Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 1 of 584
`
`Exhibit C
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 2 of 584
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`
`
`EMERSON ELECTRIC CO., FISHER-
`ROSEMOUNT SYSTEMS, INC., and
`ROSEMOUNT INC.,
`
`Plaintiffs,
`
`
`
`
`
`
`
`v.
`
`SIPCO LLC, and
`IP CO., LLC (d/b/a INTUS IQ)
`
`
`
`
`
`Civil Action No. 1:15-cv-00319-AT
`
`
`
`Defendants.
`
`PLAINTIFFS’ FIRST SET OF JOINT INVALIDITY
`CONTENTIONS
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 3 of 584
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction ...................................................................................................... 1
`
`II.
`
`RESERVATIONS ........................................................................................... 1
`
`III.
`
`IDENTIFICATION OF PRIOR ART PURSUANT TO PATENT L.R.
`4.3(a)(1) ........................................................................................................... 6
`
`A.
`
`Prior Art Patents .................................................................................... 6
`
`B.
`
`C.
`
`Prior Art Publications ............................................................................ 8
`
`Prior Art Public Uses/Sales/Offers for Sales Under § 102(b) or
`Prior Invention Under § 102(g) ........................................................... 15
`
`D.
`
`Prior Art Based on Derivation Under § 102(f) ................................... 19
`
`IV. REPRESENTATIVE CLAIM CHARTS IDENTIFYING WHERE
`EACH CLAIM ELEMENT IS FOUND IN THE PRIOR ART OR
`RENDERED OBVIOUS PURSUANT TO PATENT L.R. 3-3(b) AND
`(c) ...................................................................................................................20
`
`V. ADDITIONAL OBVIOUSNESS CONSIDERATIONS AND
`REASONS TO COMBINE THE PRIOR ART.............................................26
`
`A. Wireless Network Limitations ............................................................ 29
`
`B.
`
`C.
`
`D.
`
`“server”/”plurality of clients” .............................................................. 32
`
`“said client process of each of said clients initiates and selects a
`radio transmission path to said server” ............................................... 34
`
`“server process further includes logic that maintains a client link
`tree having client link entries” ............................................................ 36
`
`VI.
`
`IDENTIFICATION OF INVALIDITY ARGUMENTS UNDER 35
`U.S.C. § 112 PURSUANT TO PATENT L.R. 3-3(d) ..................................41
`
`VII.
`
`IDENTIFICATION OF INVALIDITY ARGUMENTS UNDER 35
`U.S.C. § 101 PURSUANT TO PATENT L.R. 3-3(d) ..................................50
`
`A.
`
`The Law of Subject Matter Ineligibility .............................................. 50
`
`-i-
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 4 of 584
`
`B.
`
`C.
`
`Claim 1 of the ‘511 Patent is Patent Ineligible under 35 U.S.C.
`§101 ..................................................................................................... 54
`
`Claim 2 of the ‘062 Patent is Patent Ineligible under 35 U.S.C.
`§101 ..................................................................................................... 60
`
`VIII. DOCUMENT PRODUCTION PURSUANT TO PATENT L.R. 3-4 ..........64
`
`A.
`
`Patent L.R. 4.3(b) ................................................................................ 64
`
`B.
`
`Additional Prior Art............................................................................. 64
`
`
`
`
`
`-ii-
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 5 of 584
`
`I.
`
`INTRODUCTION
`
`Pursuant to Patent L.R. 4.3 of the United States District Court for the
`
`Northern District of Georgia and the Court’s Scheduling Order (Dkt. 25),
`
`Declaratory Judgement Plaintiffs Emerson Electric Co., Fisher-Rosemount
`
`Systems, Inc. and Rosemount Inc. (collectively “Emerson” or “Plaintiffs”) submit
`
`the following Joint Invalidity Contentions. In its complaint, Emerson has asserted
`
`that (i) claim 1 of U.S. Patent No. 7,103,511 (“the ‘511 Patent”); and (ii) claim 2 of
`
`U.S. Patent No. 6,044,062 (“the ‘062 Patent”), which are collectively referred to as
`
`“the Initially Asserted Claims” of the “Asserted Patents.” In accordance with
`
`Patent L.R. 4.3(a)(1)–(4), Plaintiffs hereby: (a) identify each item of prior art that
`
`allegedly anticipates each Asserted Claim or renders it obvious; (b) specify
`
`whether each such item of prior art anticipates each Asserted Claim or renders it
`
`obvious; (c) submit charts identifying where specifically in each alleged item of
`
`prior art each limitation of each asserted claim is found; and (d) identify any
`
`grounds of invalidity based on 35 U.S.C. § 112 of any of the Asserted Claims.
