`
`Patent No. 6,034,623
`Corrected Petition For Inter Partes Review
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`CYPRESS SEMICONDUCTOR CORP.
`Petitioner
`v.
`
`BLACKBERRY LTD.
`Patent Owner
`____________________
`Case IPR2014-00400
`____________________
`
`CORRECTED PETITION FOR INTER PARTES REVIEW OF U.S.
`PATENT NO. 6,034,623 UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board U.S.
`Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`Page
`
`I. 
`
`MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1)) ...................................... 1 
`A. 
`Real Party-in-Interest ............................................................................ 1 
`B. 
`Related Matters ...................................................................................... 1 
`C. 
`Designation of Lead and Back-Up Counsel .......................................... 1 
`D. 
`Service Information ............................................................................... 2 
`
`II. 
`
`PAYMENT OF FEES (37 C.F.R. § 42.103) ................................................... 2 
`
`III.  REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §§
`42.104 .............................................................................................................. 2 
`A.  Grounds For Standing (37 C.F.R. § 42.104(a)) .................................... 2 
`B. 
`Identification of Challenged Claims (37 C.F.R. § 42.104(B)(1)) ......... 2 
`C. 
`The Prior Art and Specific Grounds on Which the Challenge to the
`Claims is Based (37 C.F.R. § 42.104(B)(2)) ......................................... 3 
`Claim Construction (37 C.F.R. § 42.104(b)(3)) .................................... 4 
`
`D. 
`
`IV.  SUMMARY OF THE ‘623 PATENT ............................................................. 7 
`A. 
`Brief Description ................................................................................... 7 
`B. 
`Summary of the Prosecution History .................................................... 8 
`
`V. 
`
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘623 PATENT IS UNPATENTABLE ............................. 11 
`A. 
`The Use of a Reprogrammable Radio Telemetry System Was Well
`Known in the Art ................................................................................. 11 
`The Use of Passwords to Reprogram a Microcontroller Was Well
`Known in the Prior Art ........................................................................ 14 
`The Use of Multiple State Machines Was Well Known in the Prior Art
` ............................................................................................................. 16 
`The Use of Dual-Mode Modem Was Well Known in the Prior Art ... 19 
`
`B. 
`
`C. 
`
`D. 
`
`VI.  CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY .................................................................................. 21 
`A.  Ground 1: Claim 1 is Obvious Over Sainton in View of Ehlers and in
`Further View of Grider ........................................................................ 21 
`Ground 2: Claim 1 is Obvious Over Sainton in View of Ehlers and in
`Further View of Simionescu ............................................................... 21 
`i
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`

`

`
`
`
`
`Ground 3: Claim 1 is Obvious Over Argyroudis in View of Reagle
`and in Further View of Grider ............................................................. 21 
`Ground 4: Claim 2 is Obvious Over Sainton in View of Ehlers and in
`Further View of Funabashi .................................................................. 32 
`Ground 5: Claim 2 is Obvious Over Argyroudis in View of Reagle
`and in Further View of Funabashi ....................................................... 32 
`Ground 6: Claim 3 is Obvious Over Sainton in View of Ehlers and
`Further in View of McLaughlin .......................................................... 38 
`Ground 7: Claim 3 is Obvious Over Sainton in View of Ehlers and
`Further in View of Simionescu ........................................................... 38 
`Ground 8: Claim 3 is Obvious Over Sainton in View of Ehlers and
`Further in View of Grider .................................................................... 38 
`D.  Ground 9: Claim 3 is Anticipated by Simionescu ............................... 47 
`
`Ground 10: Claim 3 is Obvious in View of Simionescu..................... 47 
`E. 
`Ground 11: Claim 4 is Obvious Over Sainton in View of Ehlers and
`Further in View of Reagle ................................................................... 51 
`Ground 12: Claim 4 is Obvious Over Argyroudis in View of Reagle 51 
`
`B. 
`
`
`
`C. 
`
`
`
`
`
`
`
`VII.  CONCLUSION .............................................................................................. 57 
`
`ii
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`

`

`
`
`Cypress Semiconductor Corp. (“Petitioner”) petitions for inter partes review
`
`(“IPR”) under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 1-4 of U.S.
`
`6,034,623 (CSC 1001, “‘623 Patent”).
`
`I. MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1))
`A. REAL PARTY-IN-INTEREST
`Petitioner certifies that it is the real party-in-interest.
`
`B. RELATED MATTERS
`Petitioner is not aware of any pending prosecution concerning the ‘623
`
`Patent. Petitioner is a defendant in a pending litigation concerning the ‘623 Patent.
`
`BlackBerry Limited v. Cypress Semiconductor Corp., 3:13-cv-04431 (N.D. Tex.
`
`Nov. 4, 2013). Petitioner is not aware of any other past or present litigation
`
`concerning the ‘623 Patent.
`
`C. DESIGNATION OF LEAD AND BACK-UP COUNSEL
`
`Lead Counsel
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP,
`990 Marsh Road,
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 212.715.8000
`
`Back-Up Counsel
`Paul Andre
`Pro hac vice appearance to be
`requested upon grant of petition
`Kramer Levin Naftalis & Frankel LLP,
`990 Marsh Road,
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 212.715.8000
`
`Aaron M. Frankel (Reg. No. 52,913)
`Kramer Levin Naftalis & Frankel LLP,
`1177 Avenue of the Americas,
`New York, NY 10036
`Tel: 212.715.9100 Fax: 212.715.8000
`
`1
`
`

`

`
`
`SERVICE INFORMATION
`
`D.
`Please address all correspondence to the lead counsel at the address provided
`
`in Section I(C) of this Petition. Petitioner also consents to service by email to:
`
`jhannah@kramerlevin.com with copies to pandre@kramerlevin.com and
`
`afrankel@kramerlevin.com.
`
`II.
`
`PAYMENT OF FEES (37 C.F.R. § 42.103)
`
`Petitioner authorizes the U.S. Patent and Trademark Office to charge
`
`Deposit Account No. 50-0540 for the fee set in 37 C.F.R. § 42.15(a) for this
`
`petition for inter partes review, and further authorizes payment for any additional
`
`fees to be charged to this Deposit Account.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER
`37 C.F.R. §§ 42.104
`A. GROUNDS FOR STANDING (37 C.F.R. § 42.104(A))
`Petitioner certifies that the ‘623 Patent is eligible for inter partes review and
`
`further certifies that it is not barred or estopped from requesting inter partes review
`
`challenging the identified claims on the grounds set forth herein. The original
`
`complaint against Petitioner was filed on November 4, 2013. Therefore, the
`
`present petition is being filed within one year of the filing of the original complaint
`
`and of the first assertion of the ‘623 Patent against Petitioner.
`
`B.
`
`IDENTIFICATION OF CHALLENGED CLAIMS
`(37 C.F.R. § 42.104(B)(1))
`Petitioner requests inter partes review of claims 1-4 of the ‘623 Patent on
`
`2
`
`

`

`
`
`the grounds set forth below, and requests that claims 1-4 be found unpatentable.
`
`C. THE PRIOR ART AND SPECIFIC GROUNDS ON WHICH
`THE CHALLENGE TO THE CLAIMS IS BASED
`(37 C.F.R. § 42.104(B)(2))
`
`The priority date for the ‘623 Patent is July 21, 1997, the filing date of the
`
`‘623 Patent. Inter partes review of the ‘623 Patent is requested in view of the
`
`following references: Ehlers (CSC 1004), filed on January 5, 1995, is prior art
`
`under 35 U.S.C. § 102(e); Sainton (CSC 1005) and Grider (CSC 1006), published
`
`in 1993, is prior art under 35 U.S.C. § 102(b); Simionescu (CSC 1007), filed on
`
`May 1, 1997, is prior art under 35 U.S.C. § 102(e); Argyroudis (CSC 1008), filed
`
`on July 11, 1996, is prior art under 35 U.S.C. § 102(e); Funabashi (CSC 1009),
`
`published in 1986, is prior art under 35 U.S.C. § 102(b); McLaughlin (CSC 1010),
`
`filed on July 19, 1996, is prior art under 35 U.S.C. § 102(e); and Reagle (CSC
`
`1011), published in 1995, is prior art under 35 U.S.C. § 102(b).
`
`The following specific grounds of invalidity are asserted:
`
`Ground
`1
`
`Claim
`1
`
`Basis
`Obvious under § 103(a) over Sainton in view of Ehlers
`in further view of Grider
`
`2
`
`3
`
`4
`
`1
`
`1
`
`2
`
`Obvious under § 103(a) over Sainton in view of Ehlers
`in further view of Simionescu
`
`Obvious under § 103(a) over Argyroudis in view of
`Reagle in further view of Grider
`
`Obvious under § 103(a) over Sainton in view of Ehlers
`in further view of Funabashi
`
`3
`
`

`

`
`
`Ground
`5
`
`Claim
`2
`
`Basis
`Obvious under § 103(a) over Argyroudis in view of
`Reagle in further view of Funabashi
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`3
`
`3
`
`3
`
`3
`
`3
`
`4
`
`4
`
`Obvious under § 103(a) over Sainton in view of Ehlers
`in further view of McLaughlin
`
`Obvious under § 103(a) over Sainton in view of Ehlers
`in further view of Simionescu
`
`Obvious under § 103(a) over Sainton in view of Ehlers
`in further view of Grider
`
`Anticipated under § 102(e) by Simionescu
`
`Obvious under § 103(a) over Simionescu
`
`Obvious under § 103(a) over Sainton in view of Ehlers
`in further view of Reagle
`
`Obvious under § 103(a) over Argyroudis in view of
`Reagle
`
`An explanation of the unpatentability of claims 1-4, including an
`
`identification of where each element is found in the prior art is provided in the
`
`detailed claim charts in Section VI. Additional support is set forth in the
`
`Declaration of Joshua Phinney, PhD. (CSC 1003, “Phinney Decl.”).
`
`D. CLAIM CONSTRUCTION (37 C.F.R. § 42.104(B)(3))
`There are four claim terms that should be construed for purposes of this IPR.
`
`A claim subject to IPR is given its “broadest reasonable construction in light of the
`
`specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). Because
`
`the standards of claim interpretation applied in litigation differ from a PTO
`
`4
`
`

`

`
`
`proceeding, any interpretation of terms in this IPR is not binding in any litigation
`
`related to the ‘623 Patent. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
`
`Similarly, any claim amendments offered but not entered during an inter partes
`
`review proceeding would not be binding on any litigation.
`
`The first claim term to be construed is “link byte,” which is recited only in
`
`claim 2. This claim term means “a signal between at least two state machines to
`
`pass information to each other.” The specification of the ‘623 Patent specifically
`
`defines the link byte. ‘623 Patent at 8:14-8:54 (“The Link Byte allows the state
`
`machines to pass signals to each other….”), 9:30-9:40. As explained in Dr.
`
`Phinney’s declaration, the link byte allows the state machines to be partitioned into
`
`smaller state machines, thereby simplifying the programmable logic. Phinney
`
`Decl., ¶ 30. As explained in the specification, in a preferred embodiment, three
`
`simple state machines are connected to form a more complex auxiliary state
`
`machine. ‘623 Patent at 7:38-8:40. The use of a link byte allows for the three
`
`simple state machines used in a preferred embodiment to communicate with one
`
`another so that they can operate as the more complex auxiliary state machine.
`
`The remaining claim terms to be construed are means plus function
`
`limitations found in Claims 1 and 2. The first means plus function claim term is a
`
`“means for transmitting and receiving information over a radio frequency data
`
`network,” where the function is “transmitting and receiving information over a
`
`5
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`

`

`
`
`radio frequency data network.” The corresponding structure is described generally
`
`in the specification at 4:15-6:18, Figs. 3 and 4, and more specifically at 4:30-4:31,
`
`5:65-5:67 (“Radio modem 60 includes…radio interface 88 including modulation
`
`and demodulation circuitry….”) and 6:6-6:18 (“The radio interface and modulation
`
`demodulation circuitry 88 includes standard radio components, such as mixers,
`
`downconverters, limiting filters, discrimination circuitry, modulation circuitry,
`
`analog to digital and digital to analog converters, etc.”). Therefore, this claim
`
`structure should be construed as “a standard modulation and demodulation
`
`circuitry operating on a radio frequency data network.”
`
`The second means plus function claim term is an “interface means for
`
`directly connecting the radio modem to a plurality of input/output devices,” where
`
`the function is “directly connecting the radio modem to a plurality of input/output
`
`devices.” The corresponding structure is described generally in the specification at
`
`5:51-6:5, 6:38-6:64, Figs. 3 and 4, and more specifically at 5:50-5:54
`
`(“Microprocessor 80 is also connected to serial interface 90, which is preferably an
`
`RS-232 interface, but could be any other type of serial, parallel, or other data
`
`communication interface.”). Therefore, this claim structure should be construed as
`
`“a standard data communication interface connected to or part of a radio modem.”
`
`The third means plus function claim term is a “programmed computer means
`
`for communicating information to and from the radio frequency data network via
`
`6
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`

`

`
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`the means for transmitting and receiving and for communicating information to
`
`and from the input/output devices via the interface means,” where the function is
`
`“communicating information to and from the radio frequency data network via the
`
`means for transmitting and receiving and for communicating information to and
`
`from the input/output devices via the interface means.” The corresponding
`
`structure is described generally in the specification at 5:51-6:64, Figs. 3 and 4, and
`
`more specifically at 5:19-5:21 (“Microprocessor 80 is preferably an Intel 80C188
`
`microprocessor, but could alternatively be any other type of microprocessor or
`
`microcontroller.”). Therefore, this claim structure should be construed as “a
`
`microprocessor or microcontroller that is connected to or part of a radio modem.”
`
`IV. SUMMARY OF THE ‘623 PATENT
`A. BRIEF DESCRIPTION
`The ‘623 Patent is generally directed to a radio modem with a
`
`reprogrammable microprocessor directly connected to a serial interface for
`
`telemetry purposes. Radio modems act as a receiver and transmitter (in
`
`combination known as a transceiver) of radio signals. Phinney Decl., ¶ 16.
`
`According to the ‘623 Patent, the admitted prior art included telemetry
`
`systems connected to a radio modem, although the telemetry computer and radio
`
`modem were purportedly separated. ‘623 Patent, 1:39-1:41. According to the ‘623
`
`Patent, the result was a system that increased cost, power consumption, and size of
`
`7
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`

`

`
`
`the telemetry system. Id. at 1:54-2:18.
`
`To purportedly address the issues of high cost, high power consumption,
`
`large physical size, and complex integration, the specification of the ‘623 Patent
`
`discloses the use of a radio modem having an internal microprocessor,
`
`reprogrammable telemetry program storage, a radio transceiver, and a serial
`
`interface. Id. at 2:35-2:53. By providing the radio modem with processing
`
`capabilities and connecting it directly to the input/output devices of the telemetry
`
`system, the alleged invention eliminated the need for a separate telemetry
`
`computer. Id. According to the ‘623 Patent, prior art systems purportedly failed to
`
`appreciate the power and ability of microprocessor/ microcontrollers at the time to
`
`handle the demands of a radio modem as well as interfacing with input/output
`
`devices. Id. at 1:54-2:18. As shown below, however, this concept was plainly
`
`obvious at the time of the alleged invention.
`
`SUMMARY OF THE PROSECUTION HISTORY
`
`B.
`Independent claims 1, 2, 3 and 4 were specifically allowed because of an
`
`additional element the Applicant added to each claim. In each case, the Examiner
`
`did not have prior art that specifically disclosed the additional element. As shown
`
`in later sections of this petition, each of those elements are disclosed in prior art
`
`that were not before the Examiner.
`
`The ‘623 Patent was repeatedly rejected over prior art telemetry systems,
`
`8
`
`

`

`
`
`and only allowed to issue after the Applicant added limitations purportedly not
`
`found in the prior art. The ‘623 Patent was filed on July 21, 1997. When it filed
`
`its application, the Applicant initially attempted to broadly claim a radio modem
`
`that could receive and transmit information, interface with an input/output device,
`
`and had a microprocessor. CSC 1002, June 21, 1997 ‘623 Application at pp. 31-
`
`32. A first Office Action rejected all four pending claims as anticipated by Ehlers.
`
`CSC 1003, January 6, 1999 Office Action.
`
`Thus, to overcome the rejections, the Applicant added various additional
`
`limitations, fourteen dependent claims, and one new independent claim (claim 19).
`
`Id. at April 14, 1999 Office Action Response pp. 1-7. With respect to the new
`
`claims, the Applicant introduced dependent claim 15, which included the
`
`limitation, “wherein the decision state machines are password protected so that a
`
`decision state machine can only be reconfigured by an authorized user of the
`
`telemetry system.” At the same time, Applicant introduced dependent claim 16,
`
`which included the limitation, “further comprising a link byte connecting each
`
`decision state machine to at least one other machine so that each machine can
`
`effect the operation of at least one other machine.” Id.
`
`Except for claim 19 (which later became claim 3), the Examiner issued a
`
`Final Rejection of all pending claims, finding that Ehlers and Sainton anticipated
`
`claims 3-4 and claims 1, 10, 17 and 18, respectively. The Examiner further found
`
`9
`
`

`

`
`
`that Sainton in view of Ehlers rendered obvious claims 2, 5-9, 11-14. Id. at June
`
`23, 1999 Final Office Action pp. 2-10. The Examiner stated that he would allow
`
`claims 15 and 16 if they were written in independent form since they depended on
`
`claims 1, 5, 11, and 14, which the Examiner had rejected. Id. Specifically the
`
`Examiner stated that claim 15 would be allowable because a “search of prior art
`
`does not disclose a ‘decision state machine are password protected so that a
`
`decision state machine can only be reconfigured by an authorized user of the
`
`telemetry system’.” Id. With respect to claim 19, the Examiner pointed to the
`
`language that rendered the claim allowable, namely “the radio modem operate[s] in
`
`one of two modes, a first mode that configures the radio modem to operate as a
`
`general-purpose radio device and a second mode that configures the radio modem
`
`to operate as a special-purpose telemetry computer configured to directly interface
`
`with a plurality of input/output devices” because, according to the Examiner, the
`
`prior art did not disclose this element. Id.
`
`In response to the Examiner’s Final Rejection, the Applicant further
`
`amended independent claim 2 to add an additional element and rewrote dependent
`
`claims 15 and 16 in independent form. Id. at September 8, 1999 Final Office
`
`Action Response pp. 1-7. Once again, the prior art that disclosed this additional
`
`element added to claim 2 was not before the Examiner.
`
`The Examiner filed an Advisory Action, allowing claims 2, 15, 16, and 19
`
`10
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`

`

`
`
`and rejecting all other claims. Id. at September 22, 1999 Advisory Action. After
`
`correcting an error, claims 15, 16, 19, and 20 (claim 2 renumbered) were allowed
`
`as claims 1, 2, 3, and 4 respectively. Accordingly, the ‘623 Patent was only
`
`allowed to issue based on the premise that the additional limitations were not in the
`
`prior art. As shown below, this assumption is not correct, and the ‘623 Patent
`
`should not have issued.
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘623 PATENT IS UNPATENTABLE
`
`The ‘623 Patent issued with a set of overly broad claims relating to basic
`
`structures of telemetry devices. Indeed, despite the Applicant’s attempts to claim
`
`over the prior art, the Examiner correctly rejected as prior art the reprogrammable
`
`transceiver aspect of the alleged invention. As detailed below, all of the limitations
`
`were well known in the prior art. The ‘623 Patent merely recites the combination
`
`of “prior art elements according to known methods to yield predictable results”
`
`and/or the “[u]se of known technique[s] to improve similar devices (methods, or
`
`products) in the same way.” MPEP § 2143 (A, C).
`
`A. THE USE OF A REPROGRAMMABLE RADIO TELEMETRY
`SYSTEM WAS WELL KNOWN IN THE ART
`
`As the Examiner noted, in the January 6, 1999 Office Action, the June 23,
`
`1999 Final Office Action, and the September 22, 1999 Advisory Action
`
`(collectively referred herein as the “Office Actions”), the prior art teaches various
`
`11
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`

`
`
`elements of the independent claims either alone or in combination.
`
`RF TRANSCEIVER ELEMENT
`
`1.
`The claimed RF transceiver element was well known in the art. Claims 1-4
`
`each recite an element relating to a radio frequency transceiver (collectively
`
`referred herein as the “RF Transceiver Element”). The Examiner found that both
`
`Ehlers and Sainton taught the RF Transceiver Element. See Office Actions citing
`
`Ehlers at 4:15-4:19; 24:61-24:67, Figs. 2 and 4 and Sainton at 5:20-5:38; 5:63-
`
`6:22; see also CSC 1002 at June 23, 1999 Final Office Action Response pp. 2-3;
`
`September 22, 1999 Advisory Action (“Claims 3 and 4 remained rejected as stated
`
`in last office action.”); Argyroudis at 5:14-6:34; 6:48-6:63; 7:28-7:60; 11:8-11:62;
`
`Fig. 2; Simionescu at Abstract, 3:25-3:49; 4:24-4:38; 7:17-7:64 8:45-8:59; 11:17-
`
`11:58; Figs. 3, 5 and 7; Phinney Decl., ¶¶ 38-41, 56, 73, 124, 131.
`
`SERIAL/INTERFACE ELEMENT
`
`2.
`The claimed serial interface element was well known in the art. Claims 1-4
`
`each recite an element relating to an interface between the radio modem and
`
`multiple input/output devices generating telemetry data (collectively referred
`
`herein as the “Serial/Interface Element”). In the Office Actions, the Examiner
`
`found that Ehlers and Sainton (alone or in view of Ehlers) taught the
`
`Serial/Interface Element. See Office Actions citing Ehlers at 4:11-4:14; 4:50-4:53;
`
`9:1-9:39; 24:54-24:67 and Sainton at 3:9-3:25; 3:42-3:52; 5:20-5:38; 7:39-8:45,
`
`12
`
`

`

`
`
`11:16-11:53; see also CSC 1002 at June 23, 1999 Final Office Action Response
`
`pp. 2-3; September 22, 1999 Advisory Action (“Claims 3 and 4 remained rejected
`
`as stated in last office action.”); Argyroudis at 5:14-6:34; 6:48-6:63; 7:28-7:60;
`
`11:8-11:62; Fig. 2; Simionescu at Abstract, 3:25-3:49; 4:24-4:38; 7:17-7:64 8:45-
`
`8:59; 11:17-11:58; Figs. 3, 5 and 7; Phinney Decl., ¶¶ 42, 57, 74, 125, 133.
`
`3.
`
`PROGRAMMED COMPUTER/MICROPROCESSOR
`ELEMENT
`
`The claimed programmed computer/microprocessor element was well
`
`known in the art. Claims 1-4 each recite an element relating to a programmable
`
`computer (collectively referred herein as the “Programmed Computer/
`
`Microprocessor Element”). In the Office Actions, the Examiner found that both
`
`Ehlers and Sainton taught the Programmed Computer/Microprocessor Element.
`
`See Office Actions citing Ehlers at 4:55-65; 8:15-8:18; 9:1-9:39; 24:54-24:67; Fig.
`
`1 and Sainton at 5:20-5:38; see also CSC 1002 at June 23, 1999 Final Office
`
`Action Response pp. 2-3; September 22, 1999 Advisory Action (“Claims 3 and 4
`
`remained rejected as stated in last office action.”); Argyroudis at 5:14-6:34; 6:48-
`
`6:63; 7:28-7:60; 11:8-11:62; Fig. 2; Simionescu at Abstract, 3:25-3:49; 4:24-4:38;
`
`7:17-7:64 8:45-8:59; 11:17-11:58; Figs. 3, 5 and 7; Phinney Decl., ¶¶ 43, 58, 75,
`
`126, 132.
`
`PROGRAMMABLE MEMORY ELEMENT
`
`4.
`The claimed programmable memory element was well known in the art.
`
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`Claims 1, 2 and 4 each recite an element relating to a programmable memory
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`(collectively referred herein as the “Programmable Memory Element”). In the
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`Office Actions, the Examiner found that Ehlers and Sainton (alone or in view of
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`Ehlers) taught the Programmable Memory Element. See Office Actions citing
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`Ehlers at 5:3-5:7; 5:22-5:26; 8:15-8:18; 9:6-9:18; 10:13-10:31 and Sainton at 3:15-
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`3:25; 3:42-3:60; 6:32-6:44; 11:17-11:44, 11:55-11:62; see also CSC 1002 at June
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`23, 1999 Final Office Action Response pp. 2-3, 6-9; Argyroudis at 5:14-6:34; 6:48-
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`6:63; 7:28-7:60; 11:8-11:62; Fig. 2; Simionescu at Abstract, 3:25-3:49; 4:24-4:38;
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`7:17-7:64 8:45-8:59; 11:17-11:58; Figs. 3, 5 and 7; Phinney Decl., ¶¶ 44, 59, 76,
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`126, 134.
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`B.
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`THE USE OF PASSWORDS TO REPROGRAM A
`MICROCONTROLLER WAS WELL KNOWN IN THE PRIOR
`ART
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`The use of passwords to secure a system was well known in the art. Claim 1
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`recites a limitation requiring a password to reconfigure state machines in a
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`telemetry system. This limitation is found in prior art that was not before the
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`Examiner.
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`In view of the prior art at the time of the alleged invention, a person of
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`ordinary skill in the art would have been motivated to secure the telemetry system
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`by requiring a password to reprogram the remote telemetry computer. Phinney
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`Decl., ¶¶ 45-48. Security was a concern of those skilled in the art, and the use of a
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`password to secure a microcontroller system was well known in the art and yielded
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`a predictable result of a secured system. Id.
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`For example, Grider teaches a remotely reprogrammable microcontroller.
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`Grider at 1:20-3:50. Grider discloses the use of a password to reprogram the main
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`microcontroller with the appropriate application program. Id. at 8:53-8:65.
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`(“Once the password has been correctly entered… [the a]pplication software can
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`then be loaded into the target microcontroller 110.”). The password is stored in the
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`microcontroller’s nonvolatile SRAM memory. Id. at 8:54-8:56. If the password is
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`incorrect, the microcontroller will not be reprogrammed. Id. at 8:66-8:68.
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`Likewise, Simionescu teaches a remotely reprogrammable microprocessor
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`within a remotely located data acquisition device. Simionescu at 7:17-7:64. The
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`programming of the data microprocessor can be updated either locally through the
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`interface connector or remotely through the RF transceiver. Id. at 7:62-7:64.
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`Separate RF networks in an overlapping area may be managed by separate
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`authorities by using pincodes to encrypt transmission fields. Id. at 8:60-9:26; Fig.
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`4. Pincodes are kept secret by the controlling authority and not transmitted within
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`the network, to prevent unauthorized access. Id. at 9:2-9:4. Given this
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`combination of remote reprogramming and secure transmission, it would be
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`obvious to a person of ordinary skill to secure a telemetry system by requiring a
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`password to reprogram the remote telemetry computer. Phinney Decl., ¶¶ 45-48.
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`C. THE USE OF MULTIPLE STATE MACHINES WAS WELL
`KNOWN IN THE PRIOR ART
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`The use of state machines in microprocessor systems and configurable state
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`machines to communicate with multiple input/output devices was well known in
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`the prior art. Claims 2 and 4 recite well known applications of multiple state
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`machines. These limitations are found in prior art that was not before the
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`Examiner.
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`Generally, a state machine is a device that stores the status of something at a
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`given time and can operate on input to change the status and/or cause an action or
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`output to take place for any given change. Id. at ¶¶ 25-27. State machines are used
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`in a wide variety of simple systems such as, for example, vending machines,
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`elevators, traffic lights, turnstiles and combination locks. Id. at ¶ 27.
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`The use of a state machine in microprocessor systems was well known at the
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`time of the alleged invention. Id. at ¶¶ 30-32, 93. For example, programmable
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`logic device (PLDs) commonly implemented the control and decision-making
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`functions in digital systems—including computers—using a state-machine
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`architecture. Likewise, programmable logic controllers (PLCs), which are used for
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`digital automation of machinery in factories, are formally equivalent to
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`programmable state machines. Id. at ¶¶ 49-51. It was a well-known design choice
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`at the time of the alleged invention to use state machines in I/O and
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`communication applications because state machines were known to increase the
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`microprocessor availability by offloading repetitive logical tasks. Id. A person of
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`ordinary skill in the art would have been motivated to use state machines where the
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`application required repetitive logical tasks and multiple configurations, such as a
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`telemetry system, because it would have offloaded tasks from the processor and
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`would have allowed the processor to perform more important tasks. Id.
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`For example, Funabashi discloses multiple finite state machines used to
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`improve the speed of a processor. Funabashi at Abstract, p. 3 (“Namely, the
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`integrated circuit of the invention employs a microprogram controller as a high-
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`level processor and a finite state machine … as low-level processors to increase
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`operation speed.”). In addition, Reagle discloses improved operation of the
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`microprocessor by offloading processing to the state machines and thereby
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`improving host efficiency. Reagle at 3:26-3:68 (“After … each of the remaining
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`components of the interface 100 is controlled by the state machine 108. At that
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`time, the state machine 108 is autonomous from the host 106. Thus, the efficiency
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`of the host 106 is improved since microprocessor time is economized.”).
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`Often, it is desirable to partition complex finite state machines into simpler,
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`smaller, communicating machines. Phinney Decl., ¶¶ 30-32, 50-51, 98, 107. For
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`example, Funabashi discloses at least one state machine connected to another state
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`machine to affect the operation of the state machine. Funabashi at pp. 9-10
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`(“Whereupon, FSM2 sets FSM2BUSY but does not start execution until it receives
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`a start signal 207 from FSM1.”), Figs. 2 and 3. By connecting smaller state
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`machines, complex logical operations can be realized in an economized design, or
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`synchronized to multiple clocks. Id.
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`Because of the use of programmable logic in automation and communication
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`tasks, the use of configurable state machines to communicate with multiple
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`input/output devices was well known in the art at the time of the alleged invention.
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`Phinney Decl., ¶¶ 26-32, 51. It was a well-known design choice that was known to
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`create greater autonomy from a host controller. Id.
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`For example, Reagle discloses a configurable state machine that can be used
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`to interface with a number of devices over the same communication link. Reagle
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`at Abstract, 3:26-3:68; 5:7-5:20; Figs. 1 and 2. Reagle teaches that the use of
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`configurable state machines to interface with input/output devices provides greater
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`autonomy from a host controller. Id. at 3:42-3:49 (“When the software defining
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`the characteristics of the interface 100 is executed on the host 106, the state table
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`data is generated and downloaded to the interface 100 …. It is noted that the
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`operation of the interface 100 is completely autonomous of the host 106 after the
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`state table and plurality of mode signals have been downloaded.”).
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`During the prosecution of the ‘623 Patent, the Examiner found that the
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`claimed use of state machines was known in the prior art, and was not a basis for
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`patentability. The Applicant added claims that recited the limitation a “telemetry
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`program includes a plurality of decision state machines that cycle through a series
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`of logical states” and the limitation that “wherein at least one of the decision state
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`machines can be remotely reconfigured via the radio frequency data network.”
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`CSC 1002 at April 14, 1999 Office Action Response p. 5. The Examiner rejected
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`those claim limitations as obvious over Sainton in view of Ehlers. Id. at June 23,
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`1999 Final Office Action pp. 5-10.
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`D. THE USE OF DUAL-MODE MODEM WAS WELL KNOWN IN
`THE PRIOR ART
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`The use of a dual-mode modem was well known in the prior art. Claim 3
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`recites the well-known use of dual-mode modems operating in one of two modes; a
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`general purpose mode and a special purp