throbber
IPR2014-00518
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`IPR2014-00518IPR2014-00518
`U.S. PATENT 8,023,580
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`U.S. PATENT 8,023,580U.S. PATENT 8,023,580
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICEUNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARDBEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
`
`SAMSUNG ELECTRONICS CO. LTD.;
`
`SAMSUNG ELECTRONICS CO. LTD.;SAMSUNG ELECTRONICS CO. LTD.;
`SAMSUNG ELECTRONICS AMERICA, INC.;
`
`SAMSUNG ELECTRONICS AIVIERICA, INC.;SAMSUNG ELECTRONICS AIVIERICA, INC.;
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC; AND
`
`SAMSUNG TELECOIVHVIUNICATIONS AIVIERICA, LLC; ANDSAMSUNG TELECOIVHVIUNICATIONS AIVIERICA, LLC; AND
`SAMSUNG AUSTIN SEMICONDUCTOR, LLC;
`
`SAMSUNG AUSTIN SEMICONDUCTOR, LLC;SAMSUNG AUSTIN SEMICONDUCTOR, LLC;
`PETITIONER
`
`PETITIONERPETITIONER
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`V.
`
`
`
`V.V.
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`REMBRANDT WIRELESS TECHNOLOGIES, LP
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`REMBRANDT WIRELESS TECHNOLOGIES, LPREMBRANDT WIRELESS TECHNOLOGIES, LP
`PATENT OWNER
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`PATENT OWNERPATENT OWNER
`___________________
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`CASE NO. IPR2014-00518CASE NO. IPR2014-00518
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`CASE NO. IPR2014-00518
`PATENT 8,023,580
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`PATENT 8,023,580PATENT 8,023,580
`______________________________________
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`
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`DECLARATION OF DR. PHILIP KOOPMAN, PH.D.
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`DECLARATION OF DR. PHILIP KOOPMAN, PH.D.DECLARATION OF DR. PHILIP KOOPMAN, PH.D.
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`REMBRANDT EXHIBIT 2208REMBRANDT EXHIBIT 2208
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`REMBRANDT EXHIBIT 2208
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`TABLE OF CONTENTS
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`IPR2014-00518
`U.S. PATENT 8,023,580
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`Page
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`INTRODUCTION AND QUALIFICATIONS .............................................. 1
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`RELEVANT LEGAL STANDARDS ............................................................ 5
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`
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`I.
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`II.
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`III. BACKGROUND OF THE PROCEEDING ................................................... 9
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`IV. DEFINITION OF THE PERSON OF SKILL IN THE ART ......................... 9
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`V.
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`THE STATE OF THE PRIOR ART ............................................................ 11
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`VI. THE ’580 PATENT ...................................................................................... 14
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`VII. OPINION ON CLAIM CONSTRUCTION OF THE TERMS
`“MASTER” and “SLAVE” .......................................................................... 15
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`VIII. THE PRIOR ART OF THE INSTITUTED GROUNDS ............................. 20
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`IX. THE PRIOR ART COMBINATION DOes NOT RENDER THE ‘580
`CLAIMS OBVIOUS .................................................................................... 25
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`INTRODUCTION AND QUALIFICATIONS
`1.
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`I have been retained by counsel for Patent Owner, Rembrandt
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`IPR2014-00518
`U.S. PATENT 8,023,580
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`I.
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`Wireless Technologies, LP (“Patentee”) to provide opinions in connection with
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`Inter Partes Review No. IPR2013-00518 of U.S. Patent No. 8,023,580 (Ex.
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`1201, “the ‘580 patent”). I have been asked to render an opinion of whether
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`certain grounds on which a trial was instituted in this proceeding render the
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`claims at issue invalid. Specifically, I have been asked to render an opinion as to
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`whether one of skill in the art would be motivated to combine the alleged
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`Admitted Prior Art (“APA”) with U.S. Patent No. 5,706,428 based on the alleged
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`APA’s disclosure of master/slave communication systems.1
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`2.
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`I am a tenured Associate Professor in the Electrical and Computer
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`Engineering Department at Carnegie Mellon University. I have a B.S. (1982),
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`M.Eng. (1982) and Ph.D. (1989) in Computer Engineering. I have been a
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`professor at Carnegie Mellon since 1996. Prior to that time, I spent several years
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`in the military and in industry working as a computer engineer and an embedded
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`system engineer, including significant experience in the area of embedded
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`networks. I am a named inventor on twenty-six patents, and an author or co-
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`1 The scope of my opinions expressed in this Declaration address the obviousness
`combination only as it relates to master/slave configurations. I understand Patentee relies on the
`opinions in the Declaration of Christopher Jones, submitted herewith, relating to additional
`aspects of the alleged obviousness grounds.
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`author of over 100 non-patent publications in a wide variety of fields within
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`IPR2014-00518
`U.S. PATENT 8,023,580
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`electrical engineering and computer science, including many in the technological
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`area of embedded system networks. I have been working in computer
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`engineering since approximately 1980. A current copy of my curriculum vitae is
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`attached hereto as Exhibit A.
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`3.
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`I have extensive experience in the field of embedded communication
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`networks. For example, I have been the instructor of the course “Distributed
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`Embedded Systems,” taught to Carnegie Mellon seniors and graduate students
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`almost every year since the Fall semester of 1999. This course includes several
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`lectures dedicated to embedded network operation and performance, including a
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`lecture derived from the tutorial based on the 1993 and 1994 articles I co-
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`authored with Bharghav Upender. Additional lectures in that course cover more
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`generalized embedded networking topics, including real-time scheduling,
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`reliability, and system safety
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`4.
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`I am also the instructor of the course “Embedded System
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`Engineering” which covers a number of embedded network protocols, including
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`various master slave polling arrangements.
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`5.
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`I have supervised a number of student independent projects and thesis
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`projects involving embedded networks. As part of this work, my lab has owned
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`and operated increasingly sophisticated hardware Controller Area Network
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`IPR2014-00518
`U.S. PATENT 8,023,580
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`(CAN) test-beds since approximately 1997.
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`6. Starting in 1999, I have been an external reviewer for more than 100
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`design reviews of products for industry clients, many of which have included
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`review of the use of embedded network protocols. I have further been involved
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`in the network protocol selection process and related system architecture
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`selection process for several companies in which network protocols were
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`considered. I taught seminars on protocol selection to attendees of the Embedded
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`Systems Conference in 1993 and 1994.
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`7.
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` I served as the Guest Editor of a special edition of the magazine IEEE
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`Micro titled “Critical Embedded Automotive Networks” in July-August 2002,
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`which included embedded network content.
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`8.
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`I have industry experience in network protocol use and selection,
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`specifically including embedded networks in elevators (Otis Elevator, circa 1991-
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`1995), and jet aircraft engines (Pratt & Whitney, circa 1992-1995), as well as in
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`heating/ventilation/cooling systems (Carrier, circa 1995).
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`9.
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`I have extensive experience in evaluating, selecting and using
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`embedded network protocols in safety-critical systems. For example, I am a co-
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`author of the Federal Aviation Administration’s Data Network Evaluation
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`Criteria Handbook, (Driscoll, K., Hall, B., Koopman, P., Ray, J., DeWalt, M.,
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`Data Network Evaluation Criteria Handbook, AR-09/24, FAA, 2009) which sets
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`IPR2014-00518
`U.S. PATENT 8,023,580
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`forth evaluation criteria for embedded networks to be used in safety-critical flight
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`control applications. The “Distributed Embedded Systems” course I previously
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`mentioned teaches students how to select an embedded network for a particular
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`embedded system application.
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`10. I am a named inventor on twenty-six patents, several of which
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`specifically address embedded control networks.
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`11. I was the General Chair for the Dependable Systems and Networks
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`Conference in 2008 (a first-ranked international academic conference on
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`dependability, fault tolerance, and related topics including networked embedded
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`system dependability). I was also Program Chair for the Dependable Computing
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`and Communications Symposium (DCCS) of this same conference in 2012. I am
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`a member of International Federation of Information Processing Working Group
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`10.4, an invitation-only organization of international researchers on the topic of
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`Dependable Computing and Fault Tolerance that holds periodic workshops.
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`These proceedings routinely address the topic of achieving safe and reliable
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`operation of distributed embedded networks and systems using such networks. I
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`am a senior member of both the Institute of Electrical and Electronic Engineers
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`and the Association for Computing Machinery.
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`12. In connection with forming my opinions, I reviewed the documents
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`IPR2014-00518
`U.S. PATENT 8,023,580
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`listed in Exhibit B. Particularly, I analyzed the ‘580 patent and the art on which
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`the trial was instituted. I also reviewed the March 19, 2014, Declaration of David
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`Goodman (“Goodman Declaration”) and the Institution Decision dated
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`September 23, 2014 (“the Institution Decision”) as they relate to the grounds
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`instituted by the Board. In addition, I also reviewed Dr. Goodman’s November
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`7, 2014, deposition transcript. My opinions are set forth below. I make these
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`statements based upon facts and matters within my own knowledge or on
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`information provided to me by others. All such facts and matters are true to the
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`best of my knowledge and belief.
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`13. I am being compensated at my standard expert consulting rate of
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`$580/hour. My compensation is not contingent upon the substance of my advice,
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`the opinions I render, or the testimony that I may give.
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`
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`II. RELEVANT LEGAL STANDARDS
`14. My understanding of the relevant legal standards is based on
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`information given by Patent Owner’s counsel. I understand from counsel that in
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`the inter partes review proceeding, such as this one, the claims of a patent are
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`construed from the perspective of one of ordinary skill in the art at the time of the
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`claimed invention and are given their broadest reasonable construction consistent
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`U.S. PATENT 8,023,580
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`with the specification.
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`15. I understand that the ‘580 patent was filed on August 19, 2009 and
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`claims priority to a provisional application (Serial No. 60/067,562) filed on
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`December 5, 1997. Therefore, for the purposes of my opinions contained in this
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`Declaration, I presume the relevant time for both claim construction and any
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`invalidity analysis is December 5, 1997. Based on my education, qualifications
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`and experience, I believe that I am qualified to provide opinions about how one
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`of ordinary skill in the art in December 1997 would have understood the prior art
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`and the ‘580 patent.
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`16. It is my understanding that an invention is unpatentable if the
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`differences between the invention and the prior art are such that the subject
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`matter of the invention as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art. I further
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`understand that obviousness is determined by evaluating: (1) the scope and
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`content of the prior art, (2) the differences between the prior art and the claim, (3)
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`the level of ordinary skill in the art, and (4) secondary considerations of non-
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`obviousness. To establish obviousness based on a combination of the elements
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`disclosed in the prior art, it is my understanding that a petitioner must identify a
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`specific combination that teaches all limitations and establish that a person of
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`ordinary skill in the art at the time of the claimed invention would have found it
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`U.S. PATENT 8,023,580
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`obvious to make that combination.
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`17. To guard against hindsight and an unwarranted finding of
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`obviousness, I understand that an important component of any obviousness
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`inquiry is whether the petitioner has identified any teaching, suggestion or
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`motivation that would have prompted a person of ordinary skill in the art to make
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`the claimed combination and have a reasonable expectation of success in doing
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`so. I understand that this test should not be rigidly applied, but can be an
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`important tool to avoid the use of hindsight in the determination of obviousness.
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`18. I further understand that the teaching, suggestion, or motivation may
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`be found explicitly or implicitly: (1) in the prior art; (2) in the knowledge of those
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`of ordinary skill in the art that certain references, or disclosures in those
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`references, are of special interest or importance in the field; or (3) from the nature
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`of the problem to be solved. Additionally, I understand that the legal
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`determination of the motivation to combine references allows recourse to logic,
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`judgment, and common sense. In order to resist the temptation to read into prior
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`art the teachings of the invention in issue, however, it should be apparent that
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`“common sense” should not be conflated with what appears obvious in hindsight.
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`19. I understand that if the teachings of a prior art reference would lead a
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`person of ordinary skill in the art to make a modification that would render
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`another prior art device inoperable, then such a modification would generally not
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`IPR2014-00518
`U.S. PATENT 8,023,580
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`be obvious. I also understand that if a proposed modification would render the
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`prior art invention being modified unsatisfactory for its intended purpose, then
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`there is no suggestion or motivation to make the proposed modification.
