`Trials@uspto.gov
`571-272-7822
`
`Date Entered: July 3, 2014
`
`
`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
`Patent 6,034,623
`____________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`I. BACKGROUND
`
`
`
`Cypress Semiconductor Corp. (“Petitioner”) requests inter partes
`
`review of claims 1-4 of U.S. Patent No. 6,034,623 (“the ’623 patent”) (Ex.
`
`1001) under 35 U.S.C. §§ 311-319. Paper 5 (Petition, or “Pet.”).
`
`Blackberry Ltd. (“Patent Owner”) did not file a preliminary response
`
`
`
`
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`IPR2014-00400
`Patent 6,034,623
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`provided for by 37 C.F.R. § 42.107. We have jurisdiction under 35 U.S.C.
`
`
`
`§ 314.
`
`
`
`For the reasons that follow, we institute an inter partes review of
`
`claims 3 and 4 of the ’623 patent. We do not institute review of challenged
`
`claims 1 and 2.
`
`
`
`The Challenged Patent
`
`The ’623 patent relates to the field of radio telemetry. Ex. 1001, col.
`
`1, ll. 1-2.
`
`Figure 4 of the ’623 patent is reproduced below.
`
`Figure 4 is said to be a block diagram of the radio telemetry system
`
`that shows the basic elements and remapping of the serial port. Id. at col. 3,
`
`ll. 49-52. Radio modem 60 includes antenna 92, radio interface 88,
`
`
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`2
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`IPR2014-00400
`Patent 6,034,623
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`microprocessor 80, serial interface 90, RAM 82, and Flash EEPROM 86.
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`
`
`The radio modem receives data in packets from central computer 74 via
`
`antenna 72 and sends packet data to the central computer via antenna 92. Id.
`
`at col. 5, l. 63 - col. 6, l. 5.
`
`Programming stored in Flash EEPROM 86 enables the radio modem
`
`to operate as a standard radio modem with serial port 90 configured as a RS-
`
`232 interface. The programming also enables the radio modem to operate in
`
`a telemetry mode, interfacing with I/O devices 94, 96, and 98, by remapping
`
`the radio modem serial port such that there are four general purpose TTL
`
`logic level ports. Id. at col. 6, ll. 19-64.
`
`
`
`Illustrative Claims
`
`3. A dual-mode radio modem capable of operating in a
`first mode as a general-purpose radio device in conjunction
`with a host processing system and in a second mode as a
`special-purpose stand-alone radio telemetry computer,
`comprising:
`
`an RF transceiver for sending and receiving data;
`
` a
`
` serial port; and
`
` a
`
` microprocessor coupled to the RF transceiver and to the
`serial port, wherein the microprocessor includes a
`reprogrammable memory for storing a radio configuration and
`control program that causes the radio modem to operate in one
`of two modes, a first mode that configures the radio modem to
`operate as a general-purpose radio device coupled to the host
`processing system via the serial port, and a second mode that
`configures the radio modem to operate as a special-purpose
`telemetry computer by configuring the serial port to directly
`interface with a plurality of input/output devices.
`
`3
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`IPR2014-00400
`Patent 6,034,623
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`4. A radio modem, comprising:
`
` a
`
` radio frequency interface circuit including a modulator
`and a demodulator;
`
` a
`
` microprocessor coupled to the radio frequency interface
`circuit;
`
` a
`
` serial interface coupled to the microprocessor, wherein
`the serial interface is directly connected to a plurality of
`input/output devices that generate telemetry data and respond to
`telemetry commands; and
`
` a
`
` programmable memory coupled to the microprocessor,
`the re-programmable memory encoded with a telemetry
`management program for directing the operations of the
`microprocessor in order to control and communicates with the
`input/output devices over the serial interface, and to manage
`communication with the radio frequency interface circuit,
`
`wherein the telemetry management program includes a
`plurality of configurable state machines that control the
`reception of telemetry data from the input/output devices and
`the transmission of telemetry commands to the input/output
`devices.
