Paper No. ________
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________
`
`
`ST. JUDE MEDICAL, INC., ST JUDE MEDICAL S.C., INC. AND
`PACESETTER, INC.
`
`
`Petitioners
`
`v.
`
`ATLAS IP, LLP
`
`Patent Owner
`
`
`Patent No. 5,371,734
`
`Issue Date: December 4, 1994
`
`
`Title: Medium Access Control Protocol For Wireless Network
`
`
`
`
`
`
`
`DECLARATION OF DR. ROBERT HEILE
`
`
`
`ST. JUDE 1009
`
`1
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________
`
`
`ST. JUDE MEDICAL, INC., ST JUDE MEDICAL S.C., INC. AND
`PACESETTER, INC.
`
`
`Petitioners
`
`v.
`
`ATLAS IP, LLP
`
`Patent Owner
`
`
`Patent No. 5,371,734
`
`Issue Date: December 4, 1994
`
`
`Title: Medium Access Control Protocol For Wireless Network
`
`
`
`
`
`
`
`DECLARATION OF DR. ROBERT HEILE
`
`
`
`ST. JUDE 1009
`
`1
`
`
`
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`
`I, Robert Heile, hereby declare as follows:
`
`1. I have been retained by St. Jude Medical, Inc. to serve as an expert in the
`
`inter partes review proceeding identified above. I am being paid my normal
`
`hourly consulting fee.
`
`II. QUALIFICATIONS
`
`2. I have been involved in the field of data communications and wireless
`
`communications for over thirty (30) years. I hold a Doctorate degree in
`
`Physics from the Johns Hopkins University, which I received in 1973. Over
`
`the last decade plus, my work experience includes consulting for several
`
`high profile companies on matters relating to wireless communications and
`
`standards. I was also a founder of the ZigBee Alliance, an industry alliance
`
`devoted to global standards for Wireless Sensor Networks and served as its
`
`Chairman and CEO for 11 years. Prior to that I was responsible for Wireless
`
`Opportunity Business Development at Verizon Communications (formerly
`
`Bell Atlantic, GTE and BBN) and served as an internal consultant on
`
`wireless data strategies and plans as well as performing technical and
`
`business due diligence on potential acquisitions. In the early 1990s, I was a
`
`co-founder and served as Vice President, Engineering and Manufacturing
`
`with Windata, Inc., an early developer and manufacturer of wireless local
`
`2
`
`
`
`area networking equipment. In the 1980s I was with Codex Corporation, a
`
`subsidiary of Motorola, Inc. where I served in various capacities including
`
`Vice President/General Manager of Business Operations and Central
`
`Technology Services and Vice President/General Manager of Transmission
`
`Products, the company’s largest and most profitable business unit
`
`specializing in the world’s most advanced modems and data
`
`communications products. I am currently Chairman Emeritus & Chief
`
`Technologist for the ZigBee Alliance and also continue with an independent
`
`consulting practice.
`
`3. Among other things, I am also currently Chair of the IEEE 802.15, the IEEE
`
`standards working group on Wireless Personal Area Networks (WPANs), a
`
`group that I helped found in 1999, and also Chair of the IEEE 2030.5, an
`
`IEEE group devoted to developing Smart Energy application standards for
`
`the SmartGrid. The IEEE is the Institute for Electrical and Electronics
`
`Engineers.
`
`4. In 1990, I was one of the founding members of the 802.11 working group of
`
`IEEE dedicated to establishing the standards for wireless LANS (the "IEEE
`
`802.11 Working Group").
`
`5. I was a voting member of the IEEE 802.11 Working Group beginning in
`
`September 1990. From then and through the present day, I have attended
`
`3
`
`
`
`numerous working group meetings of the IEEE 802.11 Working Group. I
`
`would estimate I have attended over 100 meetings of 802.11 over the last 24
`
`years.
`
`6. I believe that I have sufficient knowledge and expertise to testify as to the
`
`presentation, publication, distribution and public accessibility of papers
`
`presented to the IEEE 802.11 Working Group, including Natarajan, et al.
`
`"Medium Access Control Protocol for Wireless LANs (An Update)" (1992),
`
`which I will refer to as "Natarajan 1992", and also as to the general policies
`
`and practices of the IEEE 802.11 Working Group in 1990-1992 as those
`
`policies and practices related to the presentation, publication, distribution
`
`and accessibility of papers presented to the group.
