united states patent and trademark office before the … · media networks, llc, 15-cv-00410 (d....
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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
DECLARATION OF JEFFREY FISCHER
Case No. IPR2016-01253
Page 000001 Mercedes-Benz USA, LLC, Petitioner - Ex. 1009
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I. INTRODUCTION ...........................................................................................1
A. Summary of Opinions ...........................................................................1
B. Background & Qualifications................................................................7
II. OVERVIEW OF THE ’074 PATENT ..........................................................11
A. The Claimed Invention........................................................................12
B. Level of Ordinary Skill in the Art .......................................................14
C. Challenged Claims ..............................................................................15
D. Claim Constructions............................................................................19
1. “digital microwave communication system”............................19
2. “redundant digital microwave communication system”...........22
3. “broadband information” ..........................................................22
4. “configured to transfer [broadband] information as a singlenomadic transmission/reception point between themicrowave communication system [communicationsubsystem] and the wireless LAN”...........................................24
5. “wireless local area network (LAN)” .......................................28
6. “wireless wide area network” ...................................................29
7. “ethernet packet switching protocol”........................................30
8. “intranet” / “secured private intranet” / “private intranet” .......36
III. ANALYSIS AND OPINION ON ISSUES OF INVALIDITY ....................39
A. Legal Framework ................................................................................39
B. The Elements of the Challenged Claims Were Generally Knownto Persons of Ordinary Skill in the Art in September 1996 ................42
C. Overview of Prior Art References.......................................................49
Page 000002
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1. Overview of Jubin.....................................................................50
2. Overview of Binder...................................................................55
3. Overview of Clark.....................................................................57
4. Overview of Beyer ....................................................................57
D. Obviousness over Jubin in View of Binder and Clark........................58
1. Independent claims 1, 28, 128, 148, and 160 ...........................59
2. Dependent claims 3, 10, 31, 37, 129, 136, 149, 154, 161,and 166......................................................................................79
E. Obviousness over Jubin in view of Binder, Clark, and Beyer ............80
1. Independent claim 14................................................................81
2. Dependent claims 2, 9, 15, 20, 36, 42, 58, 73, 93, 103, 135,137, 146, 153, 157, 165, 167, 169, and 171..............................89
F. Assertions Made in the Reexamination Concerning Jubin WereIncorrect...............................................................................................92
1. Patent Owner incorrectly asserted that the PRNET of Jubinis not a “digital” system ............................................................93
2. Patent Owner incorrectly asserted that the PRNET does notuse a “single” transmission/reception point..............................94
3. Patent Owner incorrectly asserted that the PRNET does nothave a hub “between” the wireless LAN and the microwavecommunication system..............................................................94
4. Patent Owner incorrectly asserted that PRNET is not a“microwave” communication system .......................................95
5. Patent Owner incorrectly asserted that PRNET does nothave a “mobile hub” capable of “nomadic” transmissionand reception .............................................................................96
6. Patent Owner incorrectly asserted that the PRNET does nottransmit “broadband information” ............................................97
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7. Patent Owner incorrectly asserted that the PRNET does notuse an “ethernet pack switching protocol” ...............................98
IV. CONCLUSION............................................................................................106
Page 000004
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I, Jeffrey Fischer, of 285 K Street, Boston, Massachusetts, hereby state and
declare as follows:
I. INTRODUCTION
A. Summary of Opinions
1. I have been engaged by Mercedes-Benz USA, LLC
(MBUSA) to review U.S. Patent No. 5,960,074 (the ’074 patent) (Ex. 1001) and
opine on whether 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 of the ’074 patent (the “Challenged Claims”) are obvious under 35 U.S.C. §
103.
2. As is set forth in more detail below, it is my opinion that the
Challenged Claims are obvious based on the disclosures of the following prior art
references:
• John Jubin et al., The DARPA Packet Radio Network
Protocols, Proceedings of the IEEE, Vol. 75, No. 1 (Jan.
1987) (“Jubin”) (Ex. 1002);
• Richard Binder, et al., Crosslink Architectures for a
Multiple Satellite System, Proceedings of the IEEE, Vol.
75, No. 1 (Jan. 1987) (“Binder”) (Ex. 1003);
Page 000005
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• David D. Clark, et al., An Introduction to Local Area
Networks, Proceedings of the IEEE, Vol. 66, No. 11
(Nov. 1978) (“Clark”) (Ex. 1005); and
• David A. Beyer, Accomplishments of the DARPA SURAN
Program, published in Military Communications
Conference 1990 (MILCOM ’90) Conference Record
(IEEE 1990) (“Beyer”) (Ex. 1007).
3. Additional materials reviewed and/or cited as background or to
otherwise support assertions made in this declaration include:
• Robert E. Kahn, et al., Advances in Packet Radio
Technology, Proceedings of the IEEE, Vol. 66, No. 11
(Nov. 1978) (Ex. 1004);
• Irwin M. Jacobs, et al., General Purpose Packet Satellite
Networks, Proceedings of the IEEE, Vol. 66, No. 11
(Nov. 1978) (Ex. 1006);
• Clifford Lynch and Edwin Brownrigg, Packet Radio
Networks: Architectures, Protocols, Technologies and
Applications (Pergamon Press, 1987) (Ex. 1008);
Page 000006
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• Patent Owner Preliminary Response in IPR2016-00349
(Mar. 22, 2016) (Ex. 1010);
• 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) (Ex. 1011);
• David Morse, Cyber Dictionary (1996) (Ex. 1012);
• Summary of Examiner Interview, Reexamination Nos.
90/012,728 – 90/012,789 (Apr. 3, 2014) (Ex. 1013);
• 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);
• Patent Owner’s Claim Construction Brief, Advanced
Media Networks, LLC v. Inmarsat, Inc., et al., 10-cv-
00194 (S.D.N.Y.), Dkt. No. 1095 (June 4, 2012) (Ex.
1015);
Page 000007
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• W. Richard Stevens, TCP/IP Illustrated, Volume 1: The
Protocols (Addison Wesley 1994) (Ex. 1016);
• Newton’s Telecom Dictionary (9th ed. 1995) (Ex. 1017);
• Response to Office Action in Ex Parte Reexamination,
Reexamination Nos. 90/012,728 – 90/012,789 (Dec. 2,
2013) (Ex. 1018);
• Notice of Intent to Issue Ex Parte Reexamination
Certificate, Reexamination Nos. 90/012,728 –
90/012,789 (Apr. 10, 2014) (Ex. 1019);
• Kwang-Cheng Chen, Medium Access Control of Wireless
LANs for Mobile Computing, IEEE Network Magazine,
vol. 8, no. 5 (Sept./Oct. 1994) (Ex. 1020);B. Leiner, The
DARPA Internet Protocol Suite, IEEE Communications
Magazine, vol. 23, no. 3 (March 1985) (Ex. 1021);
• U.S. Patent No. 5,519,761 to Gilhousen (filed July 8,
1994, issued May 21, 1996) (Ex. 1022);
• U.S. Patent No. 6,175,717 to Rebec, et al. (filed May 21,
1994, issued January 16, 2001) (Ex. 1023);
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• Brian H. Davies, et al., The Application of Packet
Switching Techniques to Combat Net Radio, Proceedings
of the IEEE, vol. 75, no. 1 (1987) (Ex. 1024);
• Steven L. Telleen, The IntraNet Architecture: Managing
information in the new paradigm (June 1996), available
at http://www.iorg.com/papers/amdahl/infra.html (Ex.
1025);
• 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/ (Ex. 1026);
• 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) (Ex. 1027);
• A. Lyman Chapin, Open Systems Networking: TCP/IP
and OSI (Addison Wesley Sept. 1993) (Ex. 1028);
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• Leonard Kleinrock, Nomadic Computing – An
Opportunity, ACM SIGCOMM Computer
Communication Review, Vol. 25, Issue 1 (Jan. 1995)
(Ex. 1029);
• Fifer and Bruno The Low-Cost Packet Radio Proceedings
of the IEEE, Vol. 75, No. 1 (Jan. 1987) (“Fifer”) (Ex.
1030);
• ITU H.261 MPEG-1 (Ex. 1031);
• ITU H.263 MPEG-3 (Ex. 1032);
• Patent Owner Preliminary Response in IPR2016-00628
(Ex. 1033);
• Kleinrock, L., Nomadic Computing, Proc. IFIP/ICCC
Int’l Conf. Information Network Data Communication
(Chapman & Hall, London 1996) (Ex. 1034); and
• Randy H. Katz, Adaptation and Mobility in Wireless
Information Systems (April 18, 1995) (Ex. 1035);
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• Patent Owner’s Infringement Contentions in Advanced
Media Networks, LLC, 15-cv-00410 (D. Del.) (June 9,
2016) (Ex. 1043).
B. Background & Qualifications
4. Attached to this Declaration as Appendix A is a true and correct
copy of my current CV, which describes my education, patents and publications,
employment and research history, and professional activities and awards.
5. My educational background includes receiving a Master of
Engineering degree in Electrical engineering from Cornell University in 1980, and
a Bachelor of Science degree in Electrical engineering from Cornell University in
1979.
6. I have been an Electrical engineer working in the wireless
communications field for 35 years. I am currently an engineering consultant
actively engaged in product design for wireless systems. I also perform expert
consulting work in intellectual property cases. My product design work includes
the design of digital, analog, and radio frequency (RF) circuits and systems for
wireless communication products. I design wireless hardware, software, low-level
firmware, algorithms, and entire wireless system architectures. My work often
includes system analysis and system engineering. System analysis involves
analyzing the performance of approaches to wireless system architecture and often
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includes boiling down how the parameters of a design affect an over-all problem.
Typically it incorporates simulations of a system or part of a system and
comparisons of different techniques. System engineering involves the design of
operational algorithms and specifying the details from input to output to achieve a
wireless system that suits a specific set of architectural requirements. I also do
hands-on system integration, which is working in an engineering laboratory
building and debugging wireless hardware and software to put together a final
product, including testing the product, making design adjustments to pass
regulatory and performance requirements, and assisting in the development of test
systems for mass production.
7. I was employed at MIT Lincoln Laboratory in the Analog
Device Technology Group for 6 years between 1980 and 1986, and for five of
those years I was a Senior Staff Member. Lincoln Laboratory is a federally funded
research and development center administered by the Massachusetts Institute of
Technology, with specialties in advanced radio communications and radar
technology.
8. At Lincoln Lab, I was given charge of a project to build the
packet signal processing and control circuits for the Defense Advanced Research
Projects Agency (DARPA) Advanced Packet Radio, which was the Packet Radio
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Network (PRNET) part of the Survivable Radio Network (SURAN) program; one
of the first “short range” outdoor wireless networks.
9. In 1986, Microwave Journal called this work the most advanced
radio reported to date. I authored or co-authored six papers on various aspects of
this radio. One of these was an invited paper published in the 1987 Proceedings of
the IEEE, called the “Special Issue on Packet Radio Networks.” I was inducted as
a Senior Member of the IEEE for my contributions to communications
engineering.
10. After leaving MIT Lincoln Laboratory, I worked at
MICRILOR, a small company in Wakefield, MA, spun out of my group at Lincoln
Lab, which aimed to commercialize advanced radio technology. I spent the next
14 years at MICRILOR developing high performance, low cost radio modems and
networks, as well as other technology for communications and radar. In 1994, we
built a prototype, and received a patent on, a packet radio for transmitting 10 Mbps
within the FCC direct sequence spread spectrum regulations that had an Ethernet
interface and operated at 2.4 GHz. We engaged in a joint development with a
major corporation to create wireless networking products based on this technique
over the next few years, and it was in production in 1996. In 1997, MICRILOR
presented the technique in a proposal to the IEEE 802.11 working groups for
“Higher Speed PHY Extension” in the 2.4 GHz Band as well as the 5 GHz band.
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The techniques in the MICRILOR proposal evolved into what is today the IEEE
802.11b standard, part of what is commonly referred to as Wi-Fi, incorporated into
over 1 billion chips/year.
11. MICRILOR was purchased by Proxim, Inc., and I continued to
work on wireless products at Proxim for the next 3 years until 2003. During this
period I worked on a wide range of radio designs from the higher level protocols
and network bridging, to interference management, RF circuits and antennas.
12. In 2004, I started working in radio frequency identification
(RFID) and helped start a company which quickly became the leader in RFID
infrastructure. From 2004 to 2007 I served as the technical co-chair of the
standards body working group that developed a new international standard for
RFID that is still the standard in use today. I also served on committees to create
various compatibility and regulatory standards worldwide.
13. In recent years I have also provided technical consulting
services. Some examples of that work include developing product design plans for
in-home wireless sensor networks (for a major corporation), integrating a
communications package for networked video from multiple drones (for Draper
Laboratory), building a frame-based backhaul radio for LTE systems (for Fastback
Networks), and investigating transmit beamforming in LTE and Wi-Fi systems.
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14. I am the inventor or co-inventor on more than 12 patents, which
relate to technologies such as high speed wireless network communications, radio
frequency identification systems, and underwater communications.
15. In light of the foregoing, I consider myself to be an expert in
the fields of telecommunications, wireless networking, and wireless
communications systems.
16. I am being compensated for my time spent on this matter at a
rate of $300 per hour, and my compensation is in no way contingent upon the
outcome of this matter or on the opinions I offer. All of the opinions expressed in
this Declaration are my own.
17. My opinions are based on my review of the ‘074 patent, its
prosecution history, and other materials identified herein, along with expertise
obtained through my education and experience in the field. I reserve all rights to
modify and add to my opinions in response to additional information provided to
me, and in response to any opinions offered by the Patent Owner.
II. OVERVIEW OF THE ’074 PATENT
18. The ’074 patent is entitled “Mobile Tele-Computer Network for
Motion Picture, Television and TV Advertising Production.” (Ex. 1001.) This
patent issued to Curtis Clark on September 28, 1999 from an application filed on
September 23, 1996. (Id.)
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A. The Claimed Invention
19. The ’074 patent discloses a mobile wireless communications
network, which is depicted in Figure 1 of the patent. Pursuant to the ’074 patent,
“a wireless local area network (LAN)” exchanges information with a “wireless
wide area network (WAN)” through a “mobile hub.” (Id. at 2:40-48.) The mobile
hub “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.)
20. The wireless LAN may connect “multiple remote personal
computers (PCs)” or workstations, as network “nodes.” (Ex. 1001 at 4:32-34.) In
one embodiment, “the LAN 104 covers an
‘on site’ radius of up to 1/2 mile at 2 Mbps
from a mobile hub station.” (Id. at 4:33-
36.) The mobile communication system
of the ’074 patent allows, for example,
“transmission of high resolution video
images directly from a digital post
production house to a shooting location.”
(Id. at 3:62-63.)
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21. The ’074 patent indicates that the “mobile hub” may use 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 mobile hub,
however, is considered to be “nomadic” regardless of whether it transmits from a
stationary or non-stationary position: “even though the transfer of data only 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.” (Id. at 5:1-5.)
22. The system of the ’074 patent can be configured to use a variety
of well-known, prior art protocols to transfer information. For example, “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 2:51-55.)
Additionally, the system could use the protocols listed at lines 4 – 10 of column 3
of the ’074 patent:
Although the present invention is described with use of the TCP/IP
Internet protocol, other protocols may be used. For instance, other
protocols which may be employed by the present invention include
asynchronous transfer mode (ATM), Internet Package 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
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Interface (FDDI), Reliable Multi-cast Transfer Protocol (RMTP), and
Multiprotocol OVER ATM (MPOA).
23. The wireless WAN of the ’074 patent is described as a
“redundant digital microwave communication system.” (Ex. 1001 at 2:43-44.) In
one embodiment, the wireless WAN is comprised of towers and multiple, point-to-
point links that can communicate with two other nodes to form a redundant link in
the form of a microwave ring. (Id. at Fig. 1.) “If one link is not functional, data
may be routed in opposite direction to arrive at its designated location.” (Id. at
3:65-66.)
B. Level of Ordinary Skill in the Art
24. MBUSA has requested that I offer an opinion on the education
and/or professional experience necessary for one to be considered a person of
ordinary skill in the art with respect to the technology disclosed in the ’074 patent.
To offer such an opinion, counsel for MBUSA has informed me that I should
consider: (i) the education of the inventors at the time of the filing; (ii) the
character of the problems confronted in the prior art; (iii) the previous solutions to
those problems; (iv) the rate of technological advancement in the art; (v) the
complexity of the invention; and (vi) the typical education level of workers in the
field.
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25. As noted above, the application for the ’074 patent was filed on
September 23, 1996. I have thus considered the ’074 patent and the prior art
references from the perspective of one of ordinary skill in the art in
September 1996.
26. A person of ordinary skill in the art with respect to the
’074 patent would have had at least a Bachelor’s degree in electrical engineering,
computer engineering, computer science, with at least one course in
communications, and approximately 2 or more years of experience in the field of
wireless networking technology. Additional formal education in the appropriate
fields may substitute for industry experience to qualify one as a person ordinary
skill in the art and additional experience in the field could substitute for formal
education.
27. My professional and educational qualifications demonstrate that
I am a person of at least ordinary skill in the art with respect to the ’074 patent.
C. Challenged Claims
28. The ’074 patent has 171 claims, including 10 independent
claims (claims 1, 14, 24, 28, 38, 128, 148, 158, 159, and 160) and 161 dependent
claims. As noted above, I have been asked to opine on 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,
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154, 157, 160, 161, 165-167, 169, and 171, which I will refer to collectively as the
“Challenged Claims.”
29. The independent claims of the ’074 patent generally follow the
same pattern, which can be seen in claim 1:
1. [a] A telecomputer network system comprising:
[b] a redundant digital microwave communication
system;
[c] a wireless local area network (LAN); and
[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.
30. As I did above, each independent claim can be broken down
into five elements, which I will refer to as Elements [a], [b], [c], [d], and [e]
throughout this declaration. The five elements of independent claims 1, 14, 28,
128, 148, and 160 are set forth below for ease of comparison:
Element [a] (preamble)
[1a] A telecomputer network system comprising:
[14a] A telecomputer network comprising:
[28a] A system comprising:
[128a] A telecomputer network system comprising:
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[148a] A system comprising:
[160a] A telecomputer network system comprising:
Element [b]
[1b] a redundant digital microwave communicationsystem;
[14b] a wireless wide area network (WAN)comprising a redundant digital microwavecommunication system configured to operate asa intranet;
[28b] a communication subsystem;
[128b] a redundant digital microwave communicationsystem;
[148b] a communication subsystem;
[160b] a redundant digital microwave communicationsystem;
Element [c]
[1c] a wireless local area network (LAN); and
[14c] a wireless local area network (LAN), whereinthe wireless LAN comprises a plurality of nodeswith an individual personal computer at each ofthe plurality of nodes; and
[28c] a wireless local area network (LAN) thatincludes at least one computer; and
[128c] a wireless local area network (LAN); and
[148c] a wireless local area network (LAN) thatincludes at least one computer; and
[160c] a wireless local area network (LAN) operable toconnect to at least one computer; and
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Element [d]
[1d] a mobile hub station configured to transferinformation as a single nomadic transmission/reception point between the microwavecommunication system and the wireless LAN
[14d] a mobile vehicle configured to transferinformation as a single nomadictransmission/reception point between themicroware communication system and thewireless LAN
[28d] a mobile hub configured to transfer broadbandinformation as a single nomadic transmission/reception point between the communicationsubsystem and the wireless LAN
[128d] a mobile hub station configured to transferinformation as a single nomadic transmission/reception point between the microwavecommunication system and the wireless LAN
[148d] a mobile hub configured to transfer broadbandinformation as a single nomadic transmission/reception point between the communicationsubsystem and the wireless LAN
[160d] a mobile hub station configured to transferinformation as a single nomadic transmission/reception point between the microwavecommunication system and the wireless LAN
Element [e]
[1e] using an ethernet packet switching protocol.
[14e] using the TCP/IP protocol.
[28e] using an ethernet packet switching protocol.
[128e] using an Internet protocol.
[148e] using an Internet protocol.
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[160e] using an Internet protocol.
D. Claim Constructions
31. I have been notified by MBUSA’s counsel that in evaluating
whether claims of the ’074 patent are obvious in view of the prior art, I should
accord the language of the claims its ordinary and customary meaning to those
skilled in the art in September 1996. I understand that the ordinary and customary
meaning of a term may be evidenced by a variety of sources, including the words
of the claims themselves, the specification, drawings, and prior art. I also
understand that the best source for determining the meaning of a claim term is the
specification of the ’074 patent. Finally, I understand that the words of the claim
must be given their plain meaning unless the plain meaning is inconsistent with the
specification.
1. “digital microwave communication system”
32. Independent claims 1, 14, 128, and 160 include the term
“digital microwave communication system.” Those of ordinary skill in the art in
September 1996 would have understood this term, in the context of the ’074 patent,
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 range of 300 MHz to 300 GHz.”
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33. The above construction reflects the customary and ordinary
understanding of the microwave frequency range which is reflected in the
following spectrum chart from the FCC:
34. Although the above chart defines “microwave” frequencies as
100 MHz to 300 GHz, the frequencies between 100 MHz and 300 MHz are for
communications across a physical medium (a wire or pc board) because on this
medium waves travel slower, which extends the lower end of the spectrum of
interest for the FCC. Because the ’074 patent relates to a wireless communication
system, a person of ordinary skill in the art would have understood that
“microwave” in this context referred to frequencies between 300 MHz and 300
GHz. I would note, however, that whether the “microwave” range begins at 100
MHz or 300 MHz does not alter the opinions I have offered below.
35. It may also be helpful to understand more generally why a
communication would be referred to as a “microwave” communication.
“Microwave” refers to the length of the wave that carries the information being
communicated. In particular, “microwave” refers to waves that are between 1
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millimeter and 1000 millimeters in length. For transmissions through air, those
wavelengths are generated between 300 MHz and 300 GHz.
36. Notably, describing a communications system as a
“microwave” communications system does not describe the geographic size of the
system, the type of antenna used, the networking protocols that are used, or
numerous other characteristics of the system. A “microwave” communication
system could cover a large or small geographic area, could be mobile or stationary,
and could use different types of antennas and numerous different protocols.
37. Most satellite systems and many terrestrial systems are
examples of communications systems that can use microwave communications.
38. Also by way of background, a “digital” system is a system that
uses discrete amplitudes to transmit digital information (e.g. binary digital data bits
represented by a “1” or a “0” is digital information). The discrete amplitudes
encode blocks of digital data that include one or more bits. When a system has a
data rate expressed in terms of the number of bits or bytes transmitted per second,
that system is necessarily a digital system. When an analog signal, such as voice
or video is passed through a digital system, it must first be digitized and will be
subject to the transmission rate specified in this way.
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2. “redundant digital microwave communication system”
39. Those of ordinary skill in the art in September 1996 would have
understood “redundant digital microwave communication system” to mean “a
digital microwave communication system that allows for the transmission of
digital data in the event of a non-functional communications path or device.” This
construction is generally supported by the ’074 patent, dictionary definitions, and
the Patent Owner’s prior positions.
40. Looking first to the specification of the ’074 patent, redundancy
is described in column 3, line 64, to column 4, line 2: “The microwave ring
employs system redundancy so that if one link is not functional, data may be
routed in the opposite direction to arrive at its designated location.”
41. Looking next to extrinsic evidence, “redundancy” has been
defined as “[h]aving one or more ‘backup’ systems available in case of failure of
the main system.” (Ex. 1017 at 943.)
42. The Patent Owner has also previously proposed this
construction of “redundant.” (Ex. 1011 at 26-27.)
3. “broadband information”
43. A person of ordinary skill in the art in September 1996 would
have construed “broadband information” as used in the ’074 patent to mean “data
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that requires a broadband connection with a carrying capacity sufficient for the
transmission of video in real time.”
44. This construction is supported by the disclosures of the ’074
patent. In particular, the disclosure at column 5, lines 17 to 24, explains that the
invention of the ’074 patent “provide[s] a conduit infrastructure for internet
information system management interactive relay of broadband video in real-time
and at full workstation resolution.”
45. I would also note that the Patent Owner has previously taken
the position that a data rate of 200 k-bit/s is sufficient to transfer “broadband”
information. (Ex. 1011 at 30.)
46. Other extrinsic evidence indicates that a data rate of 200 kbps
would be sufficient to transfer compressed video data in September 1996. The
“Video Coding for Low Bit Rate Communication” standards, starting with MPEG-
1 (ITU H.261) (Ex. 1031) was ratified in 1988 and could send real time video at a
rate as low as 40 kbps. The follow-on standards including MPEG-3 (ITU H.263)
(Ex. 1032), ratified in March of 1996, offered higher levels of compressed video at
rates selectable as low as 96 kbps.
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4. “configured to transfer [broadband] information as a singlenomadic transmission/reception point between themicrowave communication system [communicationsubsystem] and the wireless LAN”
47. Based on the disclosures in the ’074 patent, a person of
ordinary skill in the art would have understood the phrase “configured to transfer
[broadband] information as a single nomadic transmission/reception point” to
mean “configured to act as a single transmission/reception point between the
microwave communication system [the communication subsystem] and the
wireless LAN capable of transmitting [broadband] information from different
locations.”
48. This construction is consistent with the specification of the ’074
patent, which states (Ex. 1001 at 4:61-5:6):
When the mobile hub station has reached its location, its
antenna is calibrated. In one embodiment, the calibration
process is a line of sight process. In an alternative
embodiment, the calibration process is not necessary where
the mobile hub station includes an omni-directional antenna
and is able to transfer information from a non-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.”
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49. Based on this disclosure, those of ordinary skill in the art would
have understood that a “mobile hub” capable of “nomadic” transmissions is one
that can move and transmit/receive data at different locations. This passage also
makes clear that a “mobile hub” capable of “nomadic” transmissions need not
actually transmit/receive data while in motion. To the contrary, the ’074 patent
specifically discloses that a “mobile hub” can be a “nomadic”
transmission/reception point even if it transmits and receives data only from a
stationary position, using, for example, an antenna with line of sight calibration.
50. The claims of the ’074 patent also support the above
construction. For example, dependent claim 58 adds the following limitations to
claim 1: “wherein the mobile hub station comprises an omni-directional antenna,
wherein the omni-directional antenna allows for the transfer of information from a
non-stationary position.” Claim 9 of the ’074 patent already required the use of an
omni-directional antenna. As a result, if claim 1 already required transmission
from a non-stationary position, claim 58 would have been redundant and
meaningless in view of claims 1 and 9. Reviewing claims 1, 9, and 58 together, a
person of ordinary skill in the art would have understood that claim 58 was
included to add a new requirement to further narrow claim 1: i.e., transmission
from a non-stationary position.
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51. I understand that the Patent Office has previously construed this
term to require that a mobile hub transmit and receive data while moving (i.e.,
from a non-stationary position). For the reasons set forth above, I respectfully
disagree with this construction. First and foremost, it is inconsistent with the
specification, which I understand is supposed to be considered the best evidence of
how a claim should be construed. Second, I disagree that the extrinsic evidence
identified by the Patent Owner (see Ex. 1033 at 22) supports a requirement that a
nomadic transmission/reception point must transmit information while in motion.
Rather, the extrinsic evidence confirms that “nomadic” transmission/reception
means transmission from different locations (i.e., as a “nomad”), which can, but
need not, include transmissions while in motion. For example, the Kleinrock
article that the Patent Owner has cited (Ex. 1034) notes that “[a]ccess to wireless
communications provides two capabilities to the nomad. First, it allows him to
communicate from various (fixed) locations without being connected directly into
a wireline network. Second, it allows him to communicate while traveling.” (Ex.
1034 at 7.) In other words, the Kleinrock article says precisely the same thing as
the ’074 patent – either stationary or non-stationary transmissions are considered
“nomadic” if they occur at different locations. (Compare id. with Ex. 1001 at 4:61-
5:6.) Elsewhere, the Kleinrock article supports this construction of “nomadic” by
stating that while “wireless communications may be a component of nomadicity,
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[they are] not a necessary component. When people travel across the country and
check into a hotel, they have made a nomadic move as they attempt to connect
their laptop via a wireline analog modem.” (Ex. 1034 at 3.) The same is true for
the Katz article that the Patent Owner has also previously referenced. (Ex. 1035 at
3.) While the Katz article refers to a “nomadic” user that is able to access a
network in different locations (consistent with the construction I’ve offered above),
Katz does not indicate that a user is only “nomadic” if he or she is able to transmit
while in motion.
52. Importantly, while I disagree that the term “configured to
transfer [broadband] information as a single nomadic transmission/reception point”
requires transmission from a non-stationary position, adopting such a construction
would not change my opinion that the Challenged Claims of the ’074 patent are
obvious. To the contrary, as discussed below, numerous prior art references
disclose a mobile hub that transmits and receives information from a non-
stationary position. Narrowing the Challenged Claims to cover only systems that
transmit from non-stationary positions, however, would improperly eliminate other
invalidating prior art, or require combinations of those references with art that
discloses non-stationary transmissions. As such, I have offered (and supported)
what I believe to be the plain and ordinary meaning of “configured to transfer
[broadband] information as a single nomadic transmission/reception point between
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the microwave communication system [communication subsystem] and the
wireless LAN”: “configured to act as a single transmission/reception point between
the microwave communication system [the communication subsystem] and the
wireless LAN capable of transmitting [broadband] information from different
locations.”
5. “wireless local area network (LAN)”
53. A person of ordinary skill in the art in September 1996 would
have understood “wireless local area network” to be a “wireless data
communications network covering a local geographic area of up to several
kilometers.”
54. Starting again with the specification, the ’074 patent uses
“wireless LAN” according to its ordinary meaning. For example, the ’074 patent
states that the 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 discloses one
embodiment with a LAN that has a radius of ½ mile (i.e., a diameter of 1.6
kilometers) and connects multiple personal computers. (Id. at 4:35.)
55. Consistent with the disclosures of the ’074 patent, a person of
ordinary skill in the art would have understood a wireless LAN to be a wireless
network that “spans distances from several meters to several kilometers in length.”
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(Ex. 1005 at 1497-98.) For example, according to Clark, a LAN would cover a
distance between 0.1 kilometer and 10 kilometers. (Id. at Fig. 1.) A dictionary
definition contemporaneous with the ’074 patent similarly defined a local area
network 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.” (Ex. 1017
at943.)
56. It is important to note that there is no rigid geographic distance
that defines a “local area network,” which is reflected in Clark. (Ex. 1005 at 1497-
98.) A local area network could be the size of a room, a building, or a campus. It
is also important to note that the size of a local area network could overlap with the
size of a wide area network, as is again reflected in Clark. (Id. at Fig. 1.)
6. “wireless wide area network”
57. A person of ordinary skill in the art in September 1996 would
have construed a “wireless wide area network (WAN)” to be a “wireless data
communications network covering a wide geographic area of more than several
kilometers.” Again, this construction is reflected in both the intrinsic and extrinsic
evidence.
58. The ’074 patent describes the WAN as being comprised of
multiple hubs. In one embodiment, each hub has an “omni-directional radius of
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8/9 miles and up to 25 miles with directional focus.” (Ex. 1001 at 4:24-25.) In
another embodiment, “each of the hubs are separated by 6 to 10 miles.” (Id. at
3:51-52.) Based on these disclosures, a person of ordinary skill in the art would
have understood the ’074 patent to use WAN according to its ordinary meaning of
a network covering a geographic area of more than a few kilometers.
7. “ethernet packet switching protocol”
59. I understand that Patent Owner has proposed construing
“ethernet packet switching protocol” to mean “a protocol for communication
between devices over a 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.) I have adopted this construction for the purpose of my analysis, subject to the
comments below.
60. As an over-arching matter, it is important to stress that,
regardless of the particular construction adopted for “ethernet packet switching
protocol,” the TCP/IP protocol must qualify as an “ethernet packet switching
protocol” based on the disclosures of the ’074 patent. In particular, the ’074
patent makes clear that TCP/IP is an example of an “ethernet packet switching
protocol”:
In one embodiment, the microwave communication system
transfers information using multiple relay stations via an
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ethernet packet switching protocol such as the IEEE 802.10
protocol or the TCP/IP protocol used on the World Wide Web.
61. The claims of the ’074 patent also indicate that TCP/IP
qualifies as an “ethernet packet switching protocol.” For example, claim 3
provides: “The network defined in claim 1 wherein information is transferred using
the TCP/IP protocol.”
62. Thus, a person of ordinary skill in the art would have
understood that any construction of “ethernet packet switching protocol” must at
least encompass (and cannot exclude) the TCP/IP protocol.
63. By way of background, the TCP/IP protocol is a suite of
protocols developed from research funded by the United States Department of
Defense starting in the 1960s. (Ex. 1016 at 1.) The purpose of the research was to
allow data communications between computers running different operating
systems, from different manufacturers, or operating on different networks.
64. The TCP/IP protocol suite occurs in different manifestations in
that it may include any of a number of the protocols that operate over the Internet
Protocol (“IP”), including the Transport Control Protocol (TCP), User Datagram
Protocol (UDP), File Transfer Protocol (FTP), TELNET, Simple Mail Transfer
Protocol (SMTP) (for Email), the Internet Protocol (IP) itself, and others. (Ex.
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1021.) The figure below, from a 1994 textbook entitled “TCP/IP Illustrated” (Ex.
1016) illustrates various protocols that can be included within TCP/IP:
65. As reflected in the figure, above, the TCP/IP protocol operates
on different “layers” of the Open Systems Interconnection (OSI) or ARPA
reference models. Layers of the models are defined by their function and their
interface to other layers. A layer provides services to the layer above it and
requests services of the layer below it. The lowest layer of the OSI model, the
physical layer, contains modulation and physical signaling. The next layer – the
data link layer – controls channel access and making data packets for transmission
over the physical layer. The third layer – the network layer – controls addressing
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and routing of packets through the network from source to destination. The fourth
layer of the OSI Reference Model – the transport layer – breaks data streams into
data units that can be operated on as packets and reliably reassembled at the
receiving end. Above the transport layer are the session, presentation, and
application layers, which includes the highest level functions.
66. The ARPA (now DARPA) model closely aligns with the OSI
model, breaking the functional units up at slightly different points and with
different names; the ARPA Internetwork layer aligning with the OSI network
layer. The Internet Protocol (the “IP” in TCP/IP) resides in this network layer of
the OSI Reference Model. The Internet Protocol provides an
end-to-end datagram delivery service, permitting a host to inject a packet into the
Internet and have it delivered with some degree of confidence to the desired
destination. (See Ex. 1021 at 32.) IP is a connectionless networking protocol.
Characteristic of being connectionless, packets sent over IP are consumed
independently of the transmission of other packets and each is individually
addressed.
67. The Transport Control Protocol (the “TCP” in TCP/IP) resides
in the fourth (transport) layer of the OSI Reference Model (as well as the ARPA
model). The connection oriented TCP protocol is responsible for reliably
reassembling connectionless IP packets into a message upon arrival.
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68. By the mid-1990s, the TCP/IP protocol suite was “the most
widely used form of networking between computers.” (Ex. 1016 at 1.) It was
generally known to persons of ordinary skill in the art by September 1996, written
about in many articles, and routinely used in implementing systems at that time. I
also understand that the Patent Owner has taken the position that devices that are
capable of accessing web sites over the Internet must necessarily use TCP/IP. (Ex.
1043 at 12.)
69. While the construction of “ethernet packet switching protocol”
must at least include TCP/IP, it is also clear that TCP/IP is just one example of
such a protocol. As the Patent Owner previously asserted, “ethernet packet
switching protocol” is a broad category that encompasses many different protocols
that were well-known in 1996:
The term “ethernet” as used in the Patents refers to a network
architecture that allows for “communication between devices
over a shared transmission medium” utilizing a packet
switching protocol as claimed. This key aspect of ethernet
technology is frequently encountered in dictionaries and
literature contemporaneous with the time of the invention and
illustrates the common consensus among those of ordinary skill
in the art of what constitutes an “ethernet” network. . . . The
specifications of the Patents refer to “the ethernet packet-
switching protocol” in a manner that encompassed protocols
useable on ethernet networks as commonly known in the art at
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the time of the invention. . . . [I]t is clear from the Patents that
the term “ethernet packet-switching protocol” was not intended
to be limited to a single protocol, but rather to encompass a
wide range of different protocols used on the web and on the
Internet generally, some of which are governed by standards.
(Ex. 1015 at 12.)
70. It is also important to note for background purposes that a
communications system can simultaneously use multiple different protocols.
Indeed, TCP/IP is itself a suite of protocols, as noted above. Additionally, a
communications system may use, for example, the Internet Protocol (IP) and the
Transport Control Protocol (TCP) at the network and transport layers of the OSI
model, respectively, while using parts of another protocol suite at the data link and
physical layer. It is thus a fallacy to argue that a system is capable of using only a
single protocol suite.
71. Finally, it may also be helpful in these proceedings to have
some more general background on the Ethernet protocol itself. The Ethernet
protocol was a communications protocol invented in 1973 by Robert Metcalfe and
David Boggs of Xerox Corporation. This protocol, which was ultimately embodied
in the IEEE 802.3 communication standard, is a wired networking technology and
protocol that defined the medium access control (MAC) technique, voltages, data
modulation, addressing and packet formats. The Ethernet protocol allowed the
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transmission of the signals of multiple users onto a single bus (i.e., a shared
transmission medium) so that any receiver could hear any transmitter on that bus.
These devices were considered to be within the same “collision domain” because if
more than one transmitted at a time, the signals would collide and the data could
not be demodulated at a receiver. As such, the Ethernet MAC used carrier sense
multiple access (CSMA) to negotiate the use of the shared medium. Carrier
sensing meant that each transmitter would listen for other transmitters just prior to
starting its transmission. (Ex. 1004 at 1476, col. 2.) Similar to the way (polite)
humans have conversations, this allows one transmitter at a time to occupy the
common channel.
8. “intranet” / “secured private intranet” / “private intranet”
72. A person of ordinary skill in the art in September 1996 would
have understood the terms “intranet” / “secured private intranet” / “private
intranet” to mean “a private data network within a company or organization
accessible only to members or employees.” This construction is again consistent
with the disclosures of the ’074 patent and various sources of extrinsic evidence.
73. The ’074 patent indicates that an “intranet” is one that is a
private network within an organization, such as a media production company. For
example, column 2, lines 57 – 67, states that “the wireless WAN of the present
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invention operates as a private Intranet . . . such as one used by media production
industries.”
74. The term “intranet,” as it was used in the ‘074 specification,
was coined by Steven L. Telleen in 1994. Telleen described an “intranet” as
content management and workflow that use the Internet and World Wide Web
infrastructure with access to the content limited through authentication. He
distinguished an intranet from physical separation of the content. “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.” (Telleen 1995).
75. The customary meaning of “intranet” is also reflected in various
dictionaries. For example, the Cyber Dictionary defines “intranet” as “[a]n 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. 1012 at 153.)
76. It is important to note that a person of ordinary skill in the art
would have understood an intranet to be a private-content network accessible by
employees or members of an organization. By contrast, a public network,
including those accessible only with a subscription, would not have been
considered an “intranet.” For example, many hotels and coffee shops offer
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authenticated WiFi access to the Internet for customers and private services in
airports offer paid WiFi access to the Internet. A person of ordinary skill in the art
would not consider these public networks to be an “intranet,” even if the
subscription to the network entitled the user to access content not available to those
without a subscription, such as their own account information, that can be accessed
by only the subscriber and customer service. In another example, a common
carrier may have an internal network accessible only to its employees for sharing
internal company information, such as sales figures, design details, data and video
files for internal use, and other non-public information. This type of network is an
“intranet.” By contrast, the subscribers to the common carrier’s services do not
have access to the company’s internal network by virtue of paying to use the
telephone/data service. It is for this reason that I disagree with the construction of
“intranet” that Patent Owner has proposed in other proceedings – i.e., “an Internet
reserved for use by people who have been given the authority and passwords
necessary to use that network.” (See Ex. 1033 at 28.) The phrase “Internet
reserved for use” is ambiguous in referring to the limitations on content access.
Patent Owner’s proposed construction would improperly reach public subscription
networks (e.g., cellular data networks, WiFi hotspots at coffee shops and hotels)
that persons of ordinary skill in the art would not consider “intranets.”
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III. ANALYSIS AND OPINION ON ISSUES OF INVALIDITY
77. In my opinion, as explained below, the Challenged Claims of
the ’074 patent are obvious in light of the prior art.
A. Legal Framework
78. Counsel for MBUSA provided me with the legal framework I
used in conducting my analysis. This section sets forth the legal framework I was
provided by counsel.
79. I understand that, unlike anticipation under 35 U.S.C. § 102, a
finding of obviousness under 35 U.S.C. § 103 does not require that every element
of a claim limitation be found within a single prior art reference. Rather,
obviousness may be shown by combining prior art references. A patent claim is
invalid under § 103 if the differences between the claimed subject matter and the
prior art (alone or in combination) are such that the subject matter as a whole
would have been obvious (or obvious to try) to a person having ordinary skill in
the art of the invention at the time the invention was made.
80. Counsel for MBUSA has explained to me that, when
conducting an obviousness analysis, it is necessary to determine the scope and
content of the prior art, ascertain any differences between the prior art and the
claim(s) at issue, and determine the level of a person of ordinary skill in the art.
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81. I further understand that a mere demonstration that each
element of the patent claim was, independently, known in the prior art is
insufficient to render a claim obvious. Rather, there must have been a reason why
a person of ordinary skill in the art would have been motivated to combine the
prior art references and would have had a reasonable expectation of success in
doing so. To determine whether there was an apparent reason to combine the
known elements in the way the patent claims, it is often necessary to look to the
interrelated teachings of multiple prior art references, to the effects of demands
known to the design community or present in the marketplace, and to the
background knowledge possessed by a person having ordinary skill in the art at the
time of the invention. Furthermore, I understand that any need or problem known
in the field and addressed by the patent can provide a reason for combining the
elements in the manner claimed. However, the use of hindsight and the teaching(s)
of the asserted patent(s) should not be used to explain why prior art references
would have been combined.
82. It is not necessary for the prior art itself to provide a reason to
combine prior art references. However, if the prior art does provide a teaching,
suggestion or motivation to combine references, this can be evidence of
obviousness. Also, I understand that familiar terms may have obvious uses beyond
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their primary purposes, and a person of ordinary skill will often be able to fit the
teachings of multiple references together.
83. I also understand that, in cases where there is a design need or
market pressure to solve a problem and there are a finite number of identified,
predictable solutions to solve that problem, a person of ordinary skill in the art has
good reasons to pursue the known options within his or her technical grasp. If
these options lead to the anticipated results, then the result is likely not the product
of innovation but of common sense to one of ordinary skill, and therefore obvious.
Thus, I understand the proper inquiry to be whether the improvement amounts to
more than the predictable use of prior art elements according to their established
functions since a combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
84. Finally, I have been informed that objective indicia of non-
obviousness – sometimes referred to as “secondary considerations” – should be
considered when assessing obviousness. These secondary considerations can
include: (a) commercial success; (b) long-felt but unresolved needs; (c) copying of
the invention by others in the field; (d) initial expressions of disbelief by experts in
the field; (e) failure of others to solve the problem that the inventors solved; and (f)
unexpected results. I understand that if these factors are present, I should consider
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them and weigh them against any finding of obviousness that I may make based on
my examination of the prior art.
B. The Elements of the Challenged Claims Were Generally Knownto Persons of Ordinary Skill in the Art in September 1996
85. Before addressing the specific grounds of invalidity, which are
set forth below, it is helpful to make a few general observations concerning the
elements of the Challenged Claims of the ’074 patent. In particular, it is important
to emphasize that every element of the Challenged Claims was very well-known to
persons of skill in the art prior to September 1996. Moreover, each of these known
elements is used in the Challenged Claims to perform its established and routine
function. As such, the combination of the various claim elements does not provide
any new or unexpected result.
86. As noted above, each Challenged Claim requires a microwave
communication system (or a communication subsystem), a wireless LAN, a mobile
hub station or vehicle, and use of a communications protocol (e.g., TCP/IP).
Curtis Clark, the named inventor of the ’074 patent, did not invent any of these
elements, improve the functioning of any of these elements, or apply any of these
elements in a new or novel way.
87. Microwave communication systems – including redundant
digital systems – had been known for decades prior to September 1996. For
example, Robert E. Kahn, et al., Advances in Packet Radio Technology,
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Proceedings of the IEEE, Vol. 66, No. 11 (Nov. 1978) (Ex. 1004), described a
redundant digital microwave (packet-switching radio) network in 1978, nearly 20
years before the application for the ’074 patent was filed. Kahn’s paper was
published in a special issue of the Proceedings of the IEEE entitled “Special Issue
on Packet Communications Networks.” In the same special issue, a paper by Irwin
Jacobs – General Purpose Packet Satellite Networks (Ex. 1006) – described a
redundant digital microwave (satellite) network. These are just two examples of
redundant digital microwave communication systems well-known to persons of
ordinary skill in the art prior to September 1996. It should thus be clear that the
’074 patent did not invent such systems. Moreover, the ’074 patent does not
disclose any way of improving pre-existing microwave communication systems.
For example, the ’074 patent does not disclose a new way to make microwave
communication systems “redundant,” incorporating instead known microwave ring
techniques (Ex. 1001 at 3:64-66) in the sole passage mentioning redundancy. Nor
does the ’074 patent disclose any new or novel application for such systems. To
the contrary, the ’074 patent incorporates known redundant digital microwave
communication systems (or communication subsystems) to perform the routine
functions typically performed by such systems in 1996.
88. Wireless local area networks and wireless wide area networks
were also known for decades prior to September 1996. For example, nearly two
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decades before the application for the ’074 patent, David D. Clark, et al., An
Introduction to Local Area Networks, Proceedings of the IEEE, Vol. 66, No. 11
(Nov. 1978), noted that local area networks had already been demonstrated using
radio transmissions. (Ex. 1005 at 1504.) In 1987, Clifford Lynch and Edwin
Brownrigg wrote a book entitled “Packet Radio Networks,” which similarly
discussed forming a local area network with packet radios. (Ex. 1008 at 40.) So,
again, the ’074 patent did not invent wireless LANs or wireless WANs. The ’074
patent also does not disclose any way of improving the operation of such systems
or using wireless LANs or wireless WANs in some new or novel way. Rather, the
’074 patent merely uses wireless LANs and wireless WANs to perform the
standard and well-understood functions of such systems, which is to move data
between geographically separated locations.
89. I understand that Patent Owner has asserted in other
proceedings that wireless LANs were “immature” and “fragmented” in September
1996 because the first version of the IEEE 802.11 standard was not released until
1997. (Ex. 1033 at 31, 50.) There are numerous problems with these assertions. It
is not accurate to suggest, for example, that wireless LAN technology was new or
novel in 1996 in advance of the release of the 802.11 standard. Nor is it accurate
to suggest that the availability of different wireless communications systems prior
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to the release of IEEE 802.11 would have prevented a person of ordinary skill in
the art from combining aspects of different systems.
90. Although the IEEE 802.11 standard was released in 1997, the
work on that standard was widely reported and well-known to persons of ordinary
skill in the art prior to 1996. For example, in 1994 – two years before the
application for the ’074 patent – an article in IEEE Magazine by Kwang-Cheng
Chen detailed progress on the IEEE 802.11 standard. Additionally, the standard
released in 1997 was largely based on the AT&T WaveLAN system, which had
been sold commercially into numerous markets since 1988 and was integrated by
OEMs, such as Digital Equipment Company, into their products. The technology
underlying the WaveLAN system (and subsequently IEEE 802.11) was also
written about in many articles, and was well-known to persons of ordinary skill in
the art. (See, e.g., Ex. 1037 at 5:51-55 (using existing WaveLAN system to
implement mobile communications network).) Put simply, the wireless
networking technology underlying the 802.11 standard was well known before the
application for the ’074 was filed.
91. The ’074 patent also belies Patent Owner’s assertion that
wireless LAN technology was so “fragmented” in advance of the release of the
802.11 standard that a person of ordinary skill in the art would not consider
combining aspects of wireless LAN systems. Quite to the contrary, a market of
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diverse ideas means that there are multiple solutions and more prior art in this area
to consider in solving problems. Moreover, the absence of the IEEE 802.11
standard encouraged persons of ordinary skill in the art to integrate features of
different systems. Indeed, the ’074 patent actually discloses – as was well known
to persons of skill in the art – that wireless LANs could use many different
available protocols and the selection of those protocols was a straight-forward
design choice. (See Ex. 1001 at 3:1-10.)
92. Finally, the underlying implications of Patent Owner’s
assertions – that the ’074 patent somehow improved wireless local area networking
technology – is also clearly incorrect. As is noted above and apparent on the face
of the ’074 patent, the Challenged Claims merely make use of already existing
wireless LAN systems; there is no disclosure of any new wireless LAN technology
or any way of improving existing technology.
93. Mobile hubs were also known prior to September 1996. For
example, Kahn’s paper disclosed in 1978 a packet radio hub that operates while
moving “at normal vehicular ground speeds within the area of coverage.” (Ex.
1004 at 1470). Richard Binder, et al., Crosslink Architectures for a Multiple
Satellite System, Proceedings of the IEEE, Vol. 75, No. 1 (Jan. 1987), disclosed
hubs mounted on airplanes and ships. (Ex. 1003 at 75.) U.S. Patent No. 5,519,761
to Gilhousen, entitled “Airborne Radiotelephone Communications System,”
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similarly described a hub mounted on an airplane. (Ex. 1022.) U.S. Patent No.
6,175,717 to Rebec, et al., entitled “Global Mobile Video Communications
System,” described a mobile hub in the form of a satellite-communications-
connected vehicle. (Ex. 1023.) These are just a few examples of the many, many
disclosures of mobile hub stations prior to September 1996. It should thus be clear
that the ’074 patent did not invent mobile hubs. Moreover, the ’074 patent did not
disclose any way of improving the performance of such devices. For example, the
’074 patent did not disclose any new way of transmitting from a non-stationary
position. Nor did the ’074 patent disclose any new hardware to improve the
functionality or mobility of hubs. Nor did the ’074 patent describe any way of
improving the speed or reliability of mobile communications. Rather, the ’074
patent simply takes existing mobile hub technology and applies that technology to
perform its known and routine function.
94. The ’074 patent also did not invent any communications
protocols, including the Ethernet protocol, packet-switching protocols, the TCP/IP
protocol, or the Internet Protocol. For example, as already noted above, the
Ethernet protocol was invented by engineers at Xerox Corp. in 1973 and had been
in use for more than two decades prior to the application for the ’074 patent.
Similarly, TCP/IP was developed starting in the 1960s with funding from the U.S.
Government. (Ex. 1016 at 1.) By 1996, the TCP/IP protocol was not only
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generally known to persons of ordinary skill in the art, it was the most widely used
networking protocol. (Id.) Patent Owner has previously suggested that using
TCP/IP in wireless networks was novel or problematic in 1996 (Ex. 1033 at 50),
but that assertion is entirely incorrect. In reality, TCP/IP had been routinely used
in wireless networks for many years prior to 1996. (E.g., Ex. 1002 at 22 (TCP/IP
in packet radio network in 1987); Ex. 1007 at 858 (same in 1990); Ex. 1008 at 17
(same in 1987); Ex. 1027 (describing use of TCP/IP over satellite network in
1988). The 1978 paper by Clark also notes more generally that packet-switching
communications protocols were well-established for decades prior to the
application for the ’074 patent. (Ex. 1005 at 1497 (“Packet communication
techniques have become well known and widely understood in the nine years since
development of the ARPANET was begun.”).)
95. As demonstrated above, the communication protocols
referenced in the ’074 patent were long-known to persons of skill in the art prior to
September 1996. The ’074 patent thus instructs a person of ordinary skill in the art
that the claims can be implemented using the most widely-used and well-known
communication protocols and techniques available to perform their routine
functions. (See Ex. 1001 at 3:1-10.) The ’074 patent did not disclose any way of
modifying or improving these protocols. For example, the ’074 patent does not
disclose any way of adapting protocols designed for wired communications (e.g.,
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the Ethernet protocol) for use in a wireless system. Nor does the ’074 patent use
any of the popular, pre-existing protocols to enhance the functionality, bandwidth,
or security of wireless communications networks. Nor did the ’074 patent apply
the protocols in any new or novel way.
96. I understand that the Patent Owner has taken the position that
the combination of these previously-known elements is the allegedly novel aspect
of the Challenged Claims. I disagree. Implementing a mobile computer
communications system out of well understood components performing their
routine functions was generally obvious in September 1996, as is reflected in the
prior art references discussed more specifically below.
C. Overview of Prior Art References
97. As noted above and explained below, it is my opinion that the
Challenged Claims of the ’074 patent are obvious based on the disclosures of Jubin
in view of Binder, Clark, and (for some claims) Beyer. This section provides a
general overview of those prior art references, followed by a more detailed analysis
of the disclosures of those references in Part III.D and E.
98. As a general matter, three of the references described below –
Clark, Jubin and Binder – were published in special issues of the Proceedings of
the IEEE that were dedicated to packet communication networks. Jubin and
Binder were published in the January 1987 Proceedings of the IEEE, Vol. 75, Issue
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No. 1, which was entitled “Special Issue on Packet Radio Networks.” (Ex. 1002.)
Clark was published in the earlier 1978 issue, entitled “Special Issue on Packet
Communications Networks.” The fourth reference – Beyer – was published by the
IEEE in 1990 and cites papers published in both of the special issues, including the
paper by Jubin.
1. Overview of Jubin
99. “The DARPA Packet Radio Network Protocols,” by John
Jubin and Janet D. Tornow (“Jubin”), was an invited paper for the January 1987
Proceedings of the IEEE, Vol. 75, Issue No. 1. (Ex. 1002.) Because Jubin was
published in 1987, I understand that it constitutes prior art to the ’074 patent.
100. I understand that Jubin was considered in the reexamination
process. I will present a view of Jubin that is different than the examiner
considered. In particular, I consider the packet radio network (“PRNET”)
disclosed in Jubin to be a wireless local area network. By contrast, in the
reexamination proceeding, the PRNET was identified only as a redundant digital
microwave communication system and the Examiner was asked to find that using a
wireless LAN in combination with the PRNET would have been obvious based on
Jubin’s disclosure of a wired LAN external to the PRNET. (E.g., Ex. 1019 at 8.)
101. Jubin describes the topology, protocols, and operation of the
packet radio network (PRNET) developed under funding of the Defense Advanced
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Research Projects Agency (DARPA). Development of the PRNET began in 1973
and packet radio networks had been in operation for nearly 10 years when Jubin
was published. (Ex. 1001 at 21.) The goal of the PRNET was “to provide
computer network access to mobile hosts and terminals, and to provide computer
communications in a mobile environment.” (Id. at 21.)
102. The communications system of Jubin is illustrated in Figure 4
of the paper, which is annotated and colored below for the purpose of explanation:
103. As reflected in the diagram above, Jubin discloses a mobile
wireless LAN (shaded pink), which has six nodes in the exemplary figure. This
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pink area encloses what is called the PRNET. Figure 4 also depicts the
internetworking between the PRNET and other networks, allowing the transfer of
information between those networks. In particular, the wireless LAN of Jubin can
be interconnected to a variety of wide area networks (WANs). Two types of
wireless WAN that Jubin describes are the SATNET (blue), and other packet radio
networks. (Id.; see also id. at 22; Ex. 1024 at Fig. 1 (depicting interconnection of
radio networks).) The connection to each of these WANs is made through a single
packet radio node, which acts as the access point to the PRNET and communicates
with the gateway for the WAN. This is reflected by the red packet radio in the
above diagram, which is connected to the gateway to transfer information to and
from PRNET and the SATNET. The computers on the wireless LAN (i.e.,
PRNET) are thus able to communicate with computers on the wireless WAN,
through a mobile hub. Information, represented by the red hashed line added to the
diagram above, is transmitted across the PRNET to the gateway packet radio,
which transmits the information to the WAN. The same packet radio acts as a
gateway to receive information from the WAN, which is then forwarded across the
PRNET to the destination device. This red packet radio node serves as a mobile
hub that transfers data between the wireless WAN and the wireless LAN.
104. While the figure above depicts a multi-hop network, Jubin also
discloses that the PRNET could be configured as a single-hop network (e.g., Ex.
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1002 at 32), with each packet radio node transferring information directly to the
network entry/exit point without any relay nodes as intermediaries.
105. Jubin discloses that the computers on the PRNET can
“communicate with computers on various other packet-switched satellite,
terrestrial, radio, and local area networks that also participate on the DARPA
Internet.” (Ex. 1001. at 22.) For example, “[m]ultiple packet radio networks
operating on different frequencies may be interconnected.” (Id. at 23.) By
describing the interconnection of other packet-switched radio networks with a
PRNET, Jubin is disclosing that the LAN of a PRNET may be extended
indefinitely to create a wireless WAN comprised of packet radio networksthat can
be connected to the exemplary PRNET, which is itself a wireless LAN. Jubin also
discloses that the TCP/IP protocol suite was used in the PRNET. (Ex. 1002 at 22.)
106. A person of skill in the art in 1996 would have understood that
Jubin’s description of packet radio networks was part of a much larger body of
literature concerning such systems that had developed over the 1970s, 1980s, and
1990s. I provide a more detailed overview of a three particular papers below –
Binder, Clark, and Beyer. There were, however, may other publications
concerning packet radio networks and packet communications more generally that
a person of ordinary skill in the art would also have considered alongside Jubin.
These references reflect the general knowledge of persons of skill in the art
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concerning packet radio technology by 1996. For example, Robert Kahn’s paper
referenced above (“Advances in Packet Radio Technology”) was widely
considered a preeminent early article on packet radio networks and provides
helpful background for the disclosures of Jubin, which came nearly 10 years later.
Other relevant background references mentioned in this declaration include:
• Irwin M. Jacobs, et al., General Purpose Packet Satellite Networks,
Proceedings of the IEEE, Vol. 66, No. 11 (Nov. 1978) (Ex. 1006),
which provides background on the SATNET system referenced in
Jubin;
• Brian H. Davies, et al., The Application of Packet Switching
Techniques to Combat Net Radio, Proceedings of the IEEE, vol. 75,
no. 1 (1987) (Ex. 1024), which was published at the same time as
Jubin and discusses one embodiment of a mobile packet radio
network;
• Clifford Lynch and Edwin Brownrigg, Packet Radio Networks:
Architectures, Protocols, Technologies and Applications (Pergamon
Press, 1987) (Ex. 1008), which was published around the same time as
Jubin and describes possible implementations of packet radio
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networks for library automation, which is one of the uses of packet
radio networks specifically referenced in Jubin;
• W. Richard Stevens, TCP/IP Illustrated, Volume 1: The Protocols
(Addison Wesley 1994) (Ex. 1016), which is a textbook describing the
use of the TCP/IP protocol used in Jubin and many other packet radio
implementations;
• B. Leiner, The DARPA Internet Protocol Suite, IEEE
Communications Magazine, vol. 23, no. 3 (March 1985) (Ex. 1021),
which also provides background on the protocols referenced in Jubin.
2. Overview of Binder
107. Binder, entitled “Crosslink Architectures for a Multiple
Satellite System” and authored by Richard Binder, Stephen Huffman, Itzhak
Gurantz, and Peter Vena, was an invited paper for the same issue of the
Proceedings of the IEEE – the January 1987 “Special Issue on Packet Radio
Networks,” vol. 75, no. 1 – in which Jubin was published. (Ex. 1003.)
108. Binder describes the topology, protocols, and operation of a
packet-switched redundant digital microwave communications system built from a
network of low earth orbit satellites. Binder refers to this intercontinental wireless
WAN communication system as the “Multiple Satellite System” or “MSS.”
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109. As can be seen in the figure below, the Earth Terminals (ETs)
of the MSS can be mobile or fixed and have the ability to connect to alternate
satellites. Moreover, the satellites themselves have multiple communications paths
available for transmitting information:
110. The transmissions between the ETs and the satellites and
among the satellites can be unsynchronized and use random access to the channel.
(Ex. 1003 at 78-79.) Redundancy comes from the plethora of satellites that can act
as a network node for an ET connection. (Id. at 74.) The satellite communications
are fully digital. (Id.) Moreover, the MSS uses an end to end protocol that can
operate over a connectionless network layer. (Id. at 75.)
111. Binder describes a MSS that includes 240 satellites orbiting at
350 – 400 nautical miles above the earth. (Ex. 1003 at 75.) (By contrast, a satellite
in geosynchronous orbit would be about 22,200 miles above the earth.) The
distances between crosslink nodes in the MSS was anywhere from very small to
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over 1000 miles. (Id. at 76.) The MSS operated at 3 GHz center frequency and had
a carrying capacity of up to 10 mbps per link.
3. Overview of Clark
112. Clark, which I have already referred to above, is entitled “An
Introduction to Local Area Networks” and was authored by David D. Clark,
Kenneth T. Pogran, and David P. Reed. It was an invited paper published in the
Proceedings of the IEEE in the 1978 “Special Issue on Packet Communications
Networks,” vol. 66, no. 11.
113. As the title implies, Clark provides an introduction to local area
networks, including the components and topology of those networks, how they can
be interconnected to “long-haul” networks, and the protocols that can be used by
devices to communicate on local area networks. Clark was published in the special
issue concerning packet communications networks because “[l]ocal area networks
arose out of the continuing evolution of packet communication networks and
computer hardware technology.” (Ex. 1006 at 1497.)
4. Overview of Beyer
114. Beyer is entitled “Accomplishments of the DARPA SURAN
Program” and was authored by David A. Beyer. (Ex. 1007.) Beyer was published
by the IEEE in 1990 as part of the proceedings of the Military Communications
Conference (MILCOM ’90).
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115. Beyer describes the progress of the Survivable, Adaptive
Networks (SURAN) Program, which was sponsored by the Defense Advanced
Research Projects Agency (DARPA). (Ex. 1007 at 855.) In particular, Beyer
describes the development of “network technology capable of supporting
communication between computers and their users in the modern battlefield.” (Id.)
116. Beyer explains that a packet radio network was selected for the
SURAN Program “[b]ecause of the advantages of spread-spectrum radio using
omni-directional antennae in the battlefield (easy deployment, mobility, redundant
paths, antijam properties).” (Ex. 1007.) Beyer also notes that a packet radio
network was selected because the “network could exchange information between
mobile hosts over a common, multiple-access, multihop radio channel, and could
interconnect to hosts on other networks that used DoD standard protocols,”
including the TCP/IP suite. (Id. at 858.)
117. Beyer cites papers published in both the 1978 and 1987 Special
Issues of the Proceedings of the IEEE referenced above, including Jubin.
D. Obviousness over Jubin in View of Binder and Clark
118. It is my opinion that claims 1, 3, 10, 28, 31, 37, 128, 129, 136,
148, 149, 154, 160, 161, and 166 of the ’074 patent are obvious based on the
disclosures of Jubin in view of the additional disclosures of Binder and Clark.
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1. Independent claims 1, 28, 128, 148, and 160
119. As noted above, independent claims 1, 28, 128, 148, and 160
each have five elements (Elements [a] – [e]). In my opinion, each of those
elements is either expressly disclosed in Jubin or obvious in view of the disclosures
of Jubin, Binder, and Clark.
a. Element [a]
120. Element [a] requires either “[a] telecomputer network system
comprising” (claims 1, 128, 160) or “[a] system comprising” (claims 28, 148).
121. I understand that Element [a] of claims 1, 28, 128, 148, and 160
may not be limiting because it is the preamble to the claims. To the extent Element
[a] is limiting, it is my opinion that it is disclosed in Jubin. In particular, Jubin
describes a packet radio network that allows for “the exchange of data between
computers.” (Ex. 1002 at 21.) Computers at the time of Jubin were capable of
transmitting various types of data, including speech and video data. (See Ex. 1002
at 23 (referring to the transmission of data, including digitize speech); Ex. 1031
(video compression standard released in 1988).)
b. Element [b]
122. Element [b] requires either “a redundant digital microwave
communication system” (claims 1, 128, 160) or “a communication subsystem”
(claims 28, 148). Element [d] (addressed below) indicates that the “redundant
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digital microwave communication system” / “communication subsystem”
exchanges information with a wireless LAN.
123. In my opinion, Jubin discloses “a redundant digital microwave
communication system” in at least two ways.
124. First, Jubin notes that the PRNET may exchange information
with other “packet-switched . . . radio . . . networks.” (Ex. 1002 at 22.) Jubin
further explains that the PRNET can be interconnected to “[m]ultiple packet radio
networks operating on different frequencies.” (Id. at 23.) These other packet-
switched radio networks are “redundant digital microwave communication
systems.”
125. As a general matter, the ability to interconnect separate packet
radio networks was well-known at the time Jubin was published. For example,
another paper published in the same “Special Issue on Packet Radios” (Davies)
depicted one embodiment of the interconnection disclosed in Jubin. (See Ex. 1024
at 44.) As Fig. 1 from Davies shows, the PRNET that forms a wireless LAN on
the left hand side, connects through a single point to linked PRNETs that can
operate on different frequency channels to collectively form a wireless WAN that
can extend for many kilometers.
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126. The packet-switched radio networks that can be connected to
the PRNET of Jubin are “redundant,” “digital” and “microwave” communications
systems for the same reasons that the PRNET of Jubin is a redundant, digital, and
microwave system. More specifically, packet-switched radio networks are
“redundant” because they use dynamic routing to select a new communications
path when an old path goes bad. Jubin refers to this as “dynamically determining
optimal routes.” (Ex. 1002 at 21, 32.) Jubin explains that a packet-switched radio
network “discovers the radio connectivity between packet radios and organizes
routing strategies dynamically on the basis of this connectivity.” (Id. at 22.)
“When the link quality to a neighboring PR . . . becomes ‘bad,’ . . . a new, good
route can be formed even if it is longer than the old, bad one.” (Id. at 24.)
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127. Jubin also discloses that packet-switched radio networks are
“digital” given that they transmit digital data at a data rate of 100 kbps or 400 kbps.
(Id. at 30.) A system is necessarily a “digital” system if it transmits discrete values
that encode blocks of digital data that include one or more bits of data. In this
case, it has a data rate expressed in terms of the number of bits or bytes transmitted
per second.
128. The packet-switched radio networks that can be interconnected
to the PRNET are also “microwave” systems. Jubin discloses, for example, that
the networks transmit data using microwave carrier frequencies: “RF frequencies
between 1718.4 and 1840.0 MHz.” (Id. at 31.)
129. Thus, in disclosing that the PRNET of Jubin can be
interconnected with other packet-switched radio networks, Jubin discloses that the
PRNET can exchange data with a “redundant digital microwave communication
system.”
130. The second way that Jubin discloses a “redundant microwave
communication system” is by disclosing that the PRNET can exchange
information with “SATNET,” which was a specific packet-switched
intercontinental satellite communications network generally known to persons of
skill in the art when Jubin was published in 1987.
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131. While Jubin (understandably) does not go into detail on the
characteristics of SATNET, a person of ordinary skill in the art would have been
familiar with SATNET from other publications, including Jacob’s paper in the
related 1978 “Special Issue on Packet Communications Networks.” (Ex. 1006.)
132. SATNET was a redundant digital microwave communication
system. SATNET used “satellites to provide digital communication networks.”
(Ex. 1006 at 1449.) SATNET was a microwave system because it used “bands at
6/4 GHz and 14/12 GHz.” (Id. at 1451.) SATNET also employed redundancy.
The earth terminal included “redundant burst modems and associated frequency
selection equipment” to ensure that communications would proceed even in the
event of a non-functional device or frequency. (Id. at 1461.)
133. Thus, in expressly disclosing that devices on the PRNET can
communicate with SATNET, Jubin discloses to a person of ordinary skill in the art
that the PRNET can exchange data with a redundant digital microwave
communication system.
134. In addition to the express disclosures described above,
connecting the PRNET to a “redundant digital microwave communication system”
would have been obvious in view of Binder, which appeared in the same
proceedings publication as Jubin. Binder expressly discloses a redundant digital
microwave communication system – the Multiple Satellite System or “MSS.” The
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MSS of Binder is a “microwave” system because it transmits information using
microwave carrier frequencies, namely 3 GHz. (Ex. 1003 at 80.) Binder also
discloses that the MSS is a “general purpose digital network” that transmits bits of
data at a rate of up of 1 mbps. (Id. at 74, 80.) The MSS of Binder is also expressly
redundant: “Such a system consists of from a few dozen to several hundred
satellites (the actual number depending on satellite altitude and complexity
choices) providing a relatively high degree of communication redundancy over
the desired coverage area.” (Id. at 74.) With numerous cross-linked satellites
and multiple satellites covering a single earth station, the MSS has numerous
communications paths available in the event that a satellite or communications
path ceases to function. (Ex. 1003 at p. 76 (“With the uniform distribution
assumed above, there will be an average of about six satellites in view of each ET
[earth terminal].”).) Binder further notes that the need for “communication
redundancy” was one of two “important” design goals of the MSS. (Id. at 74.)
Binder also expressly notes that a MSS was developed to serve as a “highly
survivable communications systems.” (Id. at 74.) Survivable communications
systems are systems that can continue to operate even when a device or
communications path becomes nonfunctional (e.g., due to an attack). (See, e.g., Id.
at 75 (“These protocols are assumed to use fully distributed control, so that the
survivability features of the system are not compromised by the loss of any
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particular satellites or ETs.”).) As can be seen in the Fig. 1 from Binder (below),
earth terminals are depicted as being both mobile and of having multiple paths for
connectivity into the network. With multiple satellites in view of an ET at any one
time, there is redundancy in the link from the wireless LAN to the wireless WAN,
as well as within the wireless WAN itself. Furthermore, “[t]he packet address is
inspected and routing rules applied to determine its next immediate destination”
(id. at 75), which indicates the MSS uses a connectionless (fully addressed)
networking protocol that supports dynamic routing for redundancy. Also, Binder
discloses that the routing is a function of the link performance, including the “ratio
of crosslink store-and-forward to up/downlink traffic determined by the traffic
matrix and local conditions at the satellite such as jamming.” (Id. at 75.)
135. It would have been obvious to a person of ordinary skill in the
art that the PRNET of Jubin could be interconnected to the redundant MSS of
Binder. The two papers were published together in the IEEE’s “Special Issue on
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Packet Radio Networks.” Jubin expressly discloses that the PRNET can be
connected to other packet-switching satellite systems such as the one disclosed in
Binder. (Ex. 1002 at 22 (“[H]osts on the PRNET [can] communicate with
computers on various other packet-switched satellite . . . networks that participate
in the DARPA Internet.”).) Binder similarly discloses that the MSS can
communicate with mobile networks like the mobile network disclosed in Jubin.
(Ex. 1003 at 75 (“Data and voice packets are transmitted on uplinks by the earth
terminals (ETs), which may be fixed or mobile.”).) Moreover, Binder states that
“[t]he general packet networking concepts which form the basis of the MSS have
their origins in the ARPANET, terrestrial packet radio, and packet satellite
developments.” (Id. at 74.) Further motivation to connect the PRNET to the MSS
can be found in the Jacobs paper from the earlier special issue of the proceedings
of the IEEE. Jacobs notes that “packet satellite techniques” could be combined
with “terrestrial packet technology, either packet radio or now conventional
terrestrial packet networks, to form mixed-media networks which exploit the best
properties of each.” (Ex. 1006 at 1465.)
136. Furthermore, both SATNET and MSS supported the TCP/IP
suite, thus also making it obvious to a POSITA that the SATNET in Fig. 1 of Jubin
could be switched out for the MSS connecting in the same way. For all of these
reasons, a person of ordinary skill in the art would have been motivated to combine
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the MSS of Binder with the PRNET of Jubin and would also have expected the
interconnection of those networks to be successful.
137. Thus, in my opinion, Jubin expressly discloses two “redundant
digital microwave communications systems” –SATNET and other packet-switched
radio networks that can be connected to the PRNET. Moreover (and alternatively),
it would have been obvious to connect the PRNET of Jubin with the redundant
digital microwave communication system of Binder.
138. Finally, Jubin also discloses that the PRNET can exchange
information with a “communication subsystem” as required by Element [b] of
claims 28 and 148. A person of ordinary skill in the art would have understood a
communication subsystem to be a communication system that is part of a larger
communication network. In satisfaction of Element [b] of claims 28 and 48, Jubin
discloses that the PRNET can be connected to “other packet-switched satellite,
terrestrial, radio, and local area networks that also participate in the DARPA
Internet.” (Ex. 1002 at 22.) Because these other communications networks are
part of a larger network (the DARPA Internet), they are “communication
subsystems.”
c. Element [c]
139. Element [c] of the challenged independent claims requires “a
wireless local area network (LAN).” Claims 28, 148, and 160 additionally require
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that the wireless LAN include (or be operable to connect) “at least one computer.”
It is again my opinion that Jubin discloses this element.
140. As noted above, a wireless LAN is a “wireless data
communications network covering a local geographic area of up to several
kilometers.” The wireless LAN of Jubin is the PRNET. (Ex. 1002 at 21.) The
PRNET is a wireless data communications network for computers: “The PRNET
provides, via a common radio channel, the exchange of data between computers
that are geographically separated.” (Id.)
141. A packet radio network could be configured as either a local
area network or a wide area network, depending on the geographic distance
covered by the network. Jubin expressly discloses a local area implementation (a
“small” packet radio network) comprised of five nodes and connected devices:
142. Jubin further notes that packet radio networks are “beginning to
play an important role in the local distribution of information.” (Id. at 32.) Jubin
discloses that packet radio networks can be used to form local area networks for
military applications, in libraries, or even commercial operations. For example,
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“the use of small hand-held radio with a limited keyboard is being experimented
with by restaurants. The waiters, bartenders, and cooks are all equipped with a
packet radio. The waiter enters an order and its destination (either the bartender or
the cook), then waits to receive a packet indicating that the order has been
completed.” (Id.) This application would be an example of a wireless LAN.
143. Jubin also expressly discloses that the wireless LAN (PRNET)
“includes” (or is “operable to connect”) “at least one computer.” As noted already
above, the PRNET was designed to allow “the exchange of data between
computers.” (Ex. 1002 at 21.) Moreover, Jubin discloses that the PRNET includes
packet radios that have “attached devices.” (Id. at 23.) These “attached devices”
include “host computers and terminals.” (Id. at 22.)
144. Although Jubin expressly discloses a wireless LAN as required
by Element [c], I would also note that implementing the PRNET of Jubin as a
wireless LAN would have been obvious to a person of skill in the art in 1996 in
view of Clark. Clark, which generally discusses local area networks, disclosed in
1978 that packet radios could be used to form a wireless LAN: “Radio broadcast
has been demonstrated for a local network using packet switching.” (Ex. 1005 at
1504 (citing Ex. 1004).)
145. A person of ordinary skill in the art would have been motivated
to (and expected to successfully) configure the PRNET of Jubin as a LAN based
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on the disclosure in Clark for numerous reasons. Perhaps most importantly, as
noted in Clark, packet radio technology had already been successfully used for
local area networks. For example, Clark cited Kahn’s paper on Advances in Packet
Radio Technology, from the 1978 Proceedings, which notes that “[t]he use of
broadcast radio technology for local distribution of information.” (Ex. 1004 at
1469.) Lynch also noted that packet radio technology could be used for local area
networks in libraries. For example, Lynch discloses “a high speed, local area
network intended to connect computers and fast peripherals in much the same
spirit as cable-based Ethernet.” (Ex. 1008 at xi.) In addition, a person of ordinary
skill in the art would have been specifically motivated to implement the local area
network disclosure of Clark with the PRNET of Jubin because development of
local area networks “arose out of the continuing evolution of packet
communication networks,” such as the packet radio network of Jubin. (Ex. 1005 at
1497.) Also, a person of skill in the art would have understood the benefits of
using the packet radio technology disclosed in Jubin to implement a wireless local
area network. As Jubin notes, the packet radio network was designed to be low
cost, easily deployed (since “there are no wires to set up”), and flexible (“ease of
reconfiguration”). (Id. at 21.) A person of skill in the art in 1996 would have
understood that these same qualities would be beneficial in setting up a local area
network. (Ex. 1004 at 1469 (using packet radio technology for local distribution of
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information “can also provide a degree of flexibility in rapid deployment and
reconfiguration not currently possible with most fixed plant installations”).)
146. Thus, as noted above, the system of Jubin expressly satisfies the
requirement of Element [c]. However, to the extent that there is any question
whether the PRNET of Jubin is a wireless LAN, it would have been obvious to a
person of skill in the art that the PRNET could be used as a wireless LAN based on
the disclosures of Clark.
d. Element [d]
147. Element [d] requires “a mobile hub station configured to
transfer information as a single nomadic transmission /reception point between the
microwave communication system and the wireless LAN.” Claims 28 and 148
additionally require that the information be “broadband” information. Again,
Jubin expressly discloses this element.
148. Jubin expressly discloses that packet radio nodes are mobile
and capable of transmitting and receiving information from different locations (i.e.,
“nomadic”). In fact, Jubin discloses that the packet radio hub can even transmit
while moving. Indeed, the PRNET was designed to allow data communications in
a “mobile environment.” (Ex. 1002 at 21.) The PRNET “provides highly reliable
network transport and datagram service” while accounting for “mobility.” (Id.)
Indeed, “[ne of the benefits [of the PRNET] is mobility; a packet radio (PR) can
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operate while in motion.” (Id.) Jubin also stresses the benefits of quick
deployment and reconfiguration, which allow for nomadic use. (Id.) Figure 4 of
Jubin also illustrates that a packet radio can be mounted in a mobile vehicle.
149. Other publications describing packet radio networks also
highlight the mobility of those networks. For example, Kahn states that packet
radios “support mobile terminals and computers at normal vehicular speeds.” (Ex.
1004 at 1470.) Kahn also notes that “[a]ll elements of the packet radio network
can be mobile, as within a fleet of ships.” (Id. at 1480.) Beyer similarly discloses
that “mobility” is a feature of packet radio networks (Ex. 1007 at 855) and sets
forth an embodiment in which nodes are operating while moving (including an “air
mobile node” that is circling at a speed of approximately 250 km/h) (id. at 860).
Beyer and Kahn provide background for the disclosures of Jubin and further
reinforce the mobile/nomadic nature of the packet radio hub.
150. Jubin also discloses that a single packet radio will act as the
gateway (transmission/reception point) between the PRNET and the gateway for
external communication systems. Jubin explains that devices on the PRNET can
“send data across the PRNET” and “communicate with computers on various other
. . . networks.” (Ex. 1002 at 22.) Jubin also expressly discloses that “[t]he PRNET
can also be accessed from other networks via an Internet gateway.” (Id. at 23.)
Figure 4 (annotated below), illustrates that information exchanged with an external
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network passes through a single access point on the PRNET, which is connected to
a gateway for the external network (SATNET in the example below):
151. The Davies paper, which was published at the same time as
Jubin, similarly depicts packet radio networks transferring data through a single
access point as shown in Fig. 1 (below). The wireless LAN in the shaded region on
the left passes data to the extended set of three other packet switched wireless
networks on the right that form the wireless WAN, and does so through a single
exit point:
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152. Kahn further notes that devices on a packet radio network can
route packets to a “point of connection” between the packet radio network and the
other network. (Ex. 1004 at 1470.)
153. Jubin also discloses that the packet radios send broadband
information. In particular, the preferred data rate for the packet radios went to 400
kbps. (Ex. 1002 at 22.) In 1996, 400 kbps was more than sufficient to be
considered a “broadband” data rate and was also sufficient to transmit video files
in real time. As noted above, real time video is an example of “broadband
information” given in the ’074 patent. The PRNET was fully capable of handling
real time compressed video. For example, the “Video Coding for Low Bit Rate
Communication” standards, starting with MPEG-1 (ITU H.261) in 1988, could
send real time video at a rate as low as 40 kbps (ten times slower than the data rate
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used by the PRNET). The follow-on standards, known as MPEG-2 (ITU H.262),
ratified in July 1995, and MPEG-3 (ITU H.263), ratified in March of 1996, offered
higher levels of compressed video at rates selectable as low as 96 kbps (roughly ¼
the rate available in the PRNET). Moreover, I understand that the Patent Owner
has previously take the position that data rates of 200 kbps are sufficient to transfer
broadband information, which would also indicate that the 400 kbps rate disclosed
in Jubin is sufficient. (Ex. 1011 at 30.)
154. As is apparent from the above discussion, Jubin expressly
discloses that a packet radio is “a mobile hub station configured to transfer
[broadband] information as a single nomadic transmission /reception point between
the microwave communication system and the wireless LAN.” Although I believe
this element is expressly disclosed by Jubin, I would also note that it would have
been obvious based on the disclosures of Clark to configure a mobile packet radio
of Jubin to act as the single transmission/reception point between the PRNET and
another outside network. Clark explains that one standard benefit of a local area
network is creating a single transmission/reception point between devices on the
LAN and external communications networks. (Ex. 1005 at 1513.) Clark explains
that, “[i]nstead of connecting all of the machines directly to the long-haul network,
one can connect all the host computers to the local area network, with one
machine, the gateway, connected to both the local area network and the long-haul
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network.” (Id.) Of course, this mirrors the topology of the PRNET depicted in
Figure 4 of Jubin, which has “one machine” (a packet radio) acting as the gateway
to the network. (Ex. 1002 at Fig. 4.) Clark notes that there are many advantages to
using a single transmission/reception point. For example, it saves in hardware
costs and simplifies of the port structure of devices on the LAN. (Id. at 1498.)
155. A person of skill in the art would have been specifically
motivated to rely on these the teachings of Clark in implementing the PRNET of
Jubin. In particular, a person of skill in the art would have understood that using a
single transmission/reception point with the system of Jubin would simplify the
system and reduce costs because there would be no need to directly connect each
packet radio to the external communications network.
156. Thus, for the reasons noted above, it is my opinion that Jubin’s
disclosures expressly satisfy the requirements of Element [d]. Additionally, it is
my opinion that Element [d] would have been obvious based on the disclosures of
Jubin combined with those of Clark.
e. Element [e]
157. Element [e] requires that the mobile hub transfers data “using”
either “an ethernet packet switching protocol” or “an Internet protocol.” Use of the
TCP/IP protocol would satisfy Element [e] of each claims 1, 28, 128, 148 and 160
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since TCP/IP was identified in the ’074 patent as an example of an “ethernet
packet switching protocol” and TCP/IP includes the Internet Protocol (“IP”).
158. Jubin discloses the use of the TCP/IP protocol in satisfaction of
Element [e]. As noted above, TCP/IP is a suite of protocols developed with
funding from the Department of Defense that includes, among others, the
Transport Control Protocol (TCP), the Internet Protocol (IP), and TELNET. In
anticipation of Element [e], Jubin discloses that “devices are responsible for
running the DoD-standard internetwork, transport, and application-level protocols
(IP, TCP, and TELNET).” (Ex. 1002 at 22.) Jubin explains that these protocols
are used for “end-to-end communications” between devices on the PRNET and
devices on other networks. (Id.) Indeed, if devices on the PRNET do not use these
standard protocols, they must be connected to a “Network Interface Unit (NIU).”
The NIU packages the computer’s native protocols into the TCP/IP protocol suite
before the information is sent to a packet radio for transmission across the PRNET
and to other networks. (Id.)
159. In addition to Jubin’s express disclosure of TCP/IP, Jubin also
discloses more broadly the use of an “ethernet packet switching protocol.” In
particular, Jubin describes the PRNET as supporting a multiple-access (i.e., shared)
communications channel with bursts of traffic and CSMA to avoid collisions. (Ex.
1002 at 21.) This is the same medium access control (MAC) protocol used in
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Ethernet communications and in the IEEE 802.11 wireless LANs widely available
today.
160. Although it is my opinion that Jubin expressly discloses the use
of “an ethernet packet switching protocol” and “an Internet protocol,” it would
also, alternatively, have been generally obvious to a person of skill in the art to use
such protocols in September 1996. Indeed, as noted above, TCP/IP was the most
widely used networking protocol in 1996: “What started in the 1960s as a
government-financed research project into packet switching networks has, in the
1990s, turned into the most widely used form of networking between computers.”
(Ex. 1016 at 1.)
161. Moreover, a person of skill in the art would have expected to
successfully use TCP/IP with the network of Jubin given that TCP/IP had been
expressly used in other packet radio networks in addition to the PRNET described
in Jubin. For example, the packet radio network in Lynch used TCP/IP. (Ex. 1008
at 17 (disclosing use of TCP/IP to “interoperate smoothly” with other networks).)
Seo also describes operational performance of TCP/IP over SATNET. (Ex. 1027.)
And Beyer disclosed use of TCP/IP in a battlefield packet radio network. (Ex.
1006 at 858.)
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2. Dependent claims 3, 10, 31, 37, 129, 136, 149, 154, 161, and166
162. It is also my opinion that claims 3, 10, 31, 37, 129, 136, 149,
154, 161, and 166 are obvious over Jubin in view of Binder and Clark.
a. Claims 3, 31, 129, 149 and 161
163. Dependent claims 3, 31, 129, 149 and 161 require the mobile
hub to use the “TCP/IP protocol” in transferring information.
164. As explained above with respect to Element [e] of the
independent claims, Jubin expressly discloses use of the TCP/IP protocol.
Moreover, use of the TCP/IP protocol would also have been obvious based on the
general knowledge of a person of ordinary skill in the art.
b. Claims 10, 37, 136, and 154
165. Dependent claims 10, 37, 136, and 154 require that the mobile
hub “comprises a vehicle.” For the reasons already set forth above with respect to
Element [d], Jubin expressly discloses placing the mobile hub (packet radio) in a
vehicle. This is also shown in Figure 4:
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166. As described above, the hub connecting to a satellite network
was also shown as being mobile in Binder’s description of MSS and numerous
other places.
c. Claim 166
167. Dependent claim 166 requires that the wireless local area
network be “operable to connect at least one computer.”
168. As noted above in connection with Element [c] of the
challenged independent claims, Jubin expressly discloses this limitation.
E. Obviousness over Jubin in view of Binder, Clark, and Beyer
169. In my opinion, claims 2, 9, 14, 15, 20, 36, 42, 58, 73, 93, 103,
135, 137, 146, 153, 157, 165, 167, 169, and 171 of the ’074 patent are obvious
over Jubin in view of Binder, Clark, and Beyer.
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1. Independent claim 14
170. Like the independent claims addressed above, claim 14 has five
elements (Elements [a] – [e]). The elements of claim 14, however, differ in certain
respects from the elements of the other claims, as indicated by the underlines
below:
14. [a] A telecomputer network comprising:
[b] a wireless wide area network (WAN) comprising a
redundant digital microwave communication system
configured to operate as a intranet;
[c] a wireless local area network (LAN), wherein the
wireless LAN comprises a plurality of nodes with an
individual personal computer at each of the plurality of
nodes; and
[d] a mobile vehicle configured to transfer information as
a single nomadic transmission/reception point between
the microware communication system and the wireless
LAN
[e] using the TCP/IP protocol.
171. Given these variations, I will address the elements of claim 14
separately and in view of the additional disclosures of Beyer. As is set forth
below, it is my opinion that the elements of claim 14 are either expressly disclosed
in Jubin or obvious over Jubin in view of Binder, Clark, and Beyer.
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a. Element [a]
172. Element [a] of claim 14 is substantively the same as Element
[a] of claims 1, 128, and 160. As a result, Jubin discloses Element [a] of claim 14
for the same reasons set forth above.
b. Element [b]
173. Element [b] of claim 14 requires a “redundant digital
microwave communication system.” Jubin expressly discloses a “redundant digital
microwave communication system” for the reasons set forth above. Additionally,
use of a “redundant digital microwave communication system” in combination
with the PRNET of Jubin would have been obvious based on the disclosures of
Jubin and Binder, as explained above.
174. Element [b] of claim 14 adds two requirements not found in the
claims addressed above: (i) the “redundant digital microwave communication
system” must be a part of a “wireless wide area network (WAN)”; and (ii) the a
“redundant digital microwave communication system” must be configured to
operate as a intranet.
175. As a threshold matter, it would have been generally obvious to
a person of ordinary skill in the art that the “other packet-switched satellite,
terrestrial, [and] radio . . . networks” referenced in Jubin (Ex. 1002 at 22) could be
wireless wide area intranets.
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176. As noted above, an “intranet” is “a private data network within
a company or organization accessible only to members or employees.” Intranets
were “to provide employees access to internal information that could not be made
available to the Internet at large.” (Ex. 1026 at Summary). Many organizations
adopted intranets to control access to internal company information that they
would want employees, but not customers, to access. Creating an intranet in 1996
was a well-established practice known to persons of skill in the art. This is
reflected in the ’074 patent itself, which makes general references to allowing
access to an intranet without any disclosure of how an intranet is created. No
disclosure was necessary because a person of ordinary skill in the art was generally
familiar with intranets and how to implement an intranet.
177. From a technical perspective, implementing an intranet was a
straight-forward task that principally required creating web pages and storing them
in a way that required an employee or member of an organization to have special
authentication rights to access. This is an application that overlays the already
existing structure of a company’s network; it does not require development of a
new network circuit structure or any new networking operation.
178. Notably, the ability to implement an intranet is not dependent
on a network’s topology. Just as one can send Email over networks with many
different topologies, one can also operate an intranet service over many different
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topologies. In fact, because of the isolation provided by protocol layering, the
users of an intranet would not experience any difference in operation between an
intranet service operating on the network topology described in Jubin and another
network topology.
179. Based on the general knowledge of this practice, a person of
ordinary skill in the art in 1996 would have known that the various wireless WAN
technologies referenced in Jubin (radio, terrestrial, and satellite networks) as well
as the PRNET wireless LAN, or any other network topology that provided Internet
infrastructure, could run application software that provided intranet capability (just
as those networks could transfer Email messages or digitized voice data). In other
words, it was entirely obvious to use a network, such as the network of Jubin, to
access an intranet because that was a normal and common operation expected to be
performed by such networks.
180. It would also have been obvious to a person of ordinary skill in
the art in 1996 that the PRNET in Jubin could exchange data with a wireless wide-
area intranet based on the disclosures of Beyer. As noted above, Jubin discloses
that the PRNET can be interconnected to other packet-switched radio networks.
(Ex. 1002 at 22.) Beyer discloses another such packet-switched radio network that
operated as a wide-area intranet. In particular, Beyer discloses a packet-switched
radio network covering a wide area (60 kilometers by 60 kilometers). The military
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network of Beyer is a private intranet – it uses measures to authenticate nodes and
ensure the privacy of the network and its users. (Ex. 1007 at 857, 860.) For
example, the “[p]acket [r]adio [s]ecurity [a]rchitecture . . . [p]rotects the secrecy
and integrity of subnet control traffic by controlling the spread-spectrum spreading
code, encrypting all packets, over-the-air rekeying, and using cryptographic
authentication and digital signatures.” (Id. at 857.) These authentication measures
and digital signatures ensure that only authorized members of the military are able
to access information on the network. Moreover, like the network of Jubin, the
network of Beyer uses the Internet protocol suite. (Ex. 1006 at 858.)
181. A person of skill in the art would have been generally
motivated to combine the disclosures of Jubin and Beyer because they both
describe packet radio networks and Beyer expressly references Jubin. Moreover,
both references specifically suggest interconnecting networks. Jubin discloses that
the PRNET can be connected to other packet-switched radio networks operating on
different frequencies. (Ex. 1002 at 22-23.) Beyer notes that packet radio networks
can be interconnected with other networks that use DoD standard protocols – i.e.,
the protocols used by the PRNET of Jubin. (Ex. 1007 at 855; Ex. 1002 at 22.)
Moreover, Jubin specifically mentions packet radio networks for military functions
such as the network disclosed in Beyer. (Ex. 1002 at 31-32.) As such, Jubin and
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Beyer suggest that the PRNET of Jubin could communicate with the wireless wide
area intranet of Beyer.
c. Element [c]
182. Like the other independent claims addressed above, Element [c]
of claim 14 requires “a wireless local area network.” For the reasons already
noted, the system of Jubin satisfies this requirement. Alternatively, configuring the
PRNET as a local area network would have been obvious in view of Clark.
183. Element [c] of claim 14 additionally requires the wireless LAN
to include “a plurality of nodes with an individual personal computer at each of the
plurality of nodes.” This additional element would have been obvious in view of
the disclosures of Jubin. In particular, Jubin discloses that the PRNET is intended
to allow communications between computers and that the nodes of the PRNET
may include a personal computer. (Ex. 1002 at 21, 23.) While Jubin discloses that
the nodes may also act solely repeaters, it would have been obvious to configure
PRNET with an attached computer at every node. Indeed, Jubin notes that the
PRNET could be configured as a single-hop network (Ex. 1002 at 32), which
would eliminate the repeaters, resulting in a computer being located at each node.
184. Further motivation to implement the network of Jubin with a
computer at each node can be found in Lynch, which was published shortly after
Jubin. For example, Lynch discussed the desirability of making packet radio nodes
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uniform and asserted that a packet radio network “composed of interconnected
computers (some of which may be small personal computers or similar devices) is
the best model for a packet radio system for library automation.” (Ex. 1008 at 4.)
185. The technology advances in personal computers from the time
of Jubin and Lynch in 1987 to 1996 would have made it even more obvious that a
personal computer could be used at each of the nodes in Jubin’s local area network.
The rise of portable computing was generally known by persons of skill in the art
in 1996. (See, e.g., Ex. 1029 at 2 (“The variety of portable computers is
impressive, ranging from laptop computers, to notebook computers, to personal
digital assistants (or personal information managers), to smart credit card devices,
to wrist watch computers, etc. In addition, the communication capability of these
portable computers is advancing at a dramatic pace from high speed modems, to
PCMCIA modems, to email receivers on a card, to spread-spectrum hand-held
radios, to CDPD transceivers, to portable GPS receivers, to gigabit satellite access,
etc.”).) Given the increased capabilities and reduced costs of portable computers
in 1996, a person of ordinary skill in the art would have been generally motivated
to include a personal computer at each node of Jubin’s PRNET. Moreover,
including a computer at each node is a simple and obvious design choice, that
depends primarily on the purpose of a local area network. Notably, the ’074
patent does not disclose any technology or innovation that would allow use of a
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personal computer at every node of a local area network, reflecting the straight-
forward and already known nature of this design choice.
d. Element [d]
186. The only difference between Element [d] of claim 14 and
Element [d] of claims 1, 28, 128, 148, and 160 is that claim 14 requires a “mobile
vehicle” rather than a “mobile hub.” As noted above, however, Jubin expressly
discloses that a packet radio can be mounted in a vehicle. (Ex. 1002 at Fig. 4.)
Indeed, it was understood from the beginning of the SURAN program that packet
radios, would be mounted on a mobile vehicle to support military applications.
Kahn (1978), for example, noted that the packet radio networks needed to support
“mobile terminals and computers at normal vehicular ground speeds” (Ex. 1004 at
1470) and expressed the need to handle the limits imposed by “the presence of
mobile terminals” (id. at 1481 col 1).
e. Element [e]
187. Element [e] of claim 14 requires use specifically of the TCP/IP
protocol, rather than the more general “ethernet packet switching protocol.” As
already noted above, Jubin expressly discloses that the connectionless TCP/IP
protocol is used “end-to-end.” Moreover, use of the TCP/IP protocol with the
system of Jubin would have been obvious for the reasons already explained above.
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2. Dependent claims 2, 9, 15, 20, 36, 42, 58, 73, 93, 103, 135,137, 146, 153, 157, 165, 167, 169, and 171
188. In my opinion, dependent claims 2, 9, 15, 20, 36, 42, 58, 73,
93, 103, 135, 137, 146, 153, 157, 165, 167, 169, and 171 are obvious over Jubin in
view of Binder, Clark and Beyer.
a. Claims 2 and 15
189. Claim 2 depends on claim 1 and additionally requires that “the
microwave communication system operates as a secured private intranet.” Claim
15 depends on claim 14 and additionally requires that “the wireless WAN operates
as a private intranet.” As already explained above in connection with Element [b]
of claim 14, these elements would have been obvious based on the disclosures of
Jubin and Beyer and the general knowledge of a person of ordinary skill in the art
in 1996 concerning the use of intranets to manage company information.
b. Claims 9, 20, 36, 135, 153, and 165
190. Dependent claims 9, 20, 36, 135, 153, and 165 require the
mobile hub/mobile vehicle to include an “omni-directional antenna.”
191. Jubin expressly discloses that the packet radios comprising the
PRNET are capable of “omnidirectional” transmissions, thus satisfying the
requirement of claims 9, 20, 36, 135, 153, and 165.
192. Additionally, and alternatively, the use of an omnidirectional
antenna with the system of Jubin would have been obvious based on Beyer, which
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discloses that packet radio networks are often selected for military applications due
to “the advantages of spread-spectrum radio using omnidirectional antennae.” (Ex.
1007 at 855.)
193. The general reasons to combine the disclosures of Jubin and
Beyer are already set forth above. A person of skill in the art would also have been
specifically motivated to use the omni-directional antenna of Beyer with the
PRNET of Jubin given that the PRNET must be capable of omnidirectional
transmission. Moreover, a person of skill in the art would have been motivated to
try the omnidirectional antenna with the system of Jubin to further the goals of
Jubin to have a system that can be quickly and easily deployed. (See, e.g., Ex.
1004 at 1470 (noting that omnidirectional antenna promote the rapid and
convenient deployment of a network because they “eliminate[e] the need for
antenna alignment”).)
c. Claims 167, 169, and 171
194. Dependent claims 167, 169 and 171 require both that the
mobile hub station have an omni-directional antenna and that it use TCP/IP (with
the TCP/IP requirement coming from claims 3, 31, and 129 on which claims 167,
169, and 171 depend, respectively).
195. As already noted above, Jubin expressly discloses both the use
of an omni-directional antenna and the use of TCP/IP. Moreover, it would have
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been obvious to a person of ordinary skill in the art to use an omni-directional
antenna and TCP/IP with the system of Jubin for the reasons already articulated
above.
d. Claims 42, 93, and 137
196. Dependent claims 42, 93, and 137 require that the mobile hub is
“configured to transfer information as encrypted information.”
197. Jubin expressly discloses that the packet radio transmits
encrypted information by encrypting the pseudorandom spreading. (Ex. 1002 at
31.) Jubin explains that the encryption is performed according to the National
Bureau of Standard’s Data Encryption Standard (DES). (Id.)
198. Moreover, it would also have been obvious to use encryption
with the system of Jubin in view of Beyer, which specifically discloses the use of
“end-to-end encryption for classified hosts communicating on the LPR [packet
radio] network.” (Ex. 1007 at 858.) A person of ordinary skill in the art would
have understood the benefits of encryption – e.g., maintaining the privacy of
information – and would have been motivated to use known encryption techniques
with the PRNET of Jubin. Indeed, the ’074 patent even notes that the use of
“security in the form of software is well-known in the art.” (Ex. 1001 at col. 3:18-
19.) For example, Lynch discusses the encryption of data and authentication
related to a packet radio network in an entire chapter. (Ex. 1008 at 63-85.)
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e. Claims 58, 73, 103, 146, and 157
199. Dependent claims 58, 73, 103, 146, and 157 require that the
mobile hub station “comprises an omni-directional antenna, wherein the omni-
directional antenna allows for the transmission of information from a non-
stationary position.”
200. As noted above, Jubin expressly discloses an omni-directional
antenna. Moreover, such an antenna would have been obvious.
201. As is also noted above, Jubin discloses that the packet radio
operates while in motion (i.e., from a non-stationary position). (Ex. 1002 at 21.)
202. It would also have been obvious to a person of skill in the art
that an omni-directional antenna could be used to transmit information from a non-
stationary position because there would be no antenna pointing required and so the
relative positions of the mobile radios would not have to be considered in real time.
F. Assertions Made in the Reexamination Concerning Jubin WereIncorrect
203. As is set forth above, it is my opinion that the Challenged
Claims of the ’074 patent are obvious based on the disclosures of Jubin in view of
Binder, Clark, and (for certain claims) Beyer.
204. I am aware that Jubin was previously submitted to the Patent
and Trademark Office as part of ex parte reexamination proceedings related to the
’074 patent. As part of my analysis of this case, I have reviewed materials
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associated with the prior reexaminations of the ’074 patent, including the Patent
Owner’s various characterizations concerning the system disclosed in Jubin.
205. It is my opinion that the Patent Owner made a number of
materially incorrect statements in the ex parte reexamination proceeding to
overcome the disclosures of Jubin. I address some of those statements below.
1. Patent Owner incorrectly asserted that the PRNET of Jubinis not a “digital” system
206. Patent Owner asserted that the PRNET of Jubin is not a
“digital” system. (Ex. 1018 at 27.) This is incorrect for the reasons I have already
noted above with respect to Element [b] of the challenged independent claims. By
way of summary, Jubin discloses an entirely digital system from the computer
interface (Ex. 1002 at 22) to the digital bits in the packet (id. at 31) to the direct
sequence spread spectrum, which is a digital modulation (id. at 31). Jubin also
discloses that the PRNET transmits digitized speech and data and that the networks
connected to the PRNET to would also pass digital information, providing digital
end-to-end service to the users of the network. (Id. at 23, Fig. 4.) The
specification of the data rate is 100 kbps or 400 kbps (Ex. 1002 at 30), which are
metrics only used for digital systems as they specifically describe the digital data
rates. Analog modulation, on the other hand would describe the modulation as a
modulation index. As is evident from the discussion above, Patent Owner’s
assertion that the PRNET is not a “digital” system was not even remotely accurate.
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2. Patent Owner incorrectly asserted that the PRNET does notuse a “single” transmission/reception point
207. Patent Owner also asserted in the reexamination proceedings
that a packet radio cannot be a “single” transmission/reception point because a
packet radio network is comprised of multiple packet radios. (Ex. 1018 at 28.)
This assertion is wrong. While there are multiple packet radios in a packet radio
network, only one of those packet radios acts as the entry and exit point for
information exchanged with any particular microwave communication system.
This is apparent from Figure 4 of Jubin, which illustrates that every external
network communicates with only a single packet radio, which acts as a gateway to
the PRNET. The existence of other nodes in the PRNET does not change the fact
that there is only one transmission/reception point between the PRNET and any
particular microwave communication system.
3. Patent Owner incorrectly asserted that the PRNET does nothave a hub “between” the wireless LAN and the microwavecommunication system
208. Patent Owner also argued that a packet radio cannot be
“between” a microwave communication system and a wireless LAN because the
packet radio forms a part of the backbone of the microwave communication
system. (Ex. 1018 at 28.)
209. Patent Owner’s assertion is not directly relevant to my analysis,
above, given that I have identified the PRNET as the “wireless local area network,”
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and not the “redundant digital microwave communication system.” While the
packet radio is “part” of the PRNET (wireless LAN), that is the typical topological
position of a hub (e.g., a router) that acts as transmission/reception point between a
wireless LAN and a microwave communication system. While the hub may
perform certain functions within the local area network – e.g., relaying messages
between devices on the LAN – it is still also the gateway between the LAN and the
external network. There is nothing in the ’074 patent that requires the mobile hub
to act only and exclusively as a gateway to an external communication system and
not perform any functions within the LAN, nor would a person of ordinary skill in
the art have understood the ’074 patent to be limited in this way.
4. Patent Owner incorrectly asserted that PRNET is not a“microwave” communication system
210. Patent owner also asserted that the PRNET disclosed in Jubin is
not a “microwave” system because it uses “VHF” frequencies rather than
microwave frequencies. (Ex. 1013 at 2 (“Patent Owner’s representative noted that
the Jubin reference does not disclose a microwave communication system. The
DARPA system actually uses a VHF frequency. . .”).) Again, this statement is
incorrect.
211. As a threshold matter, “VHF” is an acronym for “very high
frequency.” As reflected in the FCC frequency chart reproduced in the claim
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construction section, above, “VHF” refers to frequencies between 30 MHz and 300
MHz.
212. Jubin does not disclose a system using VHF. To the contrary,
as I already noted above, Jubin discloses that the PRNET uses microwave
frequencies. Specifically, Jubin discloses: “There are 20 RF frequencies between
1718.4 and 1840.0 MHz selectable in the LPR.” (Ex. 1002 at 31.) This band,
considered L-Band, is well into the microwave frequency range.
5. Patent Owner incorrectly asserted that PRNET does nothave a “mobile hub” capable of “nomadic” transmissionand reception
213. Patent Owner also argued that Jubin fails to disclose a “mobile
hub” configured as a “nomadic transmission/reception point” because Jubin does
not disclose “transmitting/receiving information while the unit is in transit.” (Ex.
1018 at p. 29.) There are at least two separate problems with this assertion.
214. First, as I already noted above, as used in the ’074 patent, the
terms “mobile” and “nomadic” do not require the transmission of data from a non-
stationary position. Indeed, the ’074 patent says exactly the opposite: “even
though the transfer of data only 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.” Thus, the Patent
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Owner’s argument was baseless given how the ’074 patent defines “mobile” and
“nomadic.”
215. Second, even if a “mobile hub” capable of “nomadic”
transmission and reception must transmit information while “in transit,” Jubin
expressly discloses such functionality. In fact, Jubin expressly states that “a packet
radio (PR) can operate while in motion.” (Ex. 1002 at p. 21.) Moreover, like the
’074 patent, Jubin discloses that the packet radio can actually be mounted on a
vehicle. (Id. at 23, Fig. 4.)
6. Patent Owner incorrectly asserted that the PRNET does nottransmit “broadband information”
216. Patent Owner also argued in the reexamination that Jubin
“makes no mention that the PRNET transfers broadband information.” (Ex. 1018
at p. 29.) This assertion is again incorrect. Jubin offers transmission at preferred
data rates of 400 Kbps, which at the time of the filing of the ’074 patent was
sufficient to carry real time video images as required by the ’074 patent to satisfy
being broadband.
217. I would also note that, while Patent Owner asserted during the
reexamination that 400 Kbps is insufficient to transmit broadband information,
Patent Owner took a contradictory position in court, arguing that a broadband
connection is one “considered to have a carrying capacity in excess of
approximately 200 kbps.” (Ex. 1011 at 29.)
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7. Patent Owner incorrectly asserted that the PRNET does notuse an “ethernet pack switching protocol”
218. Although the ’074 patent does not invent any communication
protocol and merely discloses the use of already-known and widely-used protocols
to perform their standard functions, the Patent Owner dedicated substantial time in
the reexamination to arguing that Jubin does not render the Challenged Claims
obvious because it does not use an “ethernet packet switching protocol.” In
particular, Patent Owner argued that (i) Jubin transmits “radio packets” rather than
“Ethernet packets”; (ii) the “PRNET Protocol” is a “proprietary” protocol that is
“connection-oriented” and “circuit switched” as opposed to “connectionless” and
“packet switched”; and (iii) the PRNET uses HDLC, which is not a packet-based
protocol. All of these assertions are wrong.
a. Jubin expressly discloses use of the TCP/IP protocol
219. As a threshold matter, each of Patent Owner’s attempts to
distinguish Jubin as lacking an “ethernet packet switching protocol” must fail
because Jubin expressly discloses that the TCP/IP protocol (“IP, TCP, and
TELNET”) is used “end-to-end” to ensure that computers on the PRNET can
communicate with computers on other networks. (Ex. 1002 at 22.) As noted
above, the ’074 patent indicates that TCP/IP is an example of an “ethernet packet
switching protocol.” Patent Owner appears to have simply ignored this express
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disclosure of TCP/IP in making the litany of arguments for why Jubin does not use
an “ethernet packet switching protocol.”
b. PRNET is a “packet switching” network, not a“circuit-switched” network
220. The use of the term “packets” in Jubin also refers to “packet
switching,” just as that term is used in the context of the ’074 patent. Packet
switching communications modularize blocks of data into short bursts that each
carry synchronization, header and addressing information. Each is an individually
refreshed transmission and is treated modularly.
221. The PRNET disclosed in Jubin is a traditional “packet-
switching” network. In fact, the PRNET is expressly identified as using “packet-
switched, store-and-forward radio communications.” (Ex. 1002 at 21 (emphasis
added); see also id. at 22 (“The PR receives packets of data.”).) Other references
also make clear that packet radio networks practice traditional packet-switching.
For example, Kahn notes: “Packet radio is a perfect example of the rapid
technological progress which has been achieved. It utilizes packet-switched
communications and is particularly important for computer communications in the
ground mobile environment.” (Ex. 1004 at 1468 (emphasis added).) Notably,
Kahn’s overview of packet radio technology was published in a special issue of the
Proceedings of the IEEE dedicated to packet-switched communications networks
more generally, illustrating that packet radio networks are packet-switched
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networks. As these prior art references make clear, Patent Owner’s assertion to the
PTO – that Jubin does not disclose packet-switching because it uses “radio
packets” – is beyond meritless.
222. Patent Owner has also erroneously asserted that the PRNET is a
circuit-switched network rather than a packet-switched network. Circuit
switching refers to the way the traditional telephone services operated. When a
call was placed, notification of the call was transferred on a control system that
established relay positions connecting physical crossbar switches at each switching
office (network node) so that point A was electrically connected with point B.
Circuit switching has the salient property that the resource for that call is reserved
(i.e., the transmission medium is dedicated, not shared). Even when nobody is
speaking, the call is held open and the circuit is unavailable to other users. The
method was wasteful of resources, but could respond very quickly once the
connection was made. The next word spoken went right out over the circuit to the
other side through the dedicated resource and the words were inherently delivered
in the order they were spoken. Only one transmission of a word was needed
because the resource was dedicated to that conversation. Only when the parties
decided to end the call would the connection be given up and the resource used for
another call. When looking at the ratio of average talk time to average gap time in
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circuit switched operation, for many conversations, only a small percentage of the
available resource was actually used.
223. The PRNET is a packet-switched network, not a circuit-
switched network. Indeed, the wastefulness of static resource allocation of circuit
switching is what drove the evolution into the dynamic resource sharing of IP
networking, including the PRNET, in the 1970s. Packet switching means a
message is broken up into small packets at the source, and each packet is sent
individually over the network. The short period of time that a packet occupies the
network means that multiple data sources can share the network resources by
interleaving their use of the network with their own packets. If there is an end-to-
end reliable transport protocol passing the message (e.g., TCP), it will reassemble
the series of packets back into a message. If not, the packets stand alone as
datagrams. This is precisely how the PRNET operates. The communication
channel is open to packet radios participating in the network and the radios may
interleave their transmissions. (See Ex. 1002 at 29.) Like nodes using a wired
Ethernet protocol, the nodes of the packet radio network use carrier sense multiple
access (CSMA) to manage access to the shared communication medium. (Id.)
Notably, this use of CSMA unambiguously tells us that the network is not circuit-
switched because there would be no need for CSMA in a circuit-switched network
since other nodes could not use the dedicated circuit once it is established. The
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operation of the reliable TCP protocol over the unreliable IP protocol, operating
over the unreliable CSMA protocol, forms what is known as a virtual circuit,
which exhibits connectionless operation at the lower layers and connection
oriented operation at the transport layer.
c. Patent Owner incorrectly asserted that the PRNETuses a “connection-oriented” protocol
224. Patent owner also argued that the PRNET does not use an
“ethernet packet switching protocol” because it uses a “connection-oriented”
(rather than “connectionless”) proprietary “PRNET” protocol. This assertion is
again entirely meritless.
225. A connectionless network protocol is one that does not set up a
circuit, and hence does not inform the receiving side to expect something before it
receives it. Additionally, a connectionless network protocol does not deliver
packets assuming any relationship to each other so subsequent packets offered at
the source may arrive out–of-order at the recipient. A connectionless packet is
called a “datagram.” Importantly, the Internet Protocol (“IP”) – which is used in
Jubin and referenced in the ’074 patent – is a connectionless network protocol.
226. An end-to-end transport protocol that is connection-oriented,
such as the Transport Control Protocol (“TCP”), may optionally operate on top of a
connectionless network protocol, such as IP. The transport protocol packetizes
messages into datagrams and requests retransmission of a lost packets. While TCP
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may be connection-oriented, a system running TCP/IP is considered to be running
a connectionless protocol suite since it operates over IP, which is connectionless.
As Chapin has noted, it is “[a] common mistake to assume that either the
connection model or the connectionless model must be used uniformly throughout
a network architecture; . . . it is appropriate to use the connection model to define a
protocol in one layer. . . and the connectionless model to define a protocol in a
different layer.” (Ex. 1028 at 53.)
227. It is also important to note that the use of routing does not
indicate that a system is circuit switched or somehow “connection-oriented.”
Routing refers to the selection of a path that a packet will travel to reach its
destination. The use of routing does not reserve the transmission medium as a
dedicated circuit between two nodes, nor does it prevent other nodes from
transmitting packets across the same channel. Nor does routing require packets to
be transmitted or received in a particular order. As such, the use of dynamic
routing in the PRNET of Jubin has absolutely no bearing on whether the protocols
used are “connectionless” or “connection-oriented.” In fact, the use of dynamic
routing as described in Jubin is the same way the networks of the ’074 patent
operate. (Ex. 1001 at 3:64-66 (“The microwave ring employs system redundancy
so that if one link is not functional, data may be routed in the opposite direction to
arrive at its designated location.”).)
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228. The protocol used by the PRNET of Jubin – TCP/IP – is a
connectionless protocol because it uses IP at the network layer of the OSI Model.
Indeed, Jubin discloses the use of the same connectionless protocol that the ’074
patent gives as an example of an “ethernet packet switching protocol.” As such,
the Patent Owner’s assertion in the reexamination that Jubin discloses a
connection-oriented protocol rather than a connectionless “ethernet packet
switching protocol” was simply incorrect.
d. Patent Owner incorrectly asserted that the PRNETuse of HDLC is inconsistent with an “ethernet packet-switching protocol”
229. Patent Owner also argued that the PRNET does not use an
“ethernet packet switching protocol” because there is an HDLC connection
between a packet radio and its attached devices. This assertion is, at best,
misleading.
230. In the system described in Jubin, HDLC is used as a convenient
electrical interface between a computer and its associated radio transceiver. By
contrast, HDLC is not used as a networking protocol for carrying data across the
PRNET or to an external network. In this sense, the HDLC in Jubin is no different
than the direct connection between a mini-PCIe bus and a Wi-Fi card of today, in
which a wireless LAN adapter card connects into the bus of a laptop. The HDLC
in the low cost packet radio as disclosed in Jubin served the function of delivering
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the high speed data into and out of the radio interface associated with the
computer.
231. Contrary to the Patent Owner’s statements, the use of HDLC is
not indicative of a “connection-oriented” protocol. Indeed, HDLC is not the
protocol used to communicate within or among the nodes of the wireless LAN
(i.e., within the PRNET), nor the protocol used to transfer information from the
PRNET to external networks. In this capacity, only layer 1 (physical) and layer 2
(data link) of the HDLC protocol was used for the interface between a computer
and its associated PRNET radio transceiver. As stated in another paper that was
part of the 1987 proceedings collection that described the packet radio hardware,
“[t]he HDLC section contains the Physical and Data Link Layers for the serial
high-speed wire data port.” (Ex. 1030 at 39.) There were no HDLC networking or
transport protocols running on this connection that would make it connection
oriented. To the contrary, Jubin discloses that devices connected to a packet radio
via HDLC use DoD standard networking and transport protocols (i.e., TCP/IP).
(Ex. 1002 at 22.) To the extent a device was not already using these standard
protocols, a “Network Interface Unit” (“NIU”) was placed between the device and
the packet radio to perform the necessary protocols. (Ex. 1002 at 22-23.)
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Appendix A
Page 000111
Jeffrey Fischer 285 K St
Boston, MA 617-823-2560 (M.)
Profile Hands-on consulting in wireless product architecture, design, system analysis, simulation, system integration, hardware and firmware development, intellectual property, integration with the engineering team, and assistance formulating your technical sales narrative Expert witness for patent litigation : analysis of infringement, prior art , evidence of use, hardware, firmware and software discovery, contention development, claim charting, IPRs and declarations . Expert for contract cases including evidence of use, and licensing analysis Technology areas include wireless data, voice and video, WLAN, WWAN, WiMax, LTE, Wi-Fi including 802.11a/b/g, 802.11n, 802.11ac, interference management, MIMO, OFDM, Space-time processing, Single Carrier, SC-FDE, spatial multiplexing,beamforming, multi-user MIMO, ARQ, transmit precoding, antennas, modulations (QAM, FSK, PSK, PPM, PCM, etc.), and other narrowband and spread spectrum technologies (FH, DSSS, CDMA, UWB), FEC, interleaving, wireless sensor networks, RFID (passive, BAP, Active, UHF, HF, and NFC), RTLS and asset tracking. Technical expertise spans analog, digital, and RF circuit and filter design, antenna design, complex modulation and demodulation, signal processing, microcontrollers, multiprocessing, firmware, digital interfaces, C, Verilog, air protocol and MAC design, wireless networking, security and authentication, asset tracking, real time location, multipath processing, signal processing, homologation, regulatory agency and standards issues. Expert witness experience includes more than 15 cases split across plaintiff and defendant, IPRs, contract disputes, and licensing. Key Career Work & Achievements
� Co-Patented foundation technology in 802.11b (used in over 800 Million WiFi chipsets sold/year) � Co-chair of RFID EPC Gen2 Working Group; also participated in harmonizing ISO 18000-6C
standard with EPC Gen2 and worked in multiple industry and end user groups � Developed industry leading multi-protocol WLAN, cellular backhaul and bridging products � Products and systems successfully designed and commercialized throughout vertical industries
ranging from retail and manufacturing to healthcare to government and defense � Six years at MIT Lincoln Lab developing high bandwidth signal processing for advanced packet
radio networks, including RF, analog, digital, and microcontroller support circuits
Summary Broad experience in electronic communications with major innovations and contributions to the wireless LAN, backhaul and RFID industries
Consulting for a variety of companies and technologies. Five years driving signal processing architecture and systems engineering for Fastback Networks.
▪ Technical Advisor, Department of Electrical Engineering, Montana Tech of University of Montana Page 000112
▪ Five years as Chief RF Architect at industry-leading Reva Systems developing scalable RFID systems. IP development and analysis, five years expert witness across a variety of patent and contract litigation.
▪ Three years at Proxim, developing circuits and chips for industry leading multi-protocol WLAN and bridging products
▪ Fifteen years at MICRILOR during the inception of the Wireless LAN industry, developing multiple products and co-patenting technology that is the basis for the current 802.11b standard.
▪ Six years at MIT Lincoln Lab developing high bandwidth signal processing for advanced packet radio networks. Range of work: Worked on all forms of analog, digital, and RF hardware designs for communications systems and general circuits from baseband to 7 GHz operation and millimeter wave design issues.Designed antennas, developed innovative physical layer and MAC layer designs, worked on five ASICs, built microcontroller and microprocessor based systems, wrote firmware, modeled in MATLAB, did ASIC system engineering, designed RF channel probes for analyzing multipath, MIMO signal processing, millimeter wave systems, designed protocols, ran standards groups, worked with regulatory agencies, set up long range terrestrial radio installations, developed entire systems flow and worked closely with customers to solve process and implementation problems, generate sales, understand markets, help them through pilot programs to get to sales, and overcome technical hurdles to get to a sellable position. Worked with the FCC, ETSI, IC, Anatel and MIC in developing rules for RFID, WLAN, Radar compatibility, and fixed radio operation. Participated in 802.11 working groups, co-Chaired the RFID Gen2 working group, participated in several other groups including Data Protection, ISO 18000-6, Item Level tagging technology group, and was designated Referee in the EPC Global Item Level Tagging technology bakeoff among 200 companies. Experience Feb. 2009 - Present Independent Consultant, Boston, MA
Consultant
• Patent litigation on 15 cases including 4 IPRs • Matlab simulation of wireless sensor system • Lead a systems team in developing the signal processing and control architecture an advanced
backhaul radio. • Lead a homologation group developing hitless DFS operation in unlicensed bands • Printed-electronics tag design and applications • Near-Field Communications tags and readers • Optimizing an RFID installation for a DoD installation • Authentication for RFID systems. Design of a highly-secure battery assisted passive RFID
tag system • Architecture of a 433 MHz active RFID link • High performance design for an RF pulse generator for a DARPA contractor • Development of a miniaturized long range communications link for networked video
transmission in a small unmanned air vehicle system (SUAS)
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• 802.11n consumer product, 3x3 MIMO including spatial multiplexing, diversity, and beam-forming; antenna design investigations and performance measurements in real environments
• Extensive circuit, software, and algorithm development on a long range MIMO product • Cell phone front end RF-circuit • Analysis of in-home technology approaches for wireless sensor systems for a major
corporation Patent Litigation: Testifying witness and depositions, expert reports on infringement, invalidity rebuttal, claim declaration, IPR reports. Worked for both plaintiff and defendant sides Tore down hundreds of products and made field measurements on products for evidence of use Analyzed Verilog for dozens of products for evidence of use Wrote numerous analysis comparing alternate technologies Worked closely with attorney groups to develop technology understanding and formulate theories
Dec. 2003 - Feb. 2009 Reva Systems, Chelmsford, MA Chief RF Architect
� As the second employee of Reva Systems, the leading RFID infrastructure company, I served as the Chief RF Architect for 5 years.
� Contributed to early stage technical value analysis of product positioning and helped develop company IP portfolio.
� Worked with customers to field pilots in manufacturing, distribution, retail sites, and asset management. Completed numerous successful deployments.
� Analyzed, implemented, and documented, RF and process techniques for aggregation and verification of goods using RFID, leading to customer successes.
� Built up an RF lab for evaluating partner RFID reader and tag products and performed numerous empirical studies on tag and reader performance to determine how to optimize operation specific to each reader brand.
� Designed methods to reduce interference among multiple readers, analyze location information, precisely control reader operation, and mine the data generated from fields of tags obtained by fixed readers, handhelds, and forklift readers.
� Created analysis and algorithms in MATLAB for planning RFID coverage, coordinating and combining data from multiple readers, locating tags, and isolating ambient tags from tags of interest; managed software team members in translating these into implementations in various embedded languages.
� Standards and Regulatory Work � Co-Chaired and contributed to the Gen2 Working Group for four years as well as several ad hoc
groups and requirements committees in an effort to help the RFID industry take hold. Participated in parallel ISO work.
� Worked with ETSI to create new RFID regulations in Europe and worked closely with the FCC to craft the 900 MHz RFID measurements required in the US that would allow mass deployment of RFID tags.
Oct. 2002 - Nov 2003 Independent Consultant / Chief Architect Boston, MA
▪ Drove RF and system architecture roadmap, product requirements, IP and business cases for two groups trying to form venture funded startups. Analyzed emerging capabilities in the industry, innovated leapfrog advances in these areas, and filed provisional patent applications. Presentations to venture capitalists and diligence teams. Analyzed customer business models and worked on partner arrangements. Began investigation of RFID technology.
▪ Worked on varied problems in physical and MAC layers for customer’s radio systems
▪ Architectural design and assistance in design of company products; and performance analysis of product concept in MATLAB.
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▪ Technical diligence teams for technology or company acquisition including analysis of patent portfolios, MATLAB analysis of technical claims, regulatory agency diligence, and customer capability diligence. Jan. 2000 – Oct. 2002 Proxim Corporation (Boston Design Center) Wakefield, MA In January, 2000, MICRILOR, an internally funded company that Mr. Fischer was part owner of, was purchased by Proxim, inc., based in Sunnyvale, CA, and the MICRILOR team became the Boston Design Center for Proxim. Systems Architect for Advanced Development Group Reporting to CTO
▪ Responsible for system design, RF chip analysis in MATLAB, and overall design issues involved in development of a 4 million gate, multi-protocol, baseband/MAC chip to do 802.11a/b/g/h/e/i and 802.16a, as well as proprietary modes.
▪ Responsible for the mixed signal section of the multi-protocol chip, and created novel schemes for reliable low-power detection of multiple incoming signals, a unique AGC method required for supporting the ultra-wide dynamic range, and uncovered significant performance issues with existing 802.11a detection methods.
▪ Worked with IP core vendors to define mixed-signal requirements, and with a major mixed-signal chip company to help define the converter requirements for future WLAN business.
▪ Made or influenced buy vs. build decisions.
▪ . Technical Project Lead for the Stratum MP
� Designed the MAC protocol, digital board and firmware operation of the StratumMP, the highest throughput radio in the point-to-multipoint unlicensed class.
� Integrated SNMP, an http server, and an HTML interface for internet control of the Stratum MP radios. � Interfaced with customers to understand their performance requirements as determined by actual
applications (WISP, VOIP, etc.) and developed fine tuning adjustments to the MAC protocol to optimize performance.
� Established network testing to simulate customer situations. Pushed product through the field trials and production phase.
� Patent infringement support of cases based on the 802.11b technology patented while at MICRILOR resulting in over $50MM of remuneration. Oct. 1986 – Jan. 2000 MICRILOR Wakefield, MA MICRILOR was a small internally funded company formed by former MIT Lincoln Laboratory employees to work on RADAR, communications, and instrumentation problems. In 1994 MICRILOR teamed with a major Japanese company to develop the first 10 Mbps spread spectrum radio which was based on technology patented at MICRILOR, and which formed the basis for the 802.11b standard used in WiFi. Senior Engineer and Technical Project Lead for Numerous Projects
� Drove the development of the first 10 Mbps wireless LAN product to pass FCC approval for unlicensed transmission. The $6 Million product development was funded by a multi-billion dollar Japanese company that moved an engineering team to MICRILOR.
� Fundamental system definition, design of the signal processing and control logic, design and debug of the embedded firmware.
� Management of the firmware and hardware engineering team, and daily management and coordination of much of the program including budgeting, expenditures, development tool and equipment purchases.
� Designed and brought to production four chips using back-end support companies. Did much of the circuit design, Verilog synthesis, timing simulation, test vector generation, and qualification for these developments.
� Served as customer interface in the effort to bring the product to the OEM market.
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� Co-patentee with Dr. John Cafarella on four patents relating to the 10 Mbps technology, which formed a basis for the now current 802.11b IEEE standard. These patents teach the combination of orthogonal signaling with direct-sequence spread-spectrum to achieve high data rates while maintaining the processing gain needed to combat multipath and interference in a practical deployment. They became very lucrative for Proxim and the techniques are still being used in the wireless industry.
� Worked with the technical branch of the FCC to help them converge on fundamental definitions and specifications needed for the emerging spread spectrum equipment.
� Member of working groups for IEEE 802.11a and 802.11b standards committee. Interfaced with many companies and promoted the MICRILOR modulation techniques. All 802.11b wireless LAN equipment made today is based upon this modulation technology.
� Developed a low-cost, high throughput multipoint network-radio bridge. This product achieved 9 Mbps throughput from a 10 Mbps payload rate radio network; a PHY and MAC efficiency that set a new benchmark in the unlicensed bands.
� Architecture, digital circuit design, FPGA design, ASIC circuit design, Verilog design, analog and RF circuit design, antenna and transducer design and impedance matching, protocol design and multi-processor firmware design and coding. Designed many phase-locked loop, AGC, and unique normalization and tracking loops. Designed numerous baseband, RF, and microwave filters. Designed channel probing tests to measure propagation and multipath characteristics. Noise figure and other RF measurements. Processing gain and performance measurements.
� Taken products from concept and tradeoff analysis, through design, prototyping, in-house testing, field trials, regulatory testing (national and international), production, packaging, and customer follow-up.
� Worked on a variety of military communications systems and signal-processing subsystems including an underwater spread-spectrum acoustic data link, a chirp-transform-based transceiver, RFID reader/tag system, and a superconducting-component satellite communications processor.
� Product architecture and circuit design for a variety of commercial product developments including a cordless telephone, early wireless LANs for AppleTalk, zero-net, and token ring. Simulated various performance capabilities and spread spectrum coding schemes in multipath, interference, and noise.
� Managed large circuit and product efforts including incoming test of components, qualifying components purchased outside, environmental and EMI testing and debugging. Managed product and circuit board design for numerous developments.
� Invented new modulation circuits including a digital generation of MPSK and a dense bits/Hz on-off-keying technique.
� Drove the development of a commercial 19.2 Kbps, high processing gain direct-sequence spread-spectrum, dual-processor software-based modem, with high multipath immunity.
� Conceived of, explored market, and designed, built and tested a line of low-cost FSK radio modules that were used for control, sensing, and telemetry. Created advertising, interfaced with customers, and provided applications support for this product line.
� Made low-cost commercial and industrial grade unlicensed RF devices, including message generators, encoders and repeaters using various modulation methods and RF parameters.
� Created unique in-house test fixtures and equipment when outside sources were not available. June 1980 – Oct. 1986 Massachusetts Institute of Technology, Lincoln Laboratory Bedford, MA Staff Member, Analog Device Technology Group
▪ Development of signal processing algorithms, architectures and circuits for the application of advanced analog signalprocessing devices.
▪ Development of the most advanced SAW convolver based direct sequence spread spectrum (DSSS) packetradio data link reported at that date. This was part of the DARPA and CECOM Advanced Packet Radio programs.
o The radio supported up to 60 dB of signal-processing gain at 100 MHz signal bandwidth. It used spread spectrum for low probability of intercept, anti-jam communications. The receiver used a RAKE processor for multipath diversity and range measurement.
o Analyzed and simulated signal processing performance. o Designed the analog and digital signal processing circuits and the real-time control logic.
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▪ Trained and supervised a team of technicians in the construction and testing of ultrawideband and highly sensitive circuits.
▪ Designed and built numerous unique circuits for wideband communications, microprocessorbased highspeed control, and instrumentation.
▪ Reported on the team’s work in technical journals and conferences, including an invited paper for the Proceedings of the IEEE.
Specific Notable Government-Funded Work
� MIT Lincoln Laboratory 1980-1986 o Worked on various DARPA, ARMY and AIR FORCE programs. o Major program: 1980 – 1986 development of the Advanced Packet Radio for DARPA and the US Army
CECOM under the Communication Network Technology program (clearance level: Secret) � MICRILOR 1986 – 1998
o Various Defense Contracts o Transform-based communications processor (Rome AFB) o High Rate Wireless Networking (CECOM) exploratory work o High Rate Wireless Networking (CECOM) Follow-on work to build a radio test-bed o Underwater Acoustic Spread Spectrum Communication System (Navy)
� Draper Laboratory 2010 o Micro Digital Data Link for SUAS
Cooperative Work Study Experience Summer 1979 Ampex Corporation Redwood City, CA Spring 1978 Hewlett Packard Co. Rockaway, N.J. Fall 1977 Hewlett Packard Co. Rockaway, N.J.
Education BSEE Cornell University 1979 MEEE Cornell University 1980
Patents 5,412,620, 5,809,060, 6,067,313, 6,075,812, 6,473,449, 7,692,532, 7,667,575, 7,667,572, 7,567,179,
7,817,014, and 8,982,772
andPublications and Conferences
Jeffrey Fischer, “NFC in Cell Phones: The New Paradigm for an Interactive World”, IEEE Communications Magazine, pp. 22-28, June 2009 Jeffrey Fischer, "An In-Depth User's Guide to Selecting and Deploying Gen2 Tags, Readers, and Infrastructure", 2005 white paper available from many sources on the Internet J. H. Fischer, K. R. Bennett, S. A. Reible, J. H. Cafarella, and I. Yao, "A High Data Rate, Underwater Acoustic Data-Communications Transceiver," Proc. of Mastering the Oceans Through Technology, (Oceans 92), Newport, Rhode Island, pp. 571-576, October 1992. J. H. Fischer, J. H. Cafarella, C. A. Bouman, G. T. Flynn, V. Dolat, and R. Boisvert, "Wideband Packet Radio for Multipath Environments," IEEE Trans. Commun., vol. COM-36, pp. 564-576, May 1988. J. H. Fischer, J. H. Cafarella, D. R. Arsenault, G. T. Flynn, and C. A. Bouman, "Wideband Packet Radio Technology," Proc. IEEE, vol. 75, pp. 100-115, January 1987. J. H. Fischer, J. H. Cafarella, and G. T. Flynn, "SAW Convolvers and Signal Processing in a Packet Radio," Conf. Record IEEE MTT-S 1986, New York: IEEE, June 1986. Page 000117
J. H. Fischer, J. H. Cafarella, G. T. Flynn, C. A. Bouman, D. R. Arsenault, J. D. Kurtz and R. R. Boisvert, "A Wideband Packet Radio Based on Hybrid Analog/Digital Signal Processing and Layered Architecture," MILCOM '85 Proc., Vol. S, The Electronic Battle: A New Era in Military Communications, New York: IEEE, October 1985. J. H. Fischer, “Autocalibrating Circuitry for Processing SAW Convolver Outputs,” in 1985 Ultrasonics Symp. Proc. (New York, NY, IEEE), Oct. 1985. J. H. Fischer, “SAW Devices for Spread Spectrum Communications,” International Union of Radio Scientists, (Vancouver, B.C.), 1985.
Honors 1996 Mr. Fischer was elected Senior Member of the IEEE for technical contributions to the field of communications
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