`
`
`
`Related Proceeding
`
`According to the parties, the ’623 patent is involved in the following
`
`lawsuit: BlackBerry Limited v. Cypress Semiconductor Corp., No. 3:13-cv-
`
`04431 (N.D. Tex.). Pet 1; Paper 7 at 2.
`
`
`
`Prior Art
`
`
`Ehlers et al.
`(hereinafter “Ehlers”)
`
`US 5,572,438 Nov. 5, 1996
`
`(Ex. 1004)
`
`4
`
`
`
`
`
`
`US 5,249,218
`
`US 5,212,774
`
`
`
`Sept. 28, 1993
`
`(Ex. 1005)
`
`May 18, 1993
`
`(Ex. 1006)
`
`Oct. 5, 1999
`
`(Ex. 1007)
`
`May 5, 1998
`
`(Ex. 1008)
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`IPR2014-00400
`Patent 6,034,623
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`Sainton et al.
`(hereinafter “Sainton”)
`
`
`Grider et al.
`(hereinafter “Grider”)
`
`US 5,963,650
`
`Simionescu et al.
`(hereinafter “Simionescu”)
`
`US 5,748,104
`Argyroudis et al.
`(hereinafter “Argyroudis”)
`
`Funabashi
`
`US 5,687,222
`McLaughlin et al.
`(hereinafter “McLaughlin”)
`
`
`Reagle et al.
`(hereinafter “Reagle”)
`
`
`
`
`
`EP 0 185 098 A1 June 25, 1986
`
`(Ex. 1009)
`
`Nov. 11, 1997
`
`(Ex. 1010)
`
`Jan. 31, 1995
`
`(Ex. 1011)
`
`US 5,386,518
`
`Asserted Grounds of Unpatentability
`
`Petitioner asserts the following twelve grounds of unpatentability (Pet.
`
`
`
`
`
`
`
`Reference(s)
`
`
`
`Basis (35 U.S.C.)
`
`Claim
`
`
`
`3-4):
`
`Sainton, Ehlers, and
`Grider
`Sainton, Ehlers, and
`Simionescu
`Argyroudis, Reagle, and
`Grider
`Sainton, Ehlers, and
`Funabashi
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`5
`
`
`1
`
`1
`
`1
`
`2
`
`
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`IPR2014-00400
`Patent 6,034,623
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`Reference(s)
`
`
`
`Basis (35 U.S.C.)
`
`Claim
`
`Argyroudis, Reagle, and
`Funabashi
`Sainton, Ehlers, and
`McLaughlin
`Sainton, Ehlers, and
`Simionescu
`Sainton, Ehlers, and
`Grider
`Simionescu
`
`Simionescu
`
`Sainton, Ehlers, and
`Reagle
`Argyroudis and Reagle
`
`
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 102(e)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`II. ANALYSIS
`
`Claim Interpretation
`
`2
`
`3
`
`3
`
`3
`
`3
`
`3
`
`4
`
`4
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`In an inter partes review, the Board construes claim terms in an
`
`unexpired patent using their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`
`2012). The claim language should be read in light of the specification as it
`
`would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
`
`Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Office must
`
`apply the broadest reasonable meaning to the claim language, taking into
`
`account any definitions presented in the specification. Id. (citing In re Bass,
`
`314 F.3d 575, 577 (Fed. Cir. 2002)). There is a “heavy presumption” that a
`
`claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
`
`6
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`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). The “ordinary and
`
`
`
`customary meaning” is that which the term would have to a person of
`
`ordinary skill in the art in question. In re Translogic Tech., Inc., 504 F.3d
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`1249, 1257 (Fed. Cir. 2007).
`
`
`
`Means Plus Function
`
`Petitioner submits there are three “means plus function” limitations
`
`that are to be construed in accordance with 35 U.S.C. § 112, sixth paragraph.
`
`Pet. 5-7. For purposes of this decision, we need not determine whether the
`
`limitations are to be construed under § 112, sixth paragraph, nor whether, if
`
`they are to be so construed, Petitioner properly has identified the
`
`corresponding structure, material, or acts described in the specification and
`
`equivalents thereof. The “means” limitations appear only in claim 1 or
`
`claim 2. As discussed infra, Petitioner has failed to demonstrate a
`
`reasonable likelihood of prevailing on the grounds asserted against those
`
`claims for reasons unrelated to interpretation of the alleged § 112, sixth
`
`paragraph limitations.
`
`
`
`Link Byte
`
`Claim 2 of the ’623 patent recites a “link byte.” According to
`
`Petitioner, “[t]he 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.” Pet. 5. Petitioner also refers to
`
`its declarant’s (Dr. Joshua Phinney’s) testimony. Id. Dr. Phinney refers, in
`
`turn, to the ’623 patent specification. Ex. 1003 ¶ 30. Petitioner submits that,
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`7
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`accordingly, “link byte” should be construed as “a signal between at least
`
`
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`two state machines to pass information to each other.” Pet. 5.
`
`Petitioner’s construction, however, disregards the ordinary and
`
`customary meaning of the word “byte.” A “byte” is a collection of adjacent
`
`binary digits that are operated on as a unit. See WILEY DICTIONARY OF
`
`COMMUNICATIONS TECHNOLOGY: TERMS, DEFINITIONS, AND ABBREVIATIONS
`
`(1998) (Ex. 3001); ACADEMIC PRESS DICTIONARY OF SCIENCE AND
`
`TECHNOLOGY (1996) (Ex. 3002). The term became ubiquitous and entered
`
`the general lexicon. See AMERICAN HERITAGE® DICTIONARY OF THE
`
`ENGLISH LANGUAGE (2nd College Ed. 1984) (Ex. 3003, 2) (“A sequence of
`
`adjacent binary digits operated on as a unit by a computer.”).
`
`The use of the term “byte” in the ’623 patent is consistent with the
`
`ordinary and customary meaning of the word. Contrary to Petitioner’s
`
`assertion, we disagree that the specification “defines” the term as something
`
`that “allows” the state machines to pass signals to each other. Although the
`
`link byte does “allow” the state machines to pass signals to each other, the
`
`patent describes the link byte as eight adjacent binary digits, operated on as a
`
`unit. Ex. 1001, col. 8, ll. 35-54. The patent further provides:
`
`Each [state] machine is capable of modifying the special “link”
`byte 218 [Fig. 5], which in turn becomes 8 of the 16 bits of
`input used by subsequent machines. In this manner the state
`machines can communicate with each other, the state of one
`machine affecting the state of another machine.
`
`Id. at col. 9, ll. 33-38.
`
`Accordingly, consistent with the ordinary and customary meaning of
`
`“byte,” and consistent with the ’623 patent specification, we interpret a “link
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`8
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`byte” as a collection of adjacent binary digits that are operated on as a unit to
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`provide a link.
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`
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`Proposed Grounds of Unpatentability
`
`Claim 1 – § 103(a) over Sainton, Ehlers, and Grider or Simionescu
`
`Petitioner challenges claim 1 as unpatentable under § 103(a) over
`
`Sainton, Ehlers, and Grider or Simionescu. Petitioner notes that during
`
`prosecution of the ’623 patent the Examiner found that Sainton and Ehlers
`
`disclosed all limitations of present claim 1 except for “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.” Pet.
`
`21. The Examiner did not find disclosure of this claimed feature in the prior
`
`art. Ex. 1002, 92. Petitioner offers Grider and Simionescu, as alternative
`
`additions to the basic combination of Sainton and Ehlers, for disclosure of
`
`this claimed feature.
`
`Dr. Phinney testifies that Grider discloses the use of a password to
`
`secure a main microcontroller. Ex. 1003 ¶ 46. Further, Dr. Phinney opines
`
`that Simionescu renders obvious making a telemetry system secure by
`
`requiring a password to reprogram a remote telemetry computer. Id. ¶ 47.
`
`Claim 1, however, is more specific than a requirement for a password
`
`to secure a telemetry system or its microcontroller. The claim recites that
`
`“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.” Consistent with that claim scope, the ’623 patent
`
`discloses that each command packet transmitted to the radio modem, which
`
`includes packets that contain configuration data for the state machines,
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`includes a 32-bit password number that must be set correctly for acceptance
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`of the packet. Ex. 1001, col. 10, ll. 6-33.
`
`Petitioner’s declarant, implicitly acknowledging the deficiency in the
`
`teachings of Grider and Simionescu in view of the requirements of claim 1,
`
`refers to the ’623 patent’s disclosure of finite state machines and opines that
`
`reconfiguring memory remotely, whether for finite state machine
`
`configuration or for updating firmware and software more generally, “is
`
`fundamentally the same in either case.” Ex. 1003 ¶ 48. Dr. Phinney
`
`concludes that “the use of passwords in such reprogrammable state machines
`
`would have been an obvious measure to implement security in a remotely
`
`managed telemetry system.” Id.
`
`Unfounded testimony is entitled to little or no weight. 37 C.F.R.
`
`§ 42.65(a). Petitioner has provided an insufficient factual basis for the
`
`assertion that it would have been obvious to password-protect the decision
`
`state machines as required by claim 1. We, thus, are not persuaded there is a
`
`reasonable likelihood that Petitioner would prevail with respect to its
`
`challenge of claim 1 over Sainton, Ehlers, and Grider or Simionescu.
`
`
`
`Claim 1 – § 103(a) over Argyroudis, Reagle, and Grider
`
`The proposed ground challenging claim 1 as obvious over Argyroudis,
`
`Reagle, and Grider suffers the same deficiency as the other grounds
`
`proposed against claim 1, addressed above. Petitioner has not provided the
`
`requisite factual basis for the assertion that it would have been obvious to
`
`password-protect the state machines. See Ex. 1003 (Phinney Decl.) ¶¶ 81-
`
`87. Accordingly, we are not persuaded there is a reasonable likelihood that
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`Petitioner would prevail with respect to its challenge of claim 1 over
`
`
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`Argyroudis, Reagle, and Grider.
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`Prior Art – Funabashi
`
`
`
`Funabashi describes an integrated circuit controller that includes a
`
`plurality of finite state machines. Ex. 1009, Abstract. Figure 2 of Funabashi
`
`is reproduced below.
`
`Figure 2 illustrates the general structure of the integrated circuit
`
`controller of Funabashi. Ex. 1009, 7, ll. 17-19. Controller 201 includes state
`
`machines 208, 209, and 210. Id. at 8, ll. 11-16. The data path employs
`
`known bus structure 205. The control path includes three kinds of signals: a
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`start signal to be sent from microprogram controller 211 through signal line
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`206, a busy signal to be sent to the microprogram controller from a state
`
`machine on signal line 206, and start signal 207 from one state machine to
`
`another state machine. Id. at 9, l. 15 - 10, l. 7.
`
`
`
`Claim 2 – § 103(a) over Sainton, Ehlers, and Funabashi
`
`Petitioner challenges claim 2 as unpatentable under § 103(a) over
`
`Sainton, Ehlers, and Funabashi. Dr. Phinney testifies that Funabashi
`
`discloses the claim 2 requirement of “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.” Ex. 1003 ¶ 96. According to
`
`Petitioner’s declarant, the reference discloses “multiple finite state machines
`
`that are connected via a control bus that can effect the operation of at least
`
`one other state machine,” generally referring to Funabashi at pages 8
`
`through 10 and Figures 2 and 3. Id. ¶ 95. Dr. Phinney concludes that “[i]t
`
`would have been obvious and a matter [of] design choice by a person [of]
`
`ordinary skill to use a control bus for communicating signals between the
`
`finite state machines.” Id.
`
`Claim 2, however, does not recite using a “control bus for
`
`communicating signals” between finite state machines. The relied-upon
`
`disclosure of Funabashi teaches start and busy signals between the
`
`microcontroller and the state machines and a start signal from one state
`
`machine to another state machine. Ex. 1009, 9, l. 15 - 10, l. 7. Petitioner,
`
`however, has not shown disclosure or suggestion in Funabashi of a “link
`
`byte connecting each decision state machine to at least one other machine”
`
`as claimed.
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`The Petition must specify where each element of a challenged claim is
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`found in the prior art patents or printed publications. 37 C.F.R.
`
`§ 42.104(b)(4). Petitioner has failed to do so. Accordingly, we are not
`
`persuaded there is a reasonable likelihood that Petitioner would prevail with
`
`respect to its challenge of claim 2 over Sainton, Ehlers, and Funabashi.
`
`
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`Claim 2 – § 103(a) over Argyroudis, Reagle, and Funabashi
`
`Petitioner’s challenge of claim 2 over the combination of Argyroudis,
`
`Reagle, and Funabashi relies on the same disclosure from Funabashi for the
`
`“link byte” of claim 2 as in the proposed combination with Sainton and
`
`Ehlers, discussed above. Ex. 1003 ¶ 105. Accordingly, we also are not
`
`persuaded there is a reasonable likelihood of prevailing with respect to the
`
`ground of claim 2 as obvious over Argyroudis, Reagle, and Funabashi.
`
`
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`Claim 3 – § 103(a) over Sainton, Ehlers, and McLaughlin or Grider
`
`Petitioner challenges claim 3 as unpatentable under § 103(a) over
`
`Sainton, Ehlers, and McLaughlin or Grider. Claim 3 is drawn to a dual-
`
`mode radio modem capable of operating in a general-purpose radio device
`
`mode or a special-purpose stand-alone radio telemetry computer mode. We
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`agree with Petitioner to the extent that, as a general matter, combining dual,
`
`known functions in a single device would result in an obvious device. “The
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`combination of familiar elements according to known methods is likely to be
`
`obvious when it does no more than yield predictable results.” KSR Int’l Co.
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`v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
`
`Claim 3, however, recites a first mode that enables operation as a
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`general-purpose radio device coupled to the host processing system “via the
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`serial port” and a second mode that enables operation as a special-purpose
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`
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`telemetry computer “by configuring the serial port to directly interface with
`
`a plurality of input/output devices.” We are not persuaded that the Petition
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`(e.g., Pet. 41-47 (claim chart)) and Petitioner’s declarant (e.g., Ex. 1003 ¶¶
`
`109-122) address sufficiently where the requirement of the same serial port
`
`being configured or reconfigured for the two modes is found in the applied
`
`prior art.1 Because Petitioner has not demonstrated where each element of
`
`claim 3 is found in the prior art (37 C.F.R. § 42.104(b)(4)), we are not
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`persuaded there is a reasonable likelihood Petitioner would prevail in its
`
`challenge of claim 3 over the combination of Sainton, Ehlers, and
`
`McLaughlin or Grider.
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`
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`1 Petitioner does submit that Simionescu discloses or suggests reconfiguring
`the same serial port consistent with the requirements of claim 3. We discuss
`Simionescu in the context of separate grounds, infra.
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`Prior Art – Simionescu
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`
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`Simionescu describes a radio frequency (RF) telemetry system. Ex.
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`1007, Title. Figure 7 of Simionescu is reproduced below.
`
`
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`Figure 7 is said to be a block diagram of a data acquisition device. Id.
`
`at col. 4, ll. 5-6. Data acquisition (DA) device 102 includes RF transceiver
`
`210, microprocessor 212, and I/O interface 204. The I/O interface is a
`
`standard connector that can be configured for standard protocols such as
`
`analog, digital, asynchronous serial I/O, or (synchronous) SPI-BUS, and
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`may be connected to RS-232, 485, or optical I/O device interfaces. I/O
`
`interface connector 204 can thus receive data via I/O interface connector 702
`
`from I/O device 206, which may be, for example, a passive sensor or
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`computer-controllable equipment. Id. at col. 11, ll. 16-43. Software
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`
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`applications can be pre-loaded to I/O device 206. Microprocessor 212 has
`
`programmable application storage and EEPROM data storage, each of which
`
`is user-accessible. Id. Data collection system (DCS) 100, preferably a
`
`server, controls data collection for monitoring applications. Id. at col. 5, l.
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`58 - col. 6, l. 10.
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`
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`Claim 3 – § 102(e) over Simionescu
`
`Petitioner lists claim 3 as challenged for anticipation by Simionescu
`
`(Pet. 4) and submits that Simionescu anticipates the claim (id. at 47-50).
`
`Petitioner’s declarant, however, does not allege anticipation over
`
`Simionescu but submits that the claimed subject matter would have been
`
`obvious over the reference. Ex. 1003 ¶¶ 123-129. Based on the information
`
`presented in the petition, which includes this discrepancy between Petitioner
`
`and its proffered expert, we conclude Petitioner has not shown a reasonable
`
`likelihood that it would prevail with respect to its challenge of claim 3 as
`
`anticipated by Simionescu.
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`
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`Claim 3 – § 103(a) over Simionescu
`
`Petitioner challenges claim 3 under § 103(a) over Simionescu.
`
`Simionescu details the asynchronous serial communication function
`
`associated with DA 102 and microprocessor 212 (Fig. 7). Supporting
`
`components include an Asynchronous Serial Communications Interface
`
`(SCI) 808 (Fig. 8). Ex. 1007, col. 11, l. 59 - col. 12, l. 4. Pin voltages may
`
`be TTL (digital) logic levels but can be translated to the appropriate levels
`
`for serial communications (e.g., RS-232). SCI 808 also can produce queued
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`idle or break characters, “therefore allowing modem applications.” Id. at
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`
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`col. 12, ll. 5-19. “Asynchronous serial communication functions of this type
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`are well known in the art.” Id. at ll. 19-21.
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`Dr. Phinney testifies that, in view of the same pins that are used for
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`serial communications being repurposed for general purpose digital I/O
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`signals (Ex. 1003 ¶ 124), it would have been obvious to configure
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`Simionescu’s device as both a general-purpose radio modem for I/O devices
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`with serial communication and a special-purpose telemetry module for
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`devices such as passive sensors and computer-controllable equipment (id.
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`¶ 126). Dr. Phinney also indicates that Simionescu’s disclosure of
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`configuring SCI 808 so as to allow “modem applications” discloses or
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`suggests that the data acquisition module of Simionescu may be
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`programmed such that connected serial devices can use the module as a
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`wireless modem. Id. ¶ 127.
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`Based on the evidence presented, we conclude the Petition
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`demonstrates a reasonable likelihood that Petitioner would prevail with
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`respect to its challenge of claim 3 as obvious over Simionescu.
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`Claim 4 – § 103(a) over Argyroudis and Reagle
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`Petitioner challenges claim 4 under 35 U.S.C. § 103(a) over
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`Argyroudis and Reagle. Argyroudis describes a wireless remote telemetry
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`system that includes a remote metering unit (Ex. 1008, Fig. 2). Petitioner
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`submits that all limitations of claim 4 are taught by Argyroudis except for
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`the telemetry management program including a plurality of configurable
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`state machines that control the reception of telemetry data from the
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`input/output devices and the transmission of telemetry commands to the
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`devices. Pet. 53-56 (claim chart). We find the mappings in the Petition’s
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`claim chart to be well-founded, except for the chart’s limitation (c) of the
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`claim, which requires a serial interface that is directly connected to a
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`plurality of input/output devices that generate telemetry data and respond to
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`telemetry commands. For this limitation, Petitioner refers to a serial
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`interface for connection to a personal computer, a fax machine, or a user
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`terminal (Pet. 54-55), none of which appear to be described by Argyroudis
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`as input/output devices that generate telemetry data and respond to telemetry
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`commands, as required by the claim language.
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`Dr. Phinney, on the other hand, submits that the “serial interface”
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`limitation is disclosed, or rendered obvious, by Argyroudis’ description of
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`“CEBus interface 224 [Fig. 2] and transceiver (a serial port)” connected to
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`CEBus compliant appliance(s) 136 (Fig. 1), such as a security system and
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`thermostat, which respond to commands and generate telemetry data. Ex.
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`1003 ¶ 142; Ex. 1008, col. 12, ll. 10-54. The declaration does not specify
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`the “transceiver” structure that Argyroudis may describe, expressly or
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`inherently, as a serial port. However, Argyroudis discloses that Consumer
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`Electronic Bus (CEBus) technology supports communication over pre-
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`existing power lines and twisted-pair cabling. Id. at col. 2, ll. 2-17. As
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`shown in Figure 2 of Argyroudis, for example, CEBus interface 224
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`connects to twisted-pair transceiver 234 and power line transceiver 226, to
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`which CEBus compliant devices attach and communicate over an effective
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`single conductor (e.g., power lines 228 and 230, or twisted pair line 232).
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`Id. at col. 12, ll. 2-8. We are persuaded, therefore, that Argyroudis teaches
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`the “serial interface” limitation of claim 4.
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`We are persuaded also that Reagle would have suggested including a
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`plurality of configurable state machines that control the reception and
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`transmission of telemetry commands as required by claim 4. Ex. 1003
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`¶¶ 77, 144. In view of the foregoing, we are persuaded there is a reasonable
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`likelihood that Petitioner would prevail with respect to its challenge of claim
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`4 as obvious over the combination of Argyroudis and Reagle.
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`Other Challenges
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`We have concluded that Petitioner has demonstrated there is a
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`reasonable likelihood that it would prevail in its challenge of claims 3 and 4
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`on the grounds discussed above. We decline, however, to institute inter
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`partes review on the additional grounds that claim 3 is obvious over Sainton,
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`Ehlers, and Simionescu and claim 4 is obvious over Sainton, Ehlers, and
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`Reagle. See 37 C.F.R. § 42.108(a).
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`III. CONCLUSION
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`The Petition demonstrates a reasonable likelihood of prevailing on the
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`obviousness grounds of unpatentability based on: Simionescu as to claim 3;
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`and the combination of Argyroudis and Reagle as to claim 4.
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`The Board has not made a final determination on the patentability of
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`any challenged claim.
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`In consideration of the foregoing, it is
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`IV. ORDER
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`ORDERED that an inter partes review is instituted as to claim 3 of
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`the ’623 patent on the obviousness ground based on Simionescu;
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`FURTHER ORDERED that an inter partes review is instituted as to
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`claim 4 of the ’623 patent on the obviousness ground based on Argyroudis
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`and Reagle;
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`FURTHER ORDERED that the Petition is denied as to all other
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`grounds set forth in the Petition;
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
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`partes review of the ’623 patent is instituted with trial commencing on the
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`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
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`§ 42.4, notice is given of the institution of the trial; and
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`FURTHER ORDERED that the trial is limited to the grounds
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`identified immediately above and no other ground is authorized for the ’623
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`patent claims.
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`IPR2014-00400
`Patent 6,034,623
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`For PETITIONER:
`
`James Hannah
`Aaron Frankel
`Kramer Levin Naftalis & Frankel LLP
`jhannah@kramerlevin.com
`afrankel@kramerlevin.com
`
`For PATENT OWNER:
`
`Robert Mattson
`John Kern
`Christopher Bullard
`OBLON, SPIVAK, McCLELLAND,
`MAIER & NEUSTADT, LLP
`cpdocketmattson@oblon.com
`cpdocketkern@oblon.com
`cpdocketbullard@oblon.com
`
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