`
`III. SUMMARY OF OPINIONS
`
`7. It is my opinion that Natarajan 1992 would have been accessible to the
`
`public interested in the art based on its presentation, publication and
`
`distribution at the March 1992 meeting of the IEEE 802.11 Working Group
`
`and its general availability to those in the field subsequent to that
`
`presentation.
`
`
`
`
`
`
`
`4
`
`
`
`
`
`IV. BASIS FOR OPINIONS
`
`A. Background of the IEEE
`
`8. The IEEE is the world's largest technical professional society, and was at the
`
`relevant time period (1990-1992). There are currently over 430,000
`
`members of the IEEE, in more than160 countries. See Exh. 1010,
`
`http://www.ieee.org/about/today/index.html.
`
`9. The IEEE's Constitution defines the purpose of the organization as including
`
`"scientific and educational, directed toward the advancement of the theory
`
`and practice of electrical, electronics, communications and computer
`
`engineering, as well as computer science, the allied branches of engineering
`
`and the related arts and sciences; means to these ends include, but are not
`
`limited to, the holding of meetings for the presentation and discussion of
`
`professional papers, the publication and circulation of works of literature,
`
`science and art pertaining thereto and any other activities necessary, suitable
`
`and proper for the fulfillment of these objectives."
`
`See Exh. 1025, http:/ieee.org/documents/ieee_constitution_and_bylaws.pdf.
`
`10. In the 1990-1992 timeframe (and today), the IEEE was well-known to
`
`persons interested in data communications and wireless computing.
`
`11. The IEEE is a leading, ANSI (American National Standards Institute)
`
`5
`
`
`
`accredited organization for the development of global standards and was
`
`also recognized as such in the 1990-1992 timeframe. Currently, the IEEE
`
`has developed over 900 active industry technical standards, including
`
`standards relating to electric power and energy, biomedical technology and
`
`healthcare, information technology, information assurance,
`
`telecommunications, consumer electronics, transportation, aerospace, and
`
`nanotechnology. By the 1990-1992 timeframe, the IEEE had already
`
`developed standards for Ethernet (802.3) and Token-ring (802.5) and was
`
`working on various other network topologies.
`
`12. The IEEE also served in the 1990-1992 timeframe as a major publisher of
`
`scientific journals and organizer of conferences, workshops, and symposia
`
`(many of which have associated published proceedings). Today, the IEEE
`
`estimates that it publishes nearly a third of the world's technical literature in
`
`electrical engineering, computer science, and electronics. See Exh. 1010.
`
`13. The IEEE generally does not (and did not in 1990-1992) create its own
`
`research. It is and was a professional organization that coordinates journal
`
`peer-review activities and holds subject-specific conferences in which
`
`authors present their research. The IEEE then publishes the authors' papers
`
`in journals and other proceedings, and authors are required to grant IEEE
`
`unrestricted rights for works they submit for publication.
`
`6
`
`
`
`14. The IEEE was well known to those involved in technical fields, in 1990 and
`
`before. People in a technical field, either versed or trying to become
`
`knowledgeable, would have known about the IEEE as a resource. This is
`
`also true in the field of wireless LANs, which was an emerging technology
`
`and where there were limited standards activity outside of the IEEE. The
`
`fact that IEEE was already known for its Ethernet and Token Ring LAN
`
`standards would only increase this awareness.
`
`B. Background of the IEEE 802.11 Working Group
`
`15. In the late 1980s, the Federal Communications Commission (FCC)
`
`established rules (now contained in FCC Part 15) which allowed three of the
`
`already existing ISM bands (Industrial, Scientific, Medical) to also be used
`
`for unlicensed communication equipment. These three ISM bands are:
`
` 902 to 928 MHz
`
` 2.400 to 2.4835 GHz
`
` 5.725 to 5.875 GHz
`
`This led to the development of many proprietary, wireless data network
`
`technologies that lacked widespread availability/adaptation.
