19, and 79
`9–11, 17–18,
`20, 27, 29–33,
`38, 41, 44, and
`78
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`IV. THE ’629 PATENT
`The specification provides an extensive tutorial on the concepts claimed in
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`
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`the Jorgensen Family patents and on communication networks generally. Ex. 1001
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`at 11:38–40:45. This is in addition to the “Background” section and the
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`“Definitions” section.2 Ex. 1001 at 2:40–3:37 and 8:5–11:35. The “Background of
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`the Technology” section presented below (§ V) quotes extensively from the tutorial
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`and the “Background” sections.
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`Of course, the claims define the scope of any invention. For the present IPR,
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`Claim 1 is the only challenged independent claim. It recites:
`
`A method for assigning future slots of a transmission frame to a data
`packet in the transmission frame for transmission over a wireless
`medium, comprising:
`
`applying a reservation algorithm;
`
`reserving a first slot for a first data packet of an internet protocol (IP)
`flow in a future transmission frame based on said reservation
`algorithm; and
`
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`2 That the ’629 patent provides helpful background information (see Ex. 1001 at
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`1:1–40:45) is not an admission that this portion of the specification is entirely
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`applicant admitted prior art.
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`reserving a second slot for a second data packet of said IP flow in a
`transmission frame, subsequent in time to said future transmission
`frame based on said reservation algorithm,
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`wherein said second data packet is placed in said second slot in an
`isochronous manner to the placing of said first data packet in said
`first slot.
`Ex. 1001 at 83:25–39.
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`It is necessary to understand what the claim term “packet” means in context
`
`of the ’629 patent (i.e., the Jorgensen Family specification).3 Expediently, the
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`Board has already construed “packet” in a final written decision to mean “a piece
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`or segment of a data/media stream that serves as a unit of transmission over a
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`packet switched network.” Ex. 2001 at pp. 8–9. The consequence of this is
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`discussed in detail below, but in short, a packet-switched network is not a circuit-
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`switched network. And an ATM cell is a unit of transmission in a circuit-switched
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`network, not a packet-switched network. Therefore, an ATM cell is not a packet
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`because it is not “a piece or segment of a data/media stream that serves as a unit of
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`transmission over a packet switched network.” See infra § V(E). Advantageously,
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`the fundamentals of these concepts (including “packet-switched network,” “circuit-
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`switched network,” and “ATM”) have already been explained by the ’629 patent.
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`3 A “data packet” is a type of “packet.”
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`V. BACKGROUND OF THE TECHNOLOGY
`The following background primarily comprises quotes from the ’629 patent
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`
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`
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`and applicants’ statements in Jorgensen Family prosecution histories. It details
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`important differences between “circuit-switched” (or “circuit-centric”) networks
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`and “packet-switched” (or “packet-centric”) networks.4 It also explains ATM
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`circuit-switching technology.
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`A. Circuit-Switched Networks
`The ’629 patent tutorial explicitly describes a fundamental principle of
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`circuit switching and circuit-switched networks—dedication of a circuit or
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`channel. See, e.g., Ex. 1001 at 29:52–53 (“Circuit switching dedicates a channel
`
`to a call for the duration of the call.”); 32:21–23 (“Unlike a circuit-centric
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`4 There is no relevant difference in meaning between the terms “packet-switched”
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`and “packet-centric.” In currently pending IPR petitions against Jorgensen Family
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`patents, Petitioners acknowledge that “a POSITA would have understood that
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`packet-centric systems are systems that perform packet-switching.” Ex. 2003
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`(IPR2018-01058 petition) at p. 14 (“The GPRS network is a ‘packet-centric . . .
`
`system,’ because it is a packet-switched network that uses packets to transmit
`
`information from a sender (e.g., an ISP) to a destination (e.g., a mobile host).”); see
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`also Ex. 2004 (IPR2018-01121 petition) at p. 17. Similarly, “circuit-switched” and
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`“circuit-centric” are simply alternative phrases with the same meaning.
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`network, a packet-centric network does not use dedicated circuits through which
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`
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`to transfer packets.”); 34:41–45 (“A packet-switched network such as, e.g., an IP
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`network, unlike a circuit-switched network, does not require dedicated circuits
`
`between originating and terminating locations within the packet switched
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`network.”).
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`The following illustration depicts a dedicated circuit (heavy black line with
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`arrows) between a source and destination:
`
`Packets and Packet-Switched Networks
`
`B.
`The ’629 patent also expressly describes a fundamental principle of packet-
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`switched networks—sharing rather than dedicating a circuit or channel: “Packet
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`switched networks transport packets of information which can include various
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`types of data such as, e.g., digitized voice, data, and video. With packet switching,
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`
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`many different calls can share a communication channel rather than the channel
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`being dedicated to a single call.” Ex. 1001 at 30:52–57.
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`Bandwidth sharing is enabled by a packet-switched network, which uses
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`“packets”: “Packet switching breaks up traffic into so-called ‘packets’ which can
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`then be transported from a source node to a destination for reassembly. Thus a
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`particular portion of bandwidth can be shared by many sources and destinations
`
`yielding more efficient use of bandwidth.” Id. at 3:11–16. The ’629 patent
`
`continues:
`
`In a packet-switched network, there is no single, unbroken physical
`connection between sender and receiver. The packets from many
`different calls share network bandwidth with other transmissions.
`The packets can be sent over many different routes at the same time
`toward the destination, and can then be reassembled at the receiving
`end.
`Id. at 31:9–14.
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`The figure below illustrates how a packet-switched network does not require
`
`a dedicated path and uses bandwidth more efficiently. Each packet (different
`
`colors represent different packets) can be routed independent from the others.
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`Packet-Switched Networks Versus Circuit-Switched Networks
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`C.
`Although the Petition is silent on the matter, there are important differences
`
`between packet-switched and circuit-switched networks. The ’629 patent details
`
`these differences and their implications.
`
`With regard to both wireline and wireless circuit-switched networks, the
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`’629 patent teaches how conventional networks used circuit-switching to provide
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`acceptable end-user quality of service (“QoS”) in telecommunication networks:
`
`Telecommunication networks such as voice, data and video networks
`have conventionally been customized for the type of traffic each is to
`transport. For example, voice traffic is very latency sensitive but
`quality is less important, so voice networks are designed to transport
`voice traffic with limited latency. Traditional data traffic, such as, e.g.,
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`a spreadsheet, on the other hand is not latency sensitive, but error-free
`delivery is required. Conventional telecommunications networks use
`circuit switching to achieve acceptable end user quality of service
`(QoS).
`
`* * *
`Wireless networks present particular challenges over their wireline
`counterparts in delivering QoS. For example, wireless networks
`traditionally exhibit high bit error rates (BER) due to a number of
`reasons. Conventional wireless networks also implement circuit
`switched connections to provide reliable communications channels.
`Ex. 1001 at 2:49–3:4.
`
`But, as discussed above in § V(A), circuit-switched networks do not use
`
`bandwidth efficiently, as further discussed in the ’629 patent:
`
`However the use of circuit switched connections allocates bandwidth
`between communicating nodes whether or not traffic is constantly
`being transferred between the nodes. Therefore, circuit switched
`connections use communications bandwidth rather inefficiently.
`Id. at 3:4–9.
`
`Packet-switched networks, by contrast, use bandwidth more efficiently. As
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`the ’629 patent further explains, packet-switching networks do not dedicate circuits
`
`for communication:
`
`so
`revolutionizing data communications,
`is
`Packet-switching
`conventional circuit-switch and ATM networking concepts and their
`legacy QoS mechanisms are in need of update. With packet-switched
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`data communications, one cannot dedicate a circuit to a particular data
`communications session. Indeed, a strength of packet-switching lies in
`route flexibility and parallelism of its corresponding physical network.
`Ex. 1001 at 14:40–47. The ’629 patent explains:
`
`Packet switching makes more efficient use of available bandwidth
`than does traditional circuit switching. Packet switching breaks up
`traffic into so-called “packets” which can then be transported from a
`source node to a destination for reassembly. Thus a particular portion
`of bandwidth can be shared by many sources and destinations yielding
`more efficient use of bandwidth.
`Id. at 3:10–16. The ’629 patent continues:
`
`Packet switching breaks a media stream into pieces known as, for
`example, packets, cells or frames. Each packet can then be encoded
`with address information for delivery to the proper destination and can
`be sent through the network. The packets can be received at the
`destination and the media stream is reassembled into its original form
`for delivery to the recipient. This process is made possible using an
`important family of communications protocols, commonly called the
`Internet Protocol (IP).
`
`In a packet-switched network, there is no single, unbroken physical
`connection between sender and receiver. The packets from many
`different calls share network bandwidth with other transmissions. The
`packets can be sent over many different routes at the same time
`toward the destination, and can then be reassembled at the receiving
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`end. The result is much more efficient use of a telecommunications
`network's bandwidth than could be achieved with circuit-switching.
`Id. at 31:1–17.
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`
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`
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`The ’629 patent provides simple examples that illustrate how bandwidth can
`
`be used more efficiently in a packet-switched network (as compared to a circuit-
`
`switched network):
`
`With packet switching, many different calls can share a
`communication channel rather than the channel being dedicated to a
`single call. During a voice call, for instance, digitized voice
`information might be transferred between the callers only 60% of the
`time, with silence being transferred the other 40% of the time. With a
`circuit switched connection,
`the voice call could
`tie-up a
`communications channel that could have [40%] of its bandwidth,
`unused because of the silence. For a data call, information might be
`transferred between two computers only 10% of the time. With the
`data call, 90% of the channel's bandwidth may go unused. In contrast,
`a packet-switched connection would permit the voice call, the data
`call and possibly other call information to all be sent over the same
`channel.
`Id. at 30:54–67.
`
`D. ATM Cells, Unlike Packets, Are Communicated Using Circuit-
`Switched Networks
`
`As taught by the ’629 patent, ATM uses so-called “cells” to transport
`
`information. See, e.g., id. at 16:21 (“ATM cell”); 35:13 (“ATM cell”); 35:25–26
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`(“Asynchronous transfer mode (ATM) is a cell based switching and multiplexing
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`
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`technology . . . .”); 35:35 (“ATM cell”); 35:40–43 (“ATM is asynchronous because
`
`the transmitted cells need not be periodic as time slots of data are required to be in
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`synchronous transfer mode (STM).”); 35:48; 35:64–65 (“ATM cell header field”);
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`36:8 (“ATM cell payload field”); 36:55 (“ATM cell-switching”); 37:9–10 (“ATM
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`cells”); and 37:38–39 (“ATM circuit-centric cells”).
`
`Additionally, the ’629 patent repeatedly explains that ATM communications
`
`operate over circuit-switching networks (i.e., not packet-switching networks). See,
`
`e.g., id. at 14:13–14 (“With ATM networking, telephone companies could continue
`
`to provide a circuit-centric QoS mechanism . . . .”); 16:21–22 (“traditional circuit-
`
`centric or ATM cell circuit-centric approaches”); 32:17 (“A circuit-centric
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`network like ATM”); 34:38–39 (“an asynchronous transfer mode (ATM) circuit-
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`centric network”); 34:64–65 (“Frame relay and ATM are connection-oriented
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`circuit-centric services.”); 35:10–11 (“The ATM environment sets up virtual
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`circuits in a circuit-centric manner.”); and 37:38–39 (“ATM circuit-centric
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`cells”).
`
`Furthermore, while prosecuting Jorgensen Family member patents, the
`
`applicants repeatedly emphasized that ATM technology is circuit-centric and not
`
`packet-centric. In all of these cases, the applicants overcame prior art that was
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`rooted in ATM. For example, during the prosecution of one Jorgensen Family
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`patent (U.S. Pat. No. 6,680,922), the applicant explained:
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`As claimed, for a network protocol to be packet-centric, the protocol
`can not be circuit-centric. As clearly defined in the specification, a
`packet-centric protocol “does not use dedicated circuits through which
`to transfer packets.” [Ex. 1001 at 32:22–23] . . . A circuit-centric
`protocol and/or network such as, e.g., an asynchronous transfer mode
`(ATM) protocol network of [prior-art reference] Chase [(Ex. 2006)] is
`different from a packet-centric protocol network, in that the circuit-
`centric network assigns circuits for the ATM network. Unlike the
`circuit-centric ATM protocol, the packet-centric protocol does “not
`specifically route” the packets across a “specific channel.” [Ex. 1001
`at 32:31–33]. Instead, the packet-centric protocol places a header on
`the packet and lets the network deal with routing the packets. [Id. at
`32:33–34]. “Therefore, the outbound packets can take various routes
`to get from a source to a destination. This means that packets are in a
`datagram form and not sequentially numbered as they are in other
`protocols.” [Id. at 32:34–38] . . . As defined in the specification, the
`packet-centric protocol is not circuit-centric.
`Ex. 2005 at pp. 3–4 (Applicant’s response of November 6, 2002 in file history of
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`Jorgensen Family member U.S. Pat. No. 6,680,922; U.S. Appl. No. 09/349,975)
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`(emphasis in original). See, also, Ex. 2007 at pp. 8–9 (Applicant’s response of
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`December 20, 2001 in file history of U.S. Pat. No. 6,862,622 (U.S. Appl. No.
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`09/349,477)) (“A circuit-centric network like ATM is different from a packet-
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`centric protocol network, in that the circuit-centric network sets up ‘virtual circuits
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`between source and destination nodes . . . by dedicating the virtual circuit to a
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`specific traffic type.’ [Ex. 1001 at 32:17–20].”); Ex. 2008 at pp. 8–9 (Applicant’s
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`response of November 30, 2001 in file history of U.S. Pat. No. 6,862,622 (U.S.
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`Appl. No. 09/349,977)) (similar argument); Ex. 2007 at p. 13 (“Furthermore,
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`[prior-art reference] Cheng [(Ex. 2009)] deals with asynchronous transfer mode
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`(ATM). ATM is a cell centric, circuit centric protocol, unlike the packet centric
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`protocol of the present invention.”).5
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`Petitioners Wrongly Allege That ATM Is Packet-Centric
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`E.
`In another presently-pending IPR against a Jorgensen Family patent
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`(IPR2018-01007; U.S. Pat. No. 7,412,517), Petitioners incorrectly allege that
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`“ATM is described by the patent as combining aspects of both circuit-centric and
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`packet centric technologies.” Ex. 2010 at p. 24 (emphasis in original). In making
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`this allegation, Petitioners ignore the mass of intrinsic evidence cited above in § V.
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`5 For convenient reference and where applicable, internal citations within the
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`quotes throughout this Patent Owner Preliminary Response have been updated to
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`reference the specification of the ’629 patent (rather than other Jorgensen Family
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`specifications).
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`Instead, they make the following argument while referring to two portions the
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`specification:
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`For example, ATM is described by the patent as combining aspects of
`both circuit-centric and packet-centric technologies. [Ex. 1001 at
`36:16–18] (“When using ATM, longer packets cannot delay shorter
`packets as in other packet switched networks.”); [id. at 34:34–39]
`(describing data network 142 as “any art-recognized packet centric
`data network” including an “ATM circuit centric network”).
`Ex. 2010 at pp. 24–25 (emphasis in original).
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`The first-cited quote, however, actually confirms that ATM is not a packet-
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`switched network. Specifically, “packet switched networks” are something “other”
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`than “ATM.” Furthermore, the truncated excerpt of the quote provided in the
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`Petition omits (without signaling the omission) the second half of the sentence.
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`The full sentence proves that ATM is not a packet-switched network and that ATM
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`cells are not packets, because it explicitly refers to packets being broken up into
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`cells: “When using ATM, longer packets cannot delay shorter packets as in other
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`packet switched networks, because long packets are separated into many fixed
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`length cells.” Ex. 1001 at 36:16–18. Thus, it is clear that ATM does not use
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`“packets” (like packet-switched networks do), but instead uses ATM “cells.”
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`The second portion of the specification cited by Petitioners (id. at 34:34–39,
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`which they allege proves that ATM encompasses packet-switching technology) is
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`also selectively quoted. The full sentence that mentions the ATM network, which
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`Petitioners misleadingly omitted, reads, “Other examples include a private intranet,
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`a packet-switched network, a frame relay network, and an asynchronous transfer
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`mode (ATM) circuit-centric network.” Id. at 34:36–39. Plainly, the ’629 patent
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`specification distinguishes a packet-switched network from an ATM circuit-centric
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`network, even in the selectively excerpted portions cited by Petitioners.
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`Furthermore, Petitioners (again in the petition of IPR2018-01007) assert that
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`two claims in different Jorgensen Family patents “confirm[] that the patentees
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`believed ATM to be packet-centric.” Ex. 2010 at p. 25. The first claim is from
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`U.S. Pat. 6,862,622, in which claim 20 recites: “The system of Claim 13, wherein
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`said packet-centric protocol is not an asynchronous transfer mode protocol.” Ex.
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`2011 at 84:42–43. According to Petitioners, “the patentees believed that the
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`broader independent Claim 13 covered ATM packet-centric protocols.” Ex. 2010
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`at pp. 25–26.
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`The prosecution history of the ’622 patent, however, expressly contradicts
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`this argument. The patentees did not believe that ATM is a “packet-centric
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`protocol.” Instead, the patentee explicitly stated numerous times that ATM is not
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`packet-centric. See Ex. 2007 at pp. 8–9 (patentee’s response of December 20,
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`2001) (“A ‘circuit-centric’ network such as an asynchronous transfer mode
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`(ATM) network is different from a packet-centric protocol network, in that the
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`circuit-centric network sets up virtual circuits between source and destination
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`
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`nodes between source and destination nodes . . . by dedicating the virtual circuit to
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`a specific traffic type.”) (internal quotation omitted); id. at pp. 9–10 (“The ‘packet-
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`centric protocol’ which is not ‘circuit-centric’ should be reasonably interpreted to
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`mean that the packet-centric protocol is not a protocol that sets up virtual circuits
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`between source and destination nodes . . . by dedicating the virtual circuit to a
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`specific traffic type such as the circuit-centric ATM protocol.”) (internal quotation
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`omitted); id. at p. 11 (“ATM is a circuit-centric protocol”); id. at p. 13 (“ATM is a
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`cell centric, circuit centric protocol, unlike the packet centric protocol of the
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`present invention.”); Ex. 2008 at pp. 8–11 and 13 (patentee’s response of
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`November 30, 2001) (similar arguments); Ex. 2012 at p. 13 (patentee’s response of
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`May 14, 2001) (“ATM is a cell centric, circuit centric protocol, unlike the packet
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`centric protocol of the present invention.”).
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`Petitioners’ second argument that ATM is a form of packet-switching is
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`based on U.S. Pat. 6,640,248, in which claim 1 recites: “a packet centric manner
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`that is not circuit-centric and does not use asynchronous transfer mode (ATM).”
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`Ex. 2013 at 83:14–15. But the intrinsic record of the ’248 patent demonstrates that
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`Petitioners’ argument is wrong. The applicant specifically linked this very claim
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`language in claim 1 to the fact that ATM is circuit-centric (and therefore not
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`packet-centric). When faced with an ATM reference (Hulyalkar; Ex. 2014) in an
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`office action rejection, the applicant explained why an ATM network could not be
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`understood to be packet-centric:
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`As amended, claim 1 now even more clearly distinguishes over
`Hulyalkar [(Ex. 2014)]. Claim 1 recites, inter alia: a resource
`allocator . . . allocates bandwidth resource in a packet-centric manner
`that is not circuit-centric and does not use ATM . . . A circuit-centric
`network like ATM is different from a packet-centric protocol network,
`in that the