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`20. I understand that it is improper to combine references where the
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`references teach away from their combination. I understand that a reference may
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`be said to teach away when a person of ordinary skill in the relevant art, upon
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`reading the reference, would be discouraged from following the path set out in
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`the reference, or would be led in a direction divergent from the path that was
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`taken by the applicant. In general, a reference will teach away if it suggests that
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`the line of development flowing from the reference’s disclosure is unlikely to be
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`productive of the result sought by the patentee. I understand that a reference
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`teaches away, for example, if (1) the combination would produce a seemingly
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`inoperative device, or (2) the references leave the impression that the product
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`would not have the property sought by the patentee. I also understand, however,
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`that a reference does not teach away if it merely expresses a general preference
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`for an alternative invention but does not criticize, discredit, or otherwise
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`discourage investigation into the invention claimed. Finally, I understand that
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`dependent claims contain all of the limitations of the claims from which they
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`depend.
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`III. BACKGROUND OF THE PROCEEDING
`21. I understand that, in this proceeding, Petitioner has challenged Claims
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`IPR2014-00518
`U.S. PATENT 8,023,580
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`1, 2, 4-5, 10, 13, 19-22, 49, 52-54, 57-59, 61, 62, 66, 70, and 76-79 of the ’580
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`Patent, of which Claims 1, 49, 54, and 58 are independent.
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`22. I further understand that the Patent Trial and Appeal Board (“the
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`Board”) has instituted the inter partes review only for claims 1, 4, 5, 10, 13, 20-
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`22, 54, 57, 58, 61, 62, 66, 70 and 76-79 on the alleged obviousness ground based
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`on admitted prior art (“APA”) and U.S. Patent No. 5,706,428 to Boer et al.
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`IV. DEFINITION OF THE PERSON OF SKILL IN THE ART
`23. I understand that the Patentee proposed a definition of a person of
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`ordinary skill in the art as having a bachelor’s degree in electrical engineering
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`that included coursework in communications systems and networking, and two
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`years of work experience in electronic communications.
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`24. In determining who would be one of such ordinary skill, I considered
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`at least the following criteria: (a) the type of problems encountered in the art; (b)
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`prior art solutions to those problems; (c) the rapidity with which innovations are
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`made; (d) the sophistication of the technology; and (e) the education level of
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`active workers in the field.
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`25. I understand Petitioner alleges that a hypothetical person of ordinary
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`skill in the field of the ‘580 Patent would have had “a Master’s Degree in
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`Electrical Engineering that included coursework in communications systems and
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`U.S. PATENT 8,023,580
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`networking, and at least five years of experience designing network
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`communication systems.” Paper 4 at 9. I find Petitioner’s proposed definition to
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`be conclusory and unsupported by any evidence.
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`26. I find Petitioner provides no rationale for its definition, including why
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`a Master’s degree in electrical engineering is necessary or why “at least five
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`years of experience” is needed to qualify as one of ordinary skill in the art.
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`Petitioner’s proposed definition is arbitrary and unsubstantiated. .
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`27. I also disagree with Petitioner’s definition because its use of the open-
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`ended term “at least,” without a ceiling, would include persons who are far over-
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`qualified to be considered of “ordinary skill” in the art. Someone with the
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`proposed Master’s degree and more than 15 years of practical experience, for
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`example, is not “a person of ordinary skill in the art” because that person would
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`possess a much higher level of understanding of the technology disclosed in the
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`‘580 patent than a similar person with the five years of experience, yet such a
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`person would meet Petitioner’s unbounded definition.
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`28. In my own experience running industry tutorials and teaching at a
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`university, it is apparent that a graduate-level degree is not required to attain
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`ordinary skill in the art for the technology disclosed in the ’580 patent. For
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`example, my joint publications and tutorials with Bhargav Updender that predate
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`the ‘580 patent had an intended audience that included freshly graduated
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`IPR2014-00518
`U.S. PATENT 8,023,580
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`bachelor’s degree students who wanted to work in the area of electronic
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`communications. From my experience in industry, I would expect that a newly
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`graduated student is fluent in the specifics of technology relevant to their area of
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`working specialization within about two years after graduation.
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`29. For those reasons, it is my opinion that one of ordinary skill in the art
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`would be someone having a bachelor’s degree in electrical engineering that
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`included coursework in communications systems and networking, and two years
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`of work experience in electronic communications.
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`30. At the time of the invention, I was, at least, a person of ordinary skill
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`in the art.
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`V. THE STATE OF THE PRIOR ART
`31. I understand that the invalidity analysis starts at the relevant date of
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`the technology at issue. As stated above, the relevant date for purposes of the
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`‘580 patent is the filing date of the earliest priority application, which is
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`December 5, 1997.
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`32. By that time, the basic principles of network protocol technology were
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`relatively well understood for local area networks (LANs) used for desktop and
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`enterprise computing. The emphasis in these systems was on aspects such as
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`flexibility to add and remove network stations, efficient use of available data
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`bandwidth, and scalability to large numbers of stations on a single network. For
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`example, the well-known textbook by Andrew Tanenbaum (Computer Networks,
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`3rd Ed., 1996) was already on its third edition. Excerpts are attached hereto as
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`Ex. 2210. Such networks were seen as comprising many interconnected general
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`purpose computers used for business purpose and the emerging World Wide Web
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`(e.g., “Throughout this book we will use the term ‘computer network’ to mean an
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`interconnected collection of autonomous computers.” See Ex. 2210 at 2
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`(emphasis per original). In fact, Tanenbaum specifically excludes master/slave
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`systems from consideration within the term “computer network” by saying “By
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`requiring the computers to be autonomous, we wish to exclude from our
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`definition systems in which there is a clear master/slave relation. If one computer
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`can forcibly start, stop, or control another one, the computers are not
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`autonomous. A system with one control unit and many slaves is not a network;
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`nor is a large computer with remote printers and terminals.” Id. (emphasis
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`added). Even when Tanenbaum discusses networks in aircraft, for example, the
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`discussion is limited to the passengers’ data needs, and not flight controls. Id. at
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`p. 15. Thus master/slave systems were not preferred by a typical practitioner of
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`networked communication.
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`33. At about the same time, the area of embedded control systems was
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`seeing a trend toward including network technology within embedded system
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`projects, especially vehicles such as cars. The Controller Area Network (Bosch,
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`1991) became very well known in the 1990s, as well as other network
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`technologies to go beyond the traditional master/slave polling that had been used
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`in the earliest embedded system applications. As part of this trend, I co-authored
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`papers and presented tutorials with Bhargav Upender on protocol tradeoffs for
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`embedded systems at the Embedded Systems Conference and in Embedded
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`System Programming magazine. In sharp contrast to desktop and enterprise
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`networking, embedded systems often used master/slave protocols in large part
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`because they had fixed configurations and needed both simplicity and
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`determinacy to meet stringent cost and safety requirements (neither of which
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`typically applied to non-embedded systems). However, master/slave polling was
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`well known to have problems such as inefficiency and lack of prioritization, so
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`given the availability of more capable inexpensive microcontrollers that could
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`implement more complex protocols, practitioners were actively searching for
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`alternatives. A primary purpose of those publications and presentations was to
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`ensure that practitioners of ordinary skill understood that protocol selection had
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`to be done with care and involved fundamental tradeoffs.
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`VI. THE ’580 PATENT
`34. I understand that Petitioner challenges Claims 1, 2, 4-5, 10, 13, 19-22,
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`49, 52-54, 57-59, 61, 62, 66, 70, and 76-79 of the ’580 Patent, of which Claims 1,
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`49, 54, and 58 are independent.
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`35. The ‘580 patent issued to inventor Gordon Bremer claims priority to a
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`provisional application filed on December 5, 1997. The ‘580 patent discloses a
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`system in which network devices may communicate with other network devices
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`according to a master/slave relationship using different types of modulation
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`methods. Ex. 1301, Abstract.
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`36. The use of multiple types of modulation methods in a master-slave
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`system as taught by the ‘580 Patent can, for example, permit selection of the
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`modulation type best suited for a particular application. Ex. 1301, 1:66-2:33.
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`Annotated Figure 4 shows an embodiment of the patented technology where
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`some devices in the network communicate using one type of modulation method
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`(e.g., amplitude modulation), while other devices communicate using a different
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`type of modulation method (e.g., frequency modulation):
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`IPR2014-000518
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`U.S. PAATENT 8,0233,580
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`of one of tthe embod
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`iments
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`37. As diiscussed laater, a salieent feature
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`disclosed in the specification is that tthe master//slave poll
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`s ing transacction starts
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`with thhe master ssending heeader informmation usiing a first ttype of moodulation, aand
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`then ooptionally sswitches too a second type of moodulation ddepending
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`exampple, the cappabilities oof the particcular tributtary transcceiver that
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`on, for
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`is under thhe
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`controol of the maaster for a particular message eexchange. TThis approoach can
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`permitt more advvanced trib
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`utary transsceivers to
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`send data
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`at much hhigher data
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`rates wwithout reqquiring all tributary trransceiverss to supporrt potentiallly expensiive
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`bilities. high-sspeed data rate capab
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`VII. OOPINION ON CLAIIM CONSSTRUCTIOON OF THHE TERMMS
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`““MASTERR” AND “SSLAVE”
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`38. I undderstand thaat in an intter partes rreview, claaim terms iin an
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`unexppired patentt are interppreted accoording to thheir broadeest reasonaable
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`constrruction in llight of thee specificattion of the
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`patent in wwhich theyy appear.
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`-15-
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`REMBRANDT EXHIBIT 2208
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`

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`39. I understand that Petitioner and the Patentee have proposed
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`IPR2014-00518
`U.S. PATENT 8,023,580
`
`
`construction of the following terms2:
`
`(1)
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` “master” (Claims 1, 2, 10, 11, 12, 49, 54, 58, 59,
`66, 68, 69); and
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`(2)
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` “slave” (Claims 1, 2, 10, 11, 58, 59, 66, 68).
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`Claim Term Patentee’s Construction
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`Master
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`Slave
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`“a device which controls all
`communications with other devices
`(i.e., slaves) in a network”
`“a device whose network
`communications are controlled by a
`master”
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`
`Petitioner’s Construction
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`“a device which controls or
`polls other transceivers”
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`“a device controlled by
`commands from a master”
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`40. For the following reasons, I agree with Patentee’s construction of the
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`terms “master” and “slave”. I find the Patentee’s proposed construction to
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`comport with the broadest reasonable interpretation based on its use in the
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`claims, specification and file history. I note, however, that my analysis and
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`ultimate conclusions set forth in this Declaration would not change if the Board
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`were to adopt Petitioner’s construction of “master” and “slave.”
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`41. Petitioner takes the position that the terms “master” and “slave”
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`should be given their plain and ordinary meanings. Paper 4 at 13-14. Petitioner
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`2 I have been asked to address claim construction only as it relates to the terms “master”
`and “slave.” The remaining terms to be construed are addressed by the Declaration of
`Christopher Jones, Ex. 2214.
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`-16-
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`REMBRANDT EXHIBIT 2208
`
`

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`IPR2014-00518
`U.S. PATENT 8,023,580
`
`ignores the relevant content of the claims and specification of the ‘580 patent and
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`relies solely on extrinsic evidence from the Dictionary of Communications
`
`Technology. Id. It is my understanding that a disputed claim term cannot be
`
`viewed in a vacuum, but rather must be interpreted in the context of the patent,
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`including the claims and the specification. I find Petitioner’s proposed
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`constructions for “master” and “slave” to have been created in a vacuum,
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`divorced from the claims and specification of the ‘580 patent, and therefore to be
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`incorrect.
`
`42. The ‘580 patent is replete with usage of the terms “master” and
`
`“slave” in the context of the master/slave relationship. For example, the device
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`disclosed in the ‘580 patent includes “a transceiver capable of acting as a master
`
`according to a master/slave relationship in which communication from a slave to
`
`a master occurs in response to communication from the master to the slave.” Ex.
`
`1201, Abstract. “[A] master controls the initiation of its own transmission to the
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`tribs and permits transmission from a trib only when that trib has been selected.”
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`Id. at 4:7-9. Similarly, in the Summary of the Invention section of the ‘580
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`patent, it states that:
`
`a device may be capable of communicating according to a
`master/slave relationship in which a communication from a
`slave to a master occurs in response to a communication
`from the master to the slave. The device may include a
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`-17-
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`REMBRANDT EXHIBIT 2208
`
`

`
`IPR2014-00518
`U.S. PATENT 8,023,580
`
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`transceiver in the role of the master for sending transmissions
`modulated using at least two types of modulation methods, for
`example a first modulation method and a second modulation
`method
`
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`Id. at 2:24-29. (emphasis added).
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`43. Furthermore, independent claims 1 and 58 of the ‘580 patent are
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`directed to communication devices capable of communicating according to a
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`master/slave relationship. The preambles of those claims state that in a
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`master/slave relationship, “a slave communication from a slave to a master
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`occurs in response to a master communication from the master to the slave”
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`(Claim 1) and “a slave message from a slave to a master occurs in response to a
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`master message from the master to the slave” (Claim 58). Id.
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`44. Consistent with the usage of master/slave in the ‘580 patent, the
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`Comprehensive Dictionary of Electrical Engineering, likewise, defines “master”
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`as “the system component responsible for controlling a number of others (called
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`slaves).” Ex. 2206 at 397 (emphasis added). The Modern Dictionary defines
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`““slave” as a “component in a system that does not act independently, but only
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`under the control of another similar component.” Ex. 2205 at 932 (emphasis
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`added).
`
`-18-
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`REMBRANDT EXHIBIT 2208
`
`

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`45. By contrast, Petitioner’s proposed construction of “master” would be
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`IPR2014-00518
`U.S. PATENT 8,023,580
`
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`satisfied by a device that merely performed polling, even if it failed to control
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`communications with a slave. Additionally, Petitioner’s proposed construction of
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`“master” would be satisfied by a device that controlled the data flow of a slaved
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`node, even if it failed to poll that slave node. I find such a construction to be
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`inconsistent with the specification, which uses both polling and control of data
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`flows in a preferred multipoint embodiment.
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`46. The specification requires at least polling: “any unilateral transmission
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`by a trib that has not been addressed by the master transceiver will violate the
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`multipoint protocol.” Ex. 1201, 5:4-6)
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`47. Furthermore, the master is the recipient of all data from the slave:
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`Ex. 1201, 4:27-34. This makes it clear that not only does the master select a slave
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`(a trib) for transmission, but also the trib communicates data back to the master.
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`Thus, the master is in complete control of slave communications. If the master
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`performed only polling without controlling the communications, then the trib
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`would have to be able to transmit to other tribs, and not just the master.
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`-19-
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`REMBRANDT EXHIBIT 2208
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`

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`48. Regarding the definition of “slave,” I can find no support in the ‘580
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`IPR2014-00518
`U.S. PATENT 8,023,580
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`patent that requires that all aspects of the slave’s functionality be controlled by the
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`master. Rather, the control the master exerts is over the slave’s network
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`communication behavior. For example, the ‘580 patent discloses that “…a master
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`controls the initiation of its own transmission to the tribs and permits transmission
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`from a trib only when that trib has been selected.” Ex. 1201, 4:7-9.
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`49. Therefore, I find Petitioner’s proposed constructions for “master” and
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`“slave” incorrect because they are not consistent with the usage of these terms in
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`the ‘580 patent.
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`50. Consistent with the specification of the ‘580 patent, it is my opinion
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`that the term “master” means “a device which controls all communications with
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`other devices (i.e., slaves) in a network.”
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`51. It is also my opinion that, consistent with the specification of the ‘580
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`patent, the term “slave” means “a device whose network communications are
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`controlled by a master.”
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`VIII. THE PRIOR ART OF THE INSTITUTED GROUNDS
`52. I understand Petitioner has alleged the combination of Admitted Prior
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`Art in combination with U.S. Patent No. 5,706,428 to Boer et al. Below, I
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`provide a brief summary of the relied-upon art.
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`-20-
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`REMBRANDT EXHIBIT 2208
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`

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`A. The Alleged Admitted Prior Art (“APA”)
`53. Petitioner alleges that the ’580 describes certain prior art systems
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`IPR2014-00518
`U.S. PATENT 8,023,580
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`including a multipoint communication system including a master transceiver and
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`a plurality of tributary transceivers. Petitioner alleges that the description of a
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`system having a master modem and plurality of identical tributary modems all
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`communicating via a common modulation method constitutes prior art. See
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`Paper 4 at 14-15.
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`54. The petitioner relies on the described system as evidence of the
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`existence of common modulation master/slave systems prior to in the inve

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