`
`16. In the same timeframe, many of the players in this emerging field of wireless
`
`data communications realized that a standard was needed for the market to
`
`really develop and that IEEE802 was a logical place to do that since it
`
`7
`
`
`
`developed the corresponding wired communications standards for LANs. To
`
`that end, a Study Group was formed in the late 1980s in IEEE802.4 to
`
`produce a Project Authorization Request (PAR). The resulting PAR was
`
`approved by the 802 Executive Committee and by the IEEE in July 1990. A
`
`new 802 Working Group was formed to manage the project. It met for the
`
`first time in September 1990. This "802.11" (next number in the sequence at
`
`the time) Working Group focused on defining a reliable, fast, inexpensive
`
`and robust wireless solution that could grow into a standard with widespread
`
`acceptance, using one or more of the now available ISM bands.
`
`17. The formation and ongoing activities of the 802.11 Working Group were
`
`well-publicized in the 1990-1992 timeframe starting with a News Release in
`
`July 1990. Exhs. 1016-1022. For example, through the IEEE, the News
`
`Release attached as Exh. 1022 was sent to more than 200 editors of technical
`
`journals and trade publications such as those covering electrical engineering
`
`and electronics, radio frequency (RF) systems, and data communications and
`
`networking.
`
`18. As another example, 802.11 Working Group Chairperson Vic Hayes
`
`published an article entitled "Standardization Efforts for Wireless LANs" in
`
`the November 1991 issue of IEEE Network Magazine. Exh. 1016. In the
`
`article, Mr. Hayes noted that the 802.11 Working Group was established in
`
`8
`
`
`
`July of 1990. Exh. 1016, p. 19, right-hand column near top. Mr. Hayes
`
`stated that the Working Group was "recognized as the focal point for the
`
`development of LAN standards and is respected for its expertise and
`
`productivity within the IEEE. Their work is appreciated internationally".
`
`Exh. 1016, p. 20, left column, middle. In November 1991, Mr. Hayes
`
`reported that the Working Group had "over 70 voting members and a
`
`mailing list of 300 addresses", with members from "the U.S. as well as
`
`Canada, Japan, Australia and Europe" Exh. 1016, p. 20, right column near
`
`top. Mr. Hayes further stated that "Most major computer manufacturers
`
`participate in this group". Id. Mr. Hayes noted that "The working group in
`
`IEEE is an open forum; anyone can attend the meetings, but participation in
`
`the discussions may be restricted by the chairman to members. Exh. 1016, p.
`
`20, footnote 2. Mr. Hayes further stated that the 802.11 Working Group
`
`communicated with other standards organizations, such as ETSI and ECMA.
`
`Exh. 1016, p. 19, right column near top.
`
`19. Chairperson Hayes published a similar article in 1992 (Exh. 1017), entitled
`
`"Radio-LAN Standardization Efforts". The article was included in the
`
`proceedings for the IEEE Conference on Wireless LAN Implementation.
`
`(Exh. 1018). In that article, Mr. Hayes reported that the Working Group had
`
`92 voting members and a mailing list of 500 addresses. Exh. 1017, p. 3,
`
`9
`
`
`
`right column near middle.
`
`20. Simon Black, then a consultant for Symbionics, Ltd., published in 1992 an
`
`article entitled "An Overview of Standards Work for Radio LANs" (Exh.
`
`1019). The paper was presented at the IEEE Colloquium on Radio LANs in
`
`May of 1992. Exh. 1020. In the article, Mr. Black states (Exh. 1019, page.
`
`1, middle):
`
`"Working Group IEEE P802.11 was formed in September 1990
`
`to develop a standard covering medium access control (MAC)
`
`and physical (PHY) layer specifications for wireless LANs.
`
`The group is part of IEEE Project 802, which is chartered by
`
`the IEEE to produce standards for Local and Metropolitan Area
`
`Networks. Many IEEE 802 standards, including 802.3
`
`(Ethernet) and 802.5 (Token-Ring), have gained wide market
`
`acceptance and have been adopted by ISO as International
`
`Standards. There are currently some 70 voting members of
`
`802.11 with a further 200 observers, clearly demonstrating
`
`the scale of interest in a wireless LAN standard." (emphasis
`
`added).
`
`21. It may be important to note for clarity's sake that Mr. Black’s reference to
`
`the formation of 802.11 is actually referring to the first meeting of the WG.
`
`The actual formation occurred earlier with the approval of the project in July
`
`1990.
`
`
`
`10
`
`
`
`22. Mr. Black also stated that "Given the level of participation in both the IEEE
`
`and ETSI groups, many organizations are clearly confident that there will be
`
`a considerable market for radio LANs". (Exh. 1019, