Thomas Engellenner
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`SAMSUNG ELECTRONICS CO. LTD.;
`SAMSUNG ELECTRONICS AMERICA, INC.;
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC; and
`SAMSUNG AUSTIN SEMICONDUCTOR, LLC;
`Petitioner
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP
`Patent Owner
`
`___________________
`
`Case No. IPR2014-00519
`Patent 8,023,580
`
`___________________
`
`PATENT OWNER’S RESPONSE PURSUANT TO 37 CFR § 42.120
`
`
`
`By:
`
`
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`IPR2014-00519
`U.S. Patent No. 8,023,580
`
`Page
`
`TABLE OF AUTHORITIES ................................................................................... iii
`
`UPDATED TABLE OF EXHIBITS ......................................................................... v
`
`V.
`
`INTRODUCTION .......................................................................................... 1
`I.
`SUMMARY OF THE ’580 PATENT ............................................................ 3
`II.
`III. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE ART ........ 6
`A.
`Legal Standard ...................................................................................... 6
`B. A Person Of Ordinary Skill In The Art ................................................ 6
`C.
`Claim Construction .............................................................................. 9
`“Multipoint Communications Protocol,” “Master,” And
`1.
`“Slave” ....................................................................................... 9
`IV. SUMMARY OF ALLEGED PRIOR ART .................................................. 12
`A. Admitted Prior Art (“APA”) .............................................................. 12
`B. U.S. Patent No. 5,706,426 Of Boer (“Boer”) ..................................... 12
`C.
`The Upender/Koopman Article .......................................................... 14
`LEGAL STANDARDS ................................................................................ 14
`A.
`Petitioner Has The Burden Of Proof .................................................. 14
`B.
`Legal Standard For Obviousness........................................................ 15
`Each Prior Art Reference Must Be Considered In Its Entirety .......... 17
`C.
`VI. ARGUMENTS ............................................................................................. 18
`The CSMA/CA System of Boer Is Fundamentally Different
`A.
`From A Master/Slave Multipoint Communications Protocol ............ 18
`B. Dr. Goodman’s Declaration Regarding Motivation To Combine
`The Alleged APA With Boer Is Unreliable ....................................... 22
`Dr. Goodman Failed To Fully Consider The
`1.
`Upender/Koopman Article As A Whole .................................. 23
`Dr. Goodman Has No Understanding Of The Conclusion
`Reached In The Article ............................................................ 25
`Dr. Goodman’s Reasoning Is Flawed Because
`“Simplicity and Determinacy” Are At Odds With
`“Flexibility and Efficiency” ..................................................... 26
`
`2.
`
`3.
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`-i-
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`

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`IPR2014-00519
`U.S. Patent No. 8,023,580
`
`Dr. Goodman’s Declaration Is Unreliable Because It Is
`Unclear What Level Of Skill He Equated With One Of
`Ordinary Skill In The Art ......................................................... 29
`C. Dr. Koopman, the Coauthor of the Article, Testified that the
`Teachings of Upender/Koopman Do Not Support Combination
`of the Alleged APA with Boer ........................................................... 30
`Combining Boer And The Alleged APA Would Reduce
`1.
`Flexibility And Efficiency ....................................................... 32
`There Are Fundamental Tradeoffs Between Master/Slave
`Polling And CSMA/CA Protocols Which Teach Away
`From Using Master/Slave In Boer ........................................... 35
`CLAIMS 38 AND 47ARE NOT RENDERED OBVIOUS BY
`THE COMBINATION OF ALLEGED APA AND BOER............... 38
`The Petition Does Not Prove The Combination Of
`1.
`Alleged APA And Boer Renders Dependent Claim 38
`Obvious .................................................................................... 38
`The Petition Does Not Prove The Combination Of
`Alleged APA And Boer Renders Independent Claim 47
`Obvious .................................................................................... 41
`VII. CONCLUSION ............................................................................................. 42
`
`
`
`-ii-
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`
`
`4.
`
`2.
`
`D.
`
`2.
`
`

`
`IPR2014-00519
`U.S. Patent No. 8,023,580
`
`TABLE OF AUTHORITIES
`
`
`CASES
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) ................... 6
`
`Page(s)
`
`Environmental Designs Ltd v. Union Oil, 713 F.2d 693 (Fed. Cir. 1983) ................ 8
`
`Grain Processing Corp. v. American-Maize Prods. Co., 840 F.2d 902
`(Fed. Cir. 1988)) ................................................................................................. 16
`
`Hodosh v. Block Drug Co., Inc., 786 F.2d 1136 (Fed. Cir. 1986) ..................... 18, 26
`
`In Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR2013-00183,
`Paper No. 12 (July 31, 2013) .............................................................................. 16
`
`In re Grasselli, 713 F.2d 731 (Fed. Cir. 1983) ........................................................ 18
`
`In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011) ..................................................... 16
`
`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) ................................... 6
`
`In re Wesslau, 147 U.S.P.Q. 391 (C.C.P.A. 1965) ................................................. 17
`
`InTouch Tech., Inc. v. VGO Comm’s, Inc., 2014 U.S. App. LEXIS 8745
`(Fed. Cir. May 9, 2014) ...................................................................................... 16
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) .......................................... 15, 16
`
`Macronix Int’l v. Spansion LLC¸ IPR2014-00106,
`Paper 13 (Apr. 24, 2014) ..................................................................................... 6
`
`Motorola Mobility LLC, et al. v. Arendi S.A.R.L., IPR2014-00203,
`Paper No. 10 (June 5, 2014) ............................................................................... 16
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ....................... 6, 8
`
`Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352 (Fed. Cir. 2011) ...................... 15
`
`W.L. Gore & Associates, Inc. v. Garlock, Inc., 220 U.S.P.Q. 303
`(Fed. Cir. 1983). .................................................................................................. 17
`
`-iii-
`
`

`
`Wowza Media Systems, LLC et al. v. Adobe Systems Inc., IPR2013-00054,
`Paper No. 12 (April 8, 2013) ........................................................................ 16, 17
`
`IPR2014-00519
`U.S. Patent No. 8,023,580
`
`
`
`STATUTES
`
`
`
`OTHER AUTHORITIES
`
`37 C.F.R. §42.100(b) ................................................................................................. 6
`
`77 Fed. Reg. 48,756 (Aug. 14, 2012) ........................................................................ 6
`
`MPEP § 2111 ............................................................................................................. 8
`
`MPEP § 2141 ........................................................................................................... 15
`
`MPEP § 2145(X)(D)(1)(3) ....................................................................................... 18
`
`
`
`-iv-
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`

`
`IPR2014-00519
`U.S. Patent No. 8,023,580
`
`UPDATED TABLE OF EXHIBITS
`
`Previously filed
`
`Exhibit #
`
`2301
`
`Exhibit Description
`U.S. Provisional Patent Application No. 60/067,562,
`dated December 5, 1997.
`
`
`New
`
`Exhibit #
`
`Exhibit Description
`
`2302
`
`2303
`
`2304
`
`2305
`
`2306
`
`2307
`
`2308
`
`2309
`
`Declaration of Dr. Philip Koopman, Ph.D.
`
`Upender, B. & Koopman, P., "Embedded
`Communication Protocol Options," Proceedings of
`Embedded Systems Conference 1993, Santa Clara,
`pp. 469-480, October 1993.
`
`Tanenbaum, A.S. COMPUTER NETWORKS, THIRD ED.
`pp. xv-xvii and 1-15 (Prentice Hall PTR 1996)
`MODERN DICTIONARY OF ELECTRONICS, SIXTH ED.,
`REVISED AND UPDATED 932 (Butterworth-
`Heinemann 1997).
`
`COMPREHENSIVE DICTIONARY OF ELECTRICAL
`ENGINEERING 397 (CRC Press LLC 1999).
`
`Amended Petition for Inter Partes Review of U.S.
`Patent No. 8,023,580, Case IPR2014-00515, Paper 4
`(April 3, 2014).
`
`Transcript of Deposition of David Goodman, Ph.D.
`and Exhibits in IPR2014-00518 and IPR2014-00519
`(November 7, 2014)
`
`Redacted Rough Transcript of Deposition of David
`Goodman, Ph.D. in Rembrandt Wireless Techs., LP
`v. Samsung Elecs. Co., Ltd., et al., Case No. 2:13-
`
`-v-
`
`

`
`IPR2014-00519
`U.S. Patent No. 8,023,580
`
`CV-213-JRG-RSP (November 18, 2014)
`
`2310
`
`Redacted Rough Transcript of Deposition of David
`Goodman, Ph.D. in Rembrandt Wireless Techs., LP
`v. Samsung Elecs. Co., Ltd., et al., Case No. 2:13-
`CV-213-JRG-RSP (November 19, 2014)
`
`
`
`-vi-
`
`

`
`IPR2014-00519
`U.S. Patent No. 8,023,580
`
`I.
`
`INTRODUCTION
`
`Patent Owner Rembrandt Wireless Technologies, LP (“Patent Owner”)
`
`respectfully submits this Response1 to the Amended Petition for Inter Partes
`
`Review (Paper No. 4, “Petition”) filed by Samsung Electronics Co. Ltd., Samsung
`
`Electronics America, Inc., Samsung Telecommunications America, LLC, and
`
`Samsung Austin Semiconductor, LLC (collectively, “Petitioner”).
`
`With regard to instituted claims 38 and 47, Petitioner’s proffered
`
`combination of the alleged Admitted Prior Art (“APA”) and U.S. Patent 5,706,428
`
`to Boer et al. (“Boer,” Ex. 1304) is premised on the erroneous notion in Dr.
`
`Goodman’s Declaration that the “terminology in Boer” (i.e., the use of the term
`
`“access point”) suggests the use of a master/slave system. (See Paper 4 at 16-17;
`
`Ex. 1318 at ¶92-96.) These assertions of the Petitioner and its declarant are
`
`unfounded and ignore Boer’s unambiguous description of a CSMA/CA system that
`
`functions contrary to, and fundamentally different than, a master/slave system.
`
`Indeed, Dr. Goodman admitted during his deposition that the access point does not
`
`control or poll the mobile stations in Boer’s CSMA/CA system:
`
`Q. My question was whether or not it’s disclosed in the patent, a
`master/slave configuration?
`
`1 Patent Owner’s Response is being supported by the Declaration of Dr. Philip
`
`Koopman, filed herewith as Exhibit 2302.
`
`-1-
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`

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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`A. As I recall the words don’t appear there. So, to that extent, it’s
`not, it’s not described in the specification, it doesn’t use the term
`master/slave to describe it.
`Q. Does the Boer patent describe a device which controls or polls
`either transceivers?
`A. Boer does not speak about it controlling or polling transceivers.
`
`(Ex. 2308 at 71:14-25 (emphasis added).)
`
`During his deposition, Dr. Goodman further confirmed that Boer’s access
`
`point does not act as a master. In discussing the effect of removing the access
`
`point from Boer’s CSMA/CA system and of removing a master from a
`
`master/slave system, Dr. Goodman testified as follows:
`
`Q. In the configuration described in the system of figure one [of
`Boer], what would happen to the communication between the
`mobile stations if you removed the access point?
`A. You’d be in this ad hoc mode that he describes in the 2 or 3
`sentences of the disclosure.
`Q. The mobile stations would still be able to communicate with each
`other?
`A. Yes.
`Q.
`In a master/slave configuration, if you removed the master, can
`the slaves still talk to each other?
`A. No.
`
` (Ex. 2308 at 83:14-20 (emphasis added).)
`
`-2-
`
`

`
`IPR2014-00519
`U.S. Patent No. 8,023,580
`
`This stark contrast between Boer’s CSMA/CA system following removal of
`
`the access point versus the master as being the single point-of-failure in a
`
`master/slave system highlights only one of the fundamental differences between
`
`the protocols that Petitioner proposes to combine.
`
`Patent Owner submits herewith the Declaration of Dr. Philip Koopman, co-
`
`author of the Upender article (Ex. 1317) that is relied upon by Dr. Goodman as
`
`purportedly providing motivation to combine these diametrically opposed
`
`protocols. Dr. Koopman provides a detailed analysis as to why one of ordinary
`
`skill in the art would not have attempted to combine the diametrically opposed
`
`protocols described in the APA and Boer to arrive at the invention recited in claims
`
`38 and 47.
`
`II.
`
`SUMMARY OF THE ’580 PATENT
`
`The ’580 Patent, entitled “System and Method of Communication Using at
`
`Least Two Modulation Methods” and invented by Gordon Bremer, claims priority
`
`to a provisional application, U.S. Serial No. 60/067,562 (Ex. 2301), filed on
`
`December 5, 1997. In various embodiments, the ’580 Patent discloses systems in
`
`which network devices may communicate with other network devices according to
`
`a master/slave relationship using different types of modulation methods. (Ex. 1301
`
`at Abstract.)
`
`-3-
`
`

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`
`
`IPPR2014-000519
`UU.S. Patent
`
`No. 8,0233,580
`
`
`
`
`
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`
`
`
`ght tem as taugr/slave systn a masterTThe use of mmultiple mmodulation methods in
`
`
`
`
`
`
`
`
`
`
`
`
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`by the ’580 Patentt can, for eexample, peermit selecction of thee modulati
`
`
`
`
`
`
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`on type beest
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`
`
`. Annotateed Figure 44
`
`
`
`
`
`
`
`
`
`
`
`suited fofor a particuular appliccation. (Exx. 1301 at 11:66-2:33)
`
`
`
`
`
`
`
`
`
`
`
`shows aan embodimment of thee patented technologyy where soome devicees in the
`
`
`
`
`
`
`
`
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`
`
`
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`
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`networkk communiicate usingg one type oof modulattion methood (e.g., ammplitude
`
`
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`
`
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`
`
`
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`
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`
`
`modulattion), whille other devvices commmunicate uusing a diffferent typee of
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`
`
`
`
`
`
`modulattion methood (e.g., freequency mmodulation)):
`
`
`
`
`
`
`
`
`
`
`
`CClaim 38, wwhich depeends on inddependent
`
`
`
`
`
`
`
`
`
`
`
`claim 32, iis represenntative of
`
`
`
`various aspects off the abovee-describedd system:
`
`
`
`
`
`
`
`:
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`
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`32.. A commmunicationss device, coomprising
`
`
`
`
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`a processsor; and
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`
`
`therein eexecutablee instructiions for
`
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`a memoory havinng stored
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`
`
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`execuution by thhe processoor, whereinn the exec
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`utable insttructions
`
`
`
`
`
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`direct transmisssion of aa first datta with aa first moodulation
`
`
`
`
`
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`methhod followed by a seecond dataa with a ssecond moodulation
`
`
`
`
`
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`methhod, wherein the first modulatiion methodd is differrent than
`
`-4-
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`

`
`IPR2014-00519
`U.S. Patent No. 8,023,580
`
`the second modulation method, wherein the first data comprises
`an indication of an impending change from the first modulation
`method
`to
`the second modulation method wherein
`the
`executable instructions direct transmission of a third data with
`the first modulation method after the second data, and wherein
`transmission of the second data is according to a particular
`quantity of data.
`
`* * *
`38. The device of claim 32, wherein the memory has stored therein
`program code for a multipoint communications protocol.
`
`(emphasis added). Dependent claim 47 (which depends on claim 40 via claim 44)
`
`is similar to claim 38 in that claim 47 also recites a device wherein the memory has
`
`stored therein program code for a multipoint communications protocol.
`
`As discussed in detail below, a salient feature of the invention claimed in
`
`each of claims 38 and 47 is that communication device has stored therein program
`
`code for a multi-point communications protocol, (i.e., a master/slave
`
`communications protocol.) See Ex. 1301 at 1:56-58; 3:6-8 (and corresponding Fig.
`
`1); 3:11-17 (and corresponding Fig. 3, Fig. 4); 3:50-44; 4:6-9; 5:47-49. A multi-
`
`point communications protocol transaction starts with the master sending header
`
`information using a first modulation method, and then optionally switches to a
`
`second modulation method depending on the capabilities of the particular tributary
`
`transceiver that is under the control of the master for a particular message
`
`-5-
`
`

`
`IPR2014-00519
`U.S. Patent No. 8,023,580
`
`exchange. This approach can permit more advanced tributary transceivers to send
`
`data at much higher data rates without requiring all tributary transceivers to
`
`support potentially expensive high-speed data rate capabilities.
`
`III. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE ART
`A. Legal Standard
`In an inter partes review, a claim of an unexpired patent is construed using
`
`the “broadest reasonable construction in light of the specification.” 37 C.F.R.
`
`§42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug.
`
`14, 2012). Typically, a claim term is given its ordinary and customary meaning in
`
`the context of the specification, as it would be understood by one of ordinary skill
`
`in the art. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc);
`
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, a
`
`“claim term will not receive its ordinary meaning if the patentee acted as his own
`
`lexicographer and clearly set forth a definition of the disputed claim term in either
`
`the specification or prosecution history.” Macronix Int’l v. Spansion LLC¸
`
`IPR2014-00106 (Paper 13 at 6, Apr. 24, 2014) (quoting CCS Fitness, Inc. v.
`
`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).
`
`B. A Person Of Ordinary Skill In The Art
`A person of ordinary skill in the art would have a bachelor’s degree in
`
`electrical engineering that included coursework in communications systems and
`
`networking, and two years of work experience in electronic communications. (Ex.
`
`-6-
`
`

`
`IPR2014-00519
`U.S. Patent No. 8,023,580
`
`2302 at ¶29.) Given the depth and comprehensive disclosure of the specification, a
`
`newly graduated student would become fluent in the specifics of the technology
`
`within about two years after graduation. (See Ex. 2302 at ¶28.)
`
`Petitioner alleges that a hypothetical person of ordinary skill in the art of the
`
`’580 Patent would have had “a Master’s Degree in Electrical Engineering that
`
`included coursework in communications systems and networking, and at least five
`
`years of experience designing network communication systems.” (Paper 4 at 9.)
`
`Petitioner, however, provides no rationale for its definition, including why a
`
`Master’s degree in electrical engineering is necessary or why “at least five years of
`
`experience” is needed to qualify as one of ordinary skill in the art. (Ex. 2302 at
`
`¶26.) Petitioner’s definition is exceedingly high, conclusory, and unsupported by
`
`any evidence. (Ex. 2302 at ¶¶25-26.)
`
`Petitioner’s definition is further flawed because its use of the open-ended
`
`term “at least,” without a ceiling, makes it a “moving target” and would include
`
`persons who are far over-qualified to be considered of “ordinary skill” in the art.
`
`(Ex. 2302 at ¶27.) Someone with the proposed Master’s degree and more than 15
`
`years of practical experience, for example, is not “a person of ordinary skill in the
`
`art” because that person would possess a much higher level of understanding of the
`
`technology disclosed in the ’580 Patent than a similar person with the five years of
`
`experience, yet such a person would meet Petitioner’s definition. (Ex. 2302 at
`
`-7-
`
`

`
`IPR2014-00519
`U.S. Patent No. 8,023,580
`
`¶27.) Petitioner’s expert, Dr. Goodman, testified that even a person having 10
`
`years or 20 years of experience would still be considered to be of ordinary skill.
`
`(Ex. 2308 at 65:13-66:16.)
`
`Given the open-ended nature of Petitioner’s definition, the entirety of Dr.
`
`Goodman’s analysis is implicated as contrary to the law, which is premised on the
`
`perspective of a person of “ordinary” skill in the art. 2 Indeed, there is no way to
`
`tell whether Dr. Goodman used someone with 10 years of experience, someone
`
`with 20 years of experience, or someone with even more or less experience, as his
`
`benchmark in formulating his opinions.
`
`
`2 A determination of the person having “ordinary” skill does not merely provide a
`
`floor (i.e., to exclude “laymen”), but also a ceiling so as to exclude the “geniuses”
`
`in the relevant art when applying the relevant legal standards to the challenged
`
`claims. Environmental Designs Ltd v. Union Oil, 713 F.2d 693 (Fed. Cir. 1983).
`
`See also Phillips v. AWH Corp., 415 F.3d at 1316 (claim construction is based on
`
`the specification “as it would be interpreted by one of ordinary skill in the art”)
`
`(emphasis added); MPEP § 2111.
`
`-8-
`
`

`
`IPR2014-00519
`U.S. Patent No. 8,023,580
`
`C. Claim Construction
`1.
`“Multipoint Communications Protocol,” “Master,” And
`“Slave”
`
`The Petitioner indicates that “according to the ‘580 patent, multipoint
`
`communications use a master transceiver and slave transceivers. Ex. 1301, 1:56-
`
`58.” (Paper 4 at 38-39). For purposes of these proceedings, Patent Owner has
`
`assumed Petitioner’s definition of “multipoint communications,” which requires
`
`the use of a master and slave. Patent Owner submits that the intrinsic record of the
`
`’580 Patent supports a construction of the term “master” as “a device which
`
`controls all communications with other devices (i.e., slaves) in a network.” The
`
`intrinsic record also supports a definition of “slave” as “a device whose network
`
`communications are controlled by a master.”
`
`The ’580 Patent is replete with usage of the terms “master” and “slave” in
`
`the context of a master/slave relationship. For example, one device 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. 1301 at
`
`Abstract.) “[A] master controls the initiation of its own transmission to the tribs
`
`and permits transmission from a trib only when that trib has been selected.” (Id. at
`
`4:7-9.) Similarly, in the Summary of the Invention section of the ’580 Patent, it
`
`states that:
`
`-9-
`
`

`
`IPR2014-00519
`U.S. Patent No. 8,023,580
`
`[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 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.
`
`(Id. at 2:24-29 (emphasis added); see also Ex. 2302 at ¶42.)
`
`Independent claims 1 and 58 of the ’580 Patent, for example, are directed to
`
`communication devices capable of communicating according to a master/slave
`
`relationship. The preambles of those claims state that, in a master/slave
`
`relationship, “a slave communication from a slave to a master occurs in response to
`
`a master communication from the master to the slave” (claim 1) and “a slave
`
`message from a slave to a master occurs in response to a master message from the
`
`master to the slave” (claim 58). (See also Ex. 2302 at ¶43.)
`
`Consistent with the usage of master/slave in the ’580 Patent, the
`
`Comprehensive Dictionary of Electrical Engineering, likewise defines “master” as
`
`“the system component responsible for controlling a number of others (called
`
`slaves).” (Ex. 2306 at 397 (emphasis added).) The Modern Dictionary defines
`
`“slave” as a “component in a system that does not act independently, but only
`
`under the control of another similar component.” (Ex. 2305 at 932 (emphasis
`
`added); see also Ex. 2302 at ¶43.)
`
`-10-
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`

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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`By contrast, Petitioner has proposed a construction of “master” in related
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`proceedings (e.g., IPR2014-00518) that would be satisfied by a device that merely
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`performed polling, even if it failed to control communications with a slave. Such a
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`construction is inconsistent with the specification. To be sure, a master typically
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`performs at least polling, because “any unilateral transmission by a trib that has not
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`been addressed by the master transceiver will violate the multipoint protocol.”
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`(Ex. 1301, 5:4-6; see also Ex. 2302 at ¶46.) Furthermore, the master is the
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`recipient of all data from the slave:
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`At the end of trailing sequence 38, trib 26a transmits training
`sequence 42 to initiate a communication session with master
`transceiver 24. Because master transceiver 24 selected trib 26a for
`communication as part of training sequence 34, trib 26a is the only
`modem that will return a transmission. Thus, trib 26a transmits data
`44 destined for master transceiver 24 followed by trailing sequence 46
`to terminate the communication session.
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`(Ex. 1301, 4:27-34.) This makes it clear that not only does the master select a
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`slave (a trib) for transmission, but also that the trib communicates the data back to
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`the master. Thus, the master is in complete control of slave communications. If the
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`master performed only polling without controlling the communications, then the
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`trib would have to be able to transmit to other tribs, and not just the master. (Ex.
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`2302 at ¶47.)
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`

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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`Turning to the definition of “slave,” there is no support in the ’580 Patent
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`that requires that all aspects of the slave’s functionality be controlled by the
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`master. (Ex. 2302 at ¶48.) Rather, the control the master exerts is over the slave’s
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`network communication behavior. (Id.) For example, the ’580 Patent discloses
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`that “…a master controls the initiation of its own transmission to the tribs and
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`permits transmission from a trib only when that trib has been selected.” (Ex. 1301,
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`4:7-9); see also Ex. 2302 at ¶48.)
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`Consistent with the specification of the ’580 Patent, the term “master”
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`therefore means “a device which controls all communications with other devices
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`(i.e., slaves) in a network,” and the term “slave” means “a device whose network
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`communications are controlled by a master.” (Ex. 2302 at ¶¶50-51.)
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`IV. SUMMARY OF ALLEGED PRIOR ART
`A. Admitted Prior Art (“APA”)
`Petitioner alleges that the ’580 Patent describes certain prior art systems
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`including a multipoint communication system including a master transceiver and a
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`plurality of tributary transceivers. (See Paper 4 at 37-38; Ex. 2302 at ¶52.)
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`B. U.S. Patent No. 5,706,428 Of Boer (“Boer”)
`Boer discloses a LAN that uses the opposite of a master/slave configuration,
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`namely, “the LAN 10 operates on a CSMA/CA (carrier sense multiple access with
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`collision avoidance) protocol.” (Ex. 1304 at 4:25-27; see also Ex. 2302 at
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`¶¶59,95.) Boer describes the CSMA/CA protocol as follows:
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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`According to this protocol, if a station wishes to transmit a message, it
`first senses the transmission channel. If the channel is sensed as free
`and has been free for a predetermined, interframe spacing time, then
`the message is transmitted immediately. If the channel is sensed as
`busy, then access is deferred until the channel becomes free and
`remains free for the short interframe spacing time.
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`(Ex. 1304 at 4:27-34.)
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`This CSMA/CA protocol, which allows messages to be initiated by any
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`station, ensures efficient communication between the various stations, and is
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`central to the teachings of Boer. (Ex. 2302 at ¶94.)
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`Boer is directed to a wireless LAN (local area network ) that “includes first
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`stations adapted to operate at a 1 or a 2 Mbps [Megabit per second] data rate and
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`second stations adapted to operate at a 1, 2, 5, or 8 Mbps data rate.” (Ex. 1304 at
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`Abstract; see also Ex. 2302 at ¶58.)
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`Figure 4 of Boer, which is reproduced below, shows the format of a typical
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`message 200 used in the LAN 10. (Ex. 1304 at 3:42-43; Ex. 2302 at ¶57.)
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`Boer explains that “the preamble 216 and header 218 are always transmitted
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`at the 1 Mbps rate using DBPSK modulation.” (Ex. 1304 at 3:56-58; Ex. 2302 at
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`¶58.) “The subsequent DATA field 214, however, may be transmitted at a selected
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`-13-
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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`one of the four possible rates 1, 2, 5, and 8 Mbps, using the modulation and coding
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`discussed hereinabove.” (Ex. 1304 at 3:57-62; Ex. 2302 at ¶58.)
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`C. The Upender/Koopman Article
`Petitioner alleges that the Upender/Koopman article (Ex. 1317) provided
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`motivation for one of skill in the art to implement the system of Boer as a
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`master/slave configuration due to the perceived advantages of simplicity and
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`determinacy of master/slave systems. (See Ex. 1318 at ¶103.) As discussed in Dr.
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`Koopman’s Declaration, this article was adapted from a paper written by Barghav
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`Upender and Philip Koopman for an Embedded Systems Conference in 1993, and
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`discusses tradeoffs made when selecting a communications protocol for embedded
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`communication networks. (Ex. 2302 at ¶¶62-63.) The Upender/Koopman article
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`disfavors master/slave systems because “they [do not] provide sufficient
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`flexibility.” (Ex. 2302 at ¶70.) The article instead concludes that a CSMA system
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`similar to the one used in Boer “is a good choice.” (Ex. 1317 at 56; see also 2302
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`at ¶84.)
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`V. LEGAL STANDARDS
`A.
`Petitioner Has The Burden Of Proof
`The Petitioner has the burden of proving unpatentability by a preponderance
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`of the evidence. See 35 U.S.C. §316(e). Petitioner cannot meet its burden. Given
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`the failure of Petitioner’s expert to carefully read and consider the entirety of the
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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`Upender/Koopman article, Petitioner has failed to present any reliable evidence of
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`obviousness in these proceedings.
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`Legal Standard For Obviousness
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`B.
`“Obviousness requires more than a mere showing that the prior art includes
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`separate references covering each separate limitation in a claim under
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`examination.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir.
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`2011) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)); MPEP §
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`2141 (8th Ed., Rev. 9, August 2012). “Rather, obviousness requires the additional
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`showing that a person of ordinary skill at the time of the invention would have
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`selected and combined those prior art elements in the normal course of research
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`and development to yield the claimed invention.” Id. (citing KSR, 550 U.S. at
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`421).
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`The Supreme Court in KSR explained that “because inventions in most, if
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`not all, instances rely upon building blocks long since uncovered, and claimed
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`discoveries almost of necessity will be combinations of what, in some sense, is
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`already known,” it is important to identify a reason that would have prompted a
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`person of ordinary skill to combine the prior art elements in the way claimed in the
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`challenged patent. KSR, 550 U.S. at 418-19.
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`Importantly, the Federal Circuit warns that “[c]are must be taken to avoid
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`hindsight reconstruction by using ‘the patent in suit as a guide through the maze of
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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`prior art references, combining the right references in the right way so as to
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`achieve the result of the claims in suit.’” In re NTP, Inc., 654 F.3d 1279, 1299
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`(Fed. Cir. 2011) (quoting Grain Processing Corp. v. American-Maize Prods. Co.,
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`840 F.2d 902, 907 (Fed. Cir. 1988)); see also KSR, 550 U.S. at 421 (“A factfinder
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`should be aware…of the distortion caused by hindsight bias and must be cautious
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`of arguments reliant upon ex post reasoning.”). To that end, “[a] reason for
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`combining disparate prior art references is a critical component of an obviousness
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`analysis; ‘this analysis should be made explicit.’” InTouch Tech., Inc. v. VGO
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`Comm’s, Inc., 2014 U.S. App. LEXIS 8745, *58 (Fed. Cir. May 9, 2014) (citing
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`KSR, 550 U.S. at 418); see also Wowza Media Systems, LLC et al. v. Adobe
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`Systems Inc., IPR2013-00054, Paper No. 12 at 15 (denying institution of IPR,
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`noting that “KSR does not authorize conclusory results”).
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`Consistent with the Federal Circuit, the Board has also held in numerous
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`orders denying institution that “a petitioner must show some reason why a person
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`of ordinary skill in the art would have thought to combine particular available
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`elements of knowledge, as evidenced by the prior art, to reach the claimed
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`invention.” In Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR2013-00183,
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`Paper No. 12 a