`
`Plaintiffs also identify any grounds of invalidity based on 35 U.S.C. § 101.
`
`II. RESERVATIONS
`
`The initial contentions provided herein by Plaintiffs are provisional and
`
`subject to revision as provided in the Local Rules, the Federal Rules of Civil
`
`Procedure, and/or any Order of this Court. For example, these Joint Invalidity
`
`-1-
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 6 of 584
`
`Contentions are based on Plaintiffs’ current knowledge, understanding, and belief
`
`as to the facts and information available at this time. Plaintiffs have not yet
`
`completed their investigation, collection of information, discovery, or analysis
`
`relating to this action, and additional facts and information may lead Plaintiffs to
`
`supplement or amend these contentions. Plaintiffs fully reserve the right to so
`
`amend these contentions.
`
`Moreover, Defendants SIPCO LLC and IP Co., LLC (collectively, “SIPCO”
`
`or “Defendants”) have not provided their Infringement Contentions, and thus, have
`
`not provided Plaintiffs with sufficient notice of the bases for their infringement
`
`allegations or the alleged scope of the claims. The lack of infringement
`
`contentions have hindered Plaintiffs’ ability to fully identify applicable prior art,
`
`and Plaintiffs, therefore, reserve the right to supplement or amend these Joint
`
`Invalidity Contentions when Defendants have produced infringement contentions
`
`that comply with Patent L.R. 4.1.
`
`Plaintiffs also have not had the opportunity to take the depositions of the
`
`named inventors of the Asserted Patents and/or other persons having potentially
`
`relevant information. Plaintiffs are in the process of investigating prior art from
`
`third parties believed to have knowledge or information relating to invalidity or
`
`prior art. It is likely that Plaintiffs will hereafter discover additional prior art
`
`pertinent to the Asserted Claims of the Asserted Patents, and Plaintiffs reserve their
`
`-2-
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 7 of 584
`
`right to seek to amend and/or supplement these Joint Invalidity Contentions within
`
`a reasonable time after becoming aware of additional prior art.
`
`Similarly, Plaintiffs have had little or no discovery concerning the claimed
`
`priority dates for the Asserted Claims of the Asserted Patents. Defendants have
`
`not yet asserted what priority date each of the Asserted Claims allegedly is entitled
`
`to. Thus, until Defendants provide evidence supporting their asserted priority
`
`dates, Plaintiffs may not be collecting all relevant prior art.
`
`Emerson also reserves their right to supplement and/or amend these Joint
`
`Invalidity Contentions after the Court has construed disputed claim terms, in
`
`accordance with Local P.R. 4.5(c). Emerson’s contentions concerning the validity
`
`of the Asserted Claims of the Asserted Patents may change based upon the Court’s
`
`construction of the claims or upon positions that SIPCO may take concerning
`
`infringement or validity issues after such construction. The analysis provided in
`
`these Joint Invalidity Contentions in some instances uses SIPCO’s proposed (or
`
`implied) claim constructions which Emerson does not believe will be sustained by
`
`the Court. Moreover, the lack of SIPCO’s Infringement Contentions have impeded
`
`Emerson’s ability to understand how SIPCO is construing the Asserted Claims and
`
`applying that construction to prior art.
`
`Nothing contained in these Invalidity Contentions or any accompanying
`
`exhibits or claim charts, should be understood or deemed to be an express or
`
`-3-
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 8 of 584
`
`implied admission or contention with respect to the proper construction or scope of
`
`any terms in the Asserted Claims, nor should they be understood to adopt
`
`Defendants’ stated claim construction or their proposed scope of the Asserted
`
`Claims to the extent discernible. Emerson provides the information below and in
`
`the attached charts and document production in order to comply with Patent L.R.
`
`4.3. The production of documents that have been identified in these Joint
`
`Invalidity Contentions shall not be deemed an admission that such documents are
`
`admissible or that Plaintiffs have waived any objections regarding the admissibility
`
`of such documents.
`
`Pursuant to Patent L.R. 4.3, Plaintiffs also identify specific portions of prior
`
`art references that disclose limitations of the Asserted Claims. Each and every
`
`element disclosed in a reference that corresponds to a limitation in the Asserted
`
`Claims is not necessarily specified. In an effort to focus the issues, Plaintiffs
`
`specify only exemplary portions of cited references. Persons of ordinary skill in
`
`the art generally read a prior art reference as a whole and in the context of other
`
`publications and literature and in light of the knowledge of one of ordinary skill in
`
`the art. To understand and interpret any specific statement or disclosure within a
`
`prior art reference, such persons would rely on other information within the
`
`reference, along with other publications and their scientific or engineering
`
`knowledge. Plaintiffs consequently reserve the right to rely upon other unspecified
`
`-4-
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 9 of 584
`
`portions of the prior art references and on other publications and expert testimony
`
`as to the knowledge of a person of ordinary skill to provide context, and as aids to
`
`understanding and interpreting the portions that are identified. Plaintiffs also
`
`reserve the right to rely on other portions of the prior art references, other
`
`publications, and the testimony of experts to establish that a person of ordinary
`
`skill in the art would have been motivated to modify or combine certain of the
`
`cited references so as to render the claims obvious. Further, where Plaintiffs
`
`identify a particular figure in a prior art reference, the identification should be
`
`understood to encompass the caption and description of the figure and any text
`
`relating to the figure in addition to the figure itself. Similarly, where a specified
`
`portion of text refers to a figure, the specified portion should be understood to
`
`include the corresponding figure as well.
`
`Plaintiffs further intend to rely on prior art, arguments, and other information
`
`regarding the Asserted Patents found in, inter alia: the Asserted Patents
`
`themselves, the prosecution histories of the Asserted Patents and related patents
`
`and applications, reexamination proceedings of the Asserted Patents and related
`
`patents, or Inter Partes Reviews of the Asserted Patents and related patents and/or
`
`patent applications; and the papers filed and any evidence submitted by Defendants
`
`in connection with this litigation or other of its past, current or future litigations or
`
`-5-
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 10 of 584
`
`administrative proceedings concerning or relating to one or more of the Asserted
`
`Patents and related patents and/or patent applications.
`
`III.
`
`IDENTIFICATION OF PRIOR ART PURSUANT TO PATENT L.R.
`4.3(A)(1)
`
`Subject to Plaintiffs’ reservations, listed below is prior art that Plaintiffs
`
`contend anticipates, renders obvious, or otherwise evidences invalidity of each
`
`Initially Asserted Claim of the Asserted Patents. The following prior art is also
`
`illustrative of the knowledge of one of ordinary skill in the art at the alleged time
`
`of invention. In addition, Plaintiffs further reserve the right to rely upon U.S. and
`
`foreign prosecution histories and prior art cited in the file histories of the Asserted
`
`Patents and related patents, applications, and any documents related
`
`to
`
`reexamination or Inter Partes Reviews of the Asserted Claims of the Asserted
`
`Patents, or related patents.
`
`A. Prior Art Patents
`
`Plaintiffs hereby identify the following prior art patents that anticipate or
`
`render obvious the Initially Asserted Claims of the Asserted Patents under 35
`
`U.S.C. §§ 102(a), (b), and/or (e) and/or 35 U.S.C. § 103:
`
`Abbreviation Patent No.
`
`PRIOR ART PATENTS
`Country
`of Origin
`
`Date of Issue
`
`Cunningham
`
`6,366,217
`
`Canada
`
`5,907,491
`
`US
`
`US
`
`Apr. 2, 2002
`
`May 25, 1999
`
`-6-
`
`Exhibit
`
`1
`
`2
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 11 of 584
`
`Simionescu
`
`PRIOR ART PATENTS
`5,963,650
`US
`Oct. 5, 1999
`
`McMillin
`
`7,027,773
`
`US
`
`Apr. 11, 2006
`
`Mason
`
`6,100,817
`
`Shuey
`
`Shuey
`
`5,874,903
`
`6,073,169
`
`US
`
`US
`
`US
`
`Flanagan
`
`5,506,838
`
`US
`
`Aug, 8, 2000
`
`Feb. 23, 1999
`
`Jun. 6, 2000
`
`Apr. 9, 1996
`(filed Dec. 29,
`1994)
`
`Perlman
`
`5,323,394
`
`US
`
`Jun. 21, 1994
`
`Eng ‘783
`
`5,757,783
`
`US
`
`Ayanoglu ‘309
`
`5,822,309
`
`US
`
`Eng ‘495
`
`5,623,495
`
`US
`
`Ayanoglu ‘689
`
`5,717,689
`
`US
`
`Ayanoglu ‘759
`
`6,122,759
`
`US
`
`Hyden
`
`5,774,461
`
`US
`
`Meier ‘436
`
`5,394,436
`
`Meier ‘154
`
`5,295,154
`
`Meier ‘942
`
`WO
`95/12942
`
`US
`
`US
`
`US
`
`May 26, 1998
`(filed Jun. 15,
`1995)
`
`Oct. 13, 1998
`(filed Jun. 15,
`1995)
`
`Apr. 22, 1997
`(filed Jun. 15,
`1995)
`
`Feb. 10, 1998
`(filed Oct. 10,
`1995)
`
`Sept. 19, 2000
`(filed Oct. 10,
`1995)
`
`Jun. 30, 1998
`(filed Sept. 27,
`1995)
`
`Feb. 28, 1995
`
`Mar. 15, 1994
`
`May 11, 1995
`
`-7-
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 12 of 584
`
`Shpancer
`
`PRIOR ART PATENTS
`5,282,204
`US
`Jan. 25, 1994
`
`Ciotti
`
`6,421,731
`
`US
`
`Sherman ‘236
`
`5,974,236
`
`US
`
`Hayashi
`
`5,907,540
`
`US
`
`Natarajan
`
`5,608,721
`
`US
`
`Jednacz
`
`5,726,644
`
`US
`
`
`
`B. Prior Art Publications
`
`July 16, 2002
`(filed Oct. 29,
`1996)
`
`Oct. 26, 1999
`(filed Aug. 17,
`1995)
`
`May 25, 1999
`(filed Sept. 19,
`1995)
`
`Mar. 4, 1997
`(filed Apr. 3,
`1995)
`
`Mar. 10, 1998
`(filed Jun. 30,
`1995)
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`Plaintiffs hereby identify the following prior art publications that anticipate
`
`or render obvious the Initially Asserted Claims of the Asserted Patents under 35
`
`U.S.C. §§ 102(a), (b), (g) and/or 35 U.S.C. § 103:
`
`PRIOR ART PUBLICATIONS
`
`
`
`Abbreviation
`
`Pub. No./Name
`
`Burchfiel
`
`Jubin
`
`“Functions and structure
`of a packet radio
`station,” AFIPS Conf.
`Proc., vol. 44
`“The DARPA Packet
`Radio Network
`
`Country
`of
`Origin
`
`Date of
`Publication
`
`Exhibit
`
`US
`
`1975
`
`25
`
`US
`
`Jan. 1987
`
`26
`
`-8-
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 13 of 584
`
`PRIOR ART PUBLICATIONS
`
`
`
`Kahn
`
`Protocols,” Proceedings
`of the IEEE
`
`“Advances in Packet
`Radio Technology,”
`Proceedings of the IEEE
`
`US
`
`Nov. 1978
`
`27
`
`Kantronics
`
`“KPC-3 Plus Users
`Guide”
`
`US
`
`1997
`
`Ultrix
`
`Mobile
`Computing
`
`Johnson and
`Maltz
`
`“Adding Packet Radio
`to the Ultrix Kernel,”
`Neuman
`
`D.B. Johnson and D.
`Maltz, “Dynamic Source
`Routing in Ad Hoc
`Wireless Networks,”
`Mobile Computing,
`Chapter 5, pp. 153-181
`(Imielinski and Korth,
`eds.)
`
`
`D.B. Johnson and D.
`Maltz, “Dynamic Source
`Routing in Ad Hoc
`Wireless Networks,”
`Paper.
`
`28
`
`29
`
`US
`
`Dec. 1987,
`Feb. 1988
`
`US
`
`Feb. 1996
`
`30
`
`31
`
`US
`
`prior to
`Feb. 1996
`(Emerson
`will
`conduct
`discovery
`concerning
`a more
`exact date,
`including
`whether it
`is prior to
`Dec. 6,
`1995)
`
`Johnson 1994 D. B. Johnson, “Routing
`in Ad Hoc Networks of
`Mobile Hosts,” Proc. of
`
`US
`
`Dec. 1994
`
`32
`
`-9-
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 14 of 584
`
`PRIOR ART PUBLICATIONS
`
`
`
`the IEEE Workshop on
`Mobile Computing
`Systems and
`Applications at 158-163
`(Dec. 8-9, 1994)
`Goldstein Goldstein, F., “The
`Radio Shortest Path
`First (RSPF) Routing
`protocol for Internet
`Protocol over Amateur
`Packet Radio,” Version
`2.2
`
`Varadhan
`
`Estrin
`
`Layer Net
`
`Brownrigg,
`Lynch, and
`
`
`
`Varadhan, Estrin, and
`Hotz, “SDRP Route
`Construction,” Internet
`Draft draft-ietf-sdr-
`route-construction-
`01.{ps.txt}
`
`
`
`Estrin, Li, Varadhan,
`Zappala, “Source
`Demand Routing:
`Packet Format and
`Forwarding
`Specification,” RFC
`1940
`
`Bhatnagar, A. and
`Robertson, T., “Layer
`Net: A New Self-
`Organizing Network
`Protocol,” MILCOM 90,
`1990 IEEE Military
`Comm. Conf. 845
`Brownrigg, Lynch, and
`Pepper, “Packet Radio
`
`-10-
`
`US
`
`Feb. 1992
`
`33
`
`US
`
`Feb. 27,
`1995
`
`34
`
`US
`
`May 1996
`
`35
`
`US
`
`Sept.-Oct.
`1990
`
`36
`
`US
`
`Sept. 1984
`
`37
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 15 of 584
`
`PRIOR ART PUBLICATIONS
`
`
`
`Packet Radio
`Networks
`
`Pepper
`
`for Library
`Automation,” 3 Inf.
`Tech. and Libraries 229
`(Sept. 1984)
`(Brownrigg, Lynch, and
`Pepper)
`Lynch, C. and
`Brownrigg, E., “Packet
`Radio Networks:
`Architectures, Protocols,
`Technologies and
`Applications”
`(Pergamon Press)
`RFC 981 Mills, D.L., “An
`Experimental Multiple-
`Path Routing
`Algorithm,” RFC 981
`
`
`Saltzer
`
`Pomalaza-
`Ráez
`
`J. Saltzer, D. Reed, and
`D. Clark, “Source
`Routing for Campus-
`Wide Internet
`Transport,” Local
`Networks for Computer
`Communications,
`North-Holland,
`Amsterdam, pp. 1-23
`(1981) (Saltzer); see
`also https://www.rfc-
`editor.org/ien/ien144.txt.
`
`Pomalaza-Ráez, C., “A
`Distributed Routing
`Algorithm for Multihop
`Packet Radio Networks
`with Uni- and Bi-
`Directional Links,”
`Tactical
`
`-11-
`
`US
`
`1987
`
`38
`
`US
`
`Mar. 1986
`
`39
`
`US
`
`1981
`
`40
`
`US
`
`May 1994
`
`41
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 16 of 584
`
`PRIOR ART PUBLICATIONS
`
`
`
`Garcia-Luna-
`Aceves
`
`Brayer
`
`Communications
`Conference, 1994. Vol.
`1. Digital Technology
`for the Tactical
`Communicator.,
`Proceedings of the 1994
`at 365-370.
`
`Garcia-Luna-Aceves, J.,
`“A Fail-Safe Routing
`Algorithm,” IEEE
`Infocom ’86
`Brayer, K.,
`“Implementation and
`Performance of
`Survivable Computer
`Communication with
`Autonomous
`Decentralized Control,”
`IEEE Comm. Mag. 34
`(July 1983) (Brayer)
`
`Schwartz Mischa Swartz,
`“Telecommunication
`Networks: Protocols,
`Modeling and Analysis”
`“NETROM + TheNet
`User Manual”
`Geier, DeSimio, and
`Welsh, “Network
`Routing Techniques and
`Their Relevance to
`Packet Radio
`Networks,”
`ARRL/CRRL Amateur
`Radio 9th Computer
`Networking Conference,
`pages 105-117
`
`US
`
`Apr. 1986
`
`42
`
`US
`
`July 1983
`
`43
`
`US
`
`1987
`
`44
`
`US
`
`US
`
`July 2,
`1988
`1990
`
`45
`
`46
`
`-12-
`
`NET/ROM
`
`Geier
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 17 of 584
`
`PRIOR ART PUBLICATIONS
`
`
`
`Network
`3000 CUG
`
`WINGS
`
`Cerf 78
`
`Cerf 74
`
`Fullmer
`
`Tornow
`
`Network
`3000 SCM
`
`
`
`Network 3000:
`Communications Users
`Guide
`Garcia-Luna-Aceves,
`JJ., “Wireless Internet
`Gateways (WINGS),”
`IEEE
`Cerf, Vinton, “Issues in
`Packet-Network
`Interconnection,”
`Proceedings of the
`IEEE, Vol. 66, No. 11
`(Nov. 1978)
`Cerf, Vinton, “A
`Protocol for Packet
`Network
`Intercommunication,”
`IEEE Transactions on
`Communications, Vol.
`com-22, No. 5 (May
`1974)
`Fullmer, Chane,
`“Collision Avoidance
`Techniques for Packet-
`Radio Networks,” Univ.
`of California, Santa
`Cruz (June 1998)
`Tornow, Janet,
`“Functional Summary of
`the DARPA SURAP1
`Network,” DARPA
`(Sept. 1986)
`Network 3000 Server
`Configuration Manual,
`June 1992
`
`US
`
`Feb. 5,
`1993
`
`US
`
`1997
`
`47
`
`48
`
`US
`
`Nov. 1978
`
`49
`
`US
`
`May 1974
`
`50
`
`US
`
`June 1998
`
`51
`
`US
`
`Sept. 1986
`
`52
`
`US
`
`June 1992
`
`53
`
`-13-
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`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 18 of 584
`
`In addition, Emerson may rely upon the references and information provided
`
`by IP CO., LLC and by other defendants in other cases involving the same or
`
`related patents, including the list of references cited and the analysis of those
`
`references, and their contentions: IP CO, LLC v. Oncor Elec. Delivery Co., LLC et
`
`al., Case No. 2:09-CV-00037-DF (E.D. Tex.), including Defendant Eka Systems,
`
`Inc. Invalidity Contentions (Sept. 28, 2009); IP CO., LLC v. Cellnet Tech., Inc.,
`
`Case No. 1:05-CV-2658 (N.D. Ga.), including Cellnet’s Disclosure of Invalidity
`
`Contentions (Feb. 22, 2006), IP CO., LLC v. Elster Elec., LLC, Case Nos. 1:05-
`
`CV-1138, 1182 (N.D. Ga.), including Elster’s Disclosure of Invalidity Contentions
`
`(July 29, 2005), First Supplement (Dec. 5, 2005), Second Supplement (May 9,
`
`2006), and any other supplements; SIPCO, LLC v. Datamatic Ltd., et al., Case No.
`
`6:09-CV-00532 (E.D. Tex), including Johnson Control’s Invalidity Contentions
`
`(May 24, 2010); SIPCO v. Sensus USA Inc., Case No. 6:09-CV-532 (E.D. Tex),
`
`including Sensus’s Invalidity Contentions (May 24, 2010); IP CO., LLC v.
`
`Datamatic, Ltd., Case No. 2:09-CV-37 (E.D. Tex.), including Sensus’s Invalidity
`
`Contentions (Sept. 24, 2009); SIPCO, LLC v. Datamatic, Ltd., Case No. 6:09-CV-
`
`532 (E.D. Tex.), including Trilliant’s Invalidity Contentions (May 24, 2010);
`
`SIPCO, LLC v. Amazon.com, Inc., Case No. 2:08-CV-359 (E.D. Tex.), including
`
`Defendants’ Joint Preliminary Invalidity Contentions (May 29, 2009 and Dec. 14,
`
`-14-
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`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 19 of 584
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`2009); SIPCO, LLC v. Control4 Corp., Case No. 6:10-CV-249 (E.D. Tex.),
`
`including Defendants’ Invalidity Contentions (Nov. 22, 2010).
`
`Also, Emerson may rely upon the references and information provided by IP
`
`CO., LLC and by other defendants in proceedings before the U.S. Patent and
`
`Trademark Office, including ABB Tech., Ltd. v. IPCO, LLP, IPR2013-00482 (Pat.
`
`Trial and App. Bd.); ABB Tech., Ltd. v. IPCO, LLP, IPR2014-00147 (Pat. Trial
`
`and App. Bd.); Emerson Electric Co. v. IP Co., LLC, IPR2015-01573 (Pat. Trial
`
`and App. Bd.); Emerson Electric Co. v. IP Co., LLC, IPR2015-01901 (Pat. Trial
`
`and App. Bd.); Emerson Electric Co. v. IP Co., LLC, IPR2015-01973 (Pat. Trial
`
`and App. Bd.); Fieldcomm Group v. SIPCO., LLC, IPR2015-00659 (Pat. Trial and
`
`App. Bd.); Fieldcomm Group v. SIPCO., LLC, IPR2015-00663 (Pat. Trial and
`
`App. Bd.); and Fieldcomm Group v. SIPCO., LLC, IPR2015-00668 (Pat. Trial and
`
`App. Bd.).
`
`C. Prior Art Public Uses/Sales/Offers for Sales Under § 102(b) or
`Prior Invention Under § 102(g)
`
`The following products and systems, which were conceived and reduced to
`
`practice, ready for patenting, offered for sale and/or publicly used or known, are
`
`prior art and invalidate the Asserted Claims, alone or in combination with other
`
`prior art. Plaintiffs’ investigation regarding some of these and other prior art
`
`products and systems is ongoing. However, Plaintiffs may rely on the testimony of
`
`the designers, engineers, users, or people knowledgeable about these products and
`
`-15-
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`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 20 of 584
`
`systems to illustrate the operation of a product or system, as well as additional
`
`documents and publications.
`
`For example, the PRNET system designed and developed jointly by the
`
`Advanced Research Projects Agency (“ARPA”) of the U.S. Department of
`
`Defense, Rockwell International, Bolt Beranek and Newman, Inc., SRI
`
`International, and others in circa 1978 constitutes prior art under § 102(b). This
`
`system is disclosed at least in part in Advances in Packet Radio Technology, Kahn,
`
`Robert, Proceedings of the IEEE, Vol. 66, No. 11 (Nov. 1978) (“Kahn”), and in
`
`other articles published in the mid to late 1970s. Kahn and other publications
`
`describe how the PRNET system was publicly used in the San Francisco Bay area,
`
`the Boston area, and it communicated across the ARPANET to locations such as
`
`Dallas, TX, the Los Angeles area, and other parts of the U.S. The charts at
`
`Exhibits A and O show how the circa 1978 system discloses each of the claim
`
`elements based on the information currently available to Plaintiffs. Plaintiffs
`
`expect to develop additional information during discovery, and will supplement
`
`these contentions as may be necessary.
`
`The PRNET circa 1987 was a system designed and developed jointly by the
`
`Defense Advanced Research Projects Agency (“DARPA”) of the U.S. Department
`
`of Defense, Rockwell International, Bolt Beranek and Newman, Inc., SRI
`
`International, Hazeltine Corporation, and perhaps others, and was publicly used up
`
`-16-
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 21 of 584
`
`to at least 1987. The circa 1987 version of the PRNET was disclosed at least in
`
`part in The DARPA Packet Radio Network Protocols, Jubin, John, Proceedings of
`
`the IEEE, Vol. 75, No. 1, Jan. 1987 (“Jubin”), and in other articles published in the
`
`late 1980s. Jubin states that the PRNET had been in “daily use” for nearly 10
`
`years at that time, and that the PRNET was coupled to the ARPANET, which later
`
`became the Internet. The charts at Exhibits B, P and Q show how the circa 1987
`
`system discloses each of the claim elements based on the information currently
`
`available to Plaintiffs. Plaintiffs expect to develop additional information during
`
`discovery, and will supplement these contentions as may be necessary.
`
`The Network 3000 system was developed, used and sold in the U.S. by
`
`Bristol Babcock Inc. and its customers in the early 1990s. The Network 3000
`
`systems were being offered for sale, sold, publicly known and publicly used in the
`
`U.S. no later than 1995. As such, the systems known and used in the U.S.
`
`constitute prior art under § 102(b). As a non-limiting example of such Network
`
`3000 systems, Bristol Babcock made an offer for sale, and sold Network 3000
`
`system to Metropolitan Dade County, Florida’s Miami-Dade Water and Sewer
`
`Department. Based on the facts available to date, a formal proposal was made in
`
`December 1994 and the sale, public use, and public knowledge occurred in 1995.
`
`Bristol Babcock made other such offers for sale and sales in the U.S. of the
`
`Network 3000 system for Supervisory Control and Data Acquisition (“SCADA”)
`
`-17-
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 22 of 584
`
`System applications. The charts at Exhibits K and AP show how the Network
`
`3000 system discloses each of the claim elements based on the information
`
`currently available to Plaintiffs. Plaintiffs expect to develop additional information
`
`during discovery, and will supplement these contentions as may be necessary.
`
`The work of AES Corp., including that of Michael J. Sherman and Timothy
`
`S. Tait, relating to wireless communications networks and methods is prior art to
`
`the ‘062 patent. As reflected in documents cited in the prosecution history of the
`
`reexamination of the ‘062 patent, AES Corp. offered a security system marketed as
`
`the IntelliNet System, which Emerson believes resulted in the Sherman ‘236
`
`patent. Exhibit AF shows the correspondence between the work of AES Corp. and
`
`the claimed elements.
`
`The work of David B. Johnson and/or David A. Maltz relating to dynamic
`
`source routing techniques. Emerson contends that the work of Johnson and Maltz
`
`was performed in the United States prior to February 1996, and that Johnson
`
`and/or Maltz performed simulations of these techniques prior to February 1996,
`
`and will seek to discover dates for Johnson and/or Maltz’s conception and
`
`reduction to practice. Exhibits L, M, and N show the correspondence between the
`
`work of Johnson and/or Maltz and the claimed elements.
`
`-18-
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 23 of 584
`
`The use of the nodes in a network using the NET/ROM protocols. Exhibit
`
`AN shows the correspondence between nodes using NET/ROM protocols and the
`
`claimed elements.
`
`The work of James Geier, Martin DeSimio, and/or Bryon Welsh relating to
`
`network routing techniques for packet radio networks, including the automatic
`
`routing algorithm for the Air Force Logistic Command’s packet radio network.
`
`Exhibit AO shows the correspondence between the work of Geier, DeSimio, and
`
`Welsh and the claimed elements.
`
`D. Prior Art Based on Derivation Under § 102(f)
`
`Plaintiffs are investigating whether one or more claims of the Asserted
`
`Patents may be invalid due to derivation under 35 U.S.C. § 102(f). For example,
`
`Plaintiffs are investigating whether the named inventors of the ‘062 patent may
`
`have derived claimed subject matter from SRI International and its employees.
`
`SRI International and its employees may have been involved in the alleged
`
`conception and reduction to practice of the claimed inventions in the mid-1980s.
`
`However, until all relevant information and materials, including prior art products,
`
`available to the named inventors are identified and produced and the inventors and
`
`percipient witnesses are deposed, Plaintiffs cannot know what the named inventors
`
`learned from prior art sources (or from collaborations with others) and what they
`
`independently contributed to the claimed subject matter. Plaintiffs will seek to
`
`-19-
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 24 of 584
`
`amend/supplement this contention, as appropriate, if and when more information
`
`becomes available.
`
`IV. REPRESENTATIVE CLAIM CHARTS IDENTIFYING WHERE
`EACH CLAIM ELEMENT IS FOUND IN THE PRIOR ART OR
`RENDERED OBVIOUS PURSUANT TO PATENT L.R. 3-3(B) AND
`(C)
`
`Plaintiffs contend that each of the Initially Asserted Claims of the Asserted
`
`Patents is anticipated by and/or rendered obvious in view of one or more of the
`
`items of prior art identified herein, either alone or in combination. Although
`
`Plaintiffs reserve the right to rely on other prior art disclosed or incorporated by
`
`reference herein, Plaintiffs identify below representative prior art that renders
`
`invalid one or more of the Initially Asserted Claims of the Asserted Patents and
`
`include accompanying claim charts that identify specific examples in each item of
`
`prior art where each element of each Initially Asserted Claim is found.
`
`If a claim chart identifies a disclosure for each of the elements of a claim,
`
`Plaintiffs assert that the reference anticipates and/or renders obvious that claim, for
`
`example, including at least the charts for the following references for one or more
`
`claims: Advances in Packet Radio Technology, Kahn, Robert, Proceedings of the
`
`IEEE, Vol. 66, No. 11 (Nov. 1978); Functions and structure of a packet radio
`
`station, AFIPS Conf. Proc., vol. 44 (1975); U.S. Patent No. 6,366,217 to
`
`Cunningham; U.S. Patent No. 5,874,903 to Shuey; U.S. Patent No. 6,100,817 to
`
`Mason; U.S. Patent No. 7,027,773 to McMillin; U.S. Patent No. 5,907,491 to
`
`-20-
`
`

`

`Case 1:16-cv-02690-AT Document 121-4 Filed 08/05/16 Page 25 of 584
`
`Canada; Mobile Computing (see Exhibit L); Johnson and Maltz (Exhibit M);
`
`Johnson 1994 (Exhibit N); Kahn 1978 (Exhibit O); Jubin 1985 (Exhibit P); Jubin
`
`1987 (Exhibit Q); Toh (Exhibit R); Goldstein (Exhibit S); Layer Net (Exhibit U);
`
`Eng’783 (Exhibit X); Brownrigg, Lynch, and Pepper (Exhibit Y); Meier ‘436
`
`(Exhibit Z); Shpancer (Exhibit AA); Packet Radio Networks (Exhibit AB); RFC
`
`981 (Exhibit AC); Ciotti (Exhibit AE); Sherman ‘236 (Exhibit AF); Hayashi
`
`(Exhibit AG); Natarajan (Exhibit AI); Garcia-Luna-Aceves (Exhibit AJ); Brayer
`
`(Exhibit AK); Jednacz (Exhibit AL); NET/ROM (Exhibit AN); Grier (Exhibit
`
`AO); and Network 3000 (Exhibit AP). To the extent any of the charted prior art
`
`references should fail to disclose an element of any claim, Plaintiffs reserve the
`
`right to rely upon the knowledge of one skilled in the art, or any other disclosed
`
`prior art references, alone or in combination, whether produced by Plaintiffs or by
`
`Defendants, to show the element and thereby invalidate those claims. If a claim
`
`chart does not identify a disclosure for an element, Plaintiffs assert that the
`
`reference renders obvious that claim over the knowledge of one of ordinary skill in
`
`the art alone or in combination with the other prior art.
`
`For the ‘511 patent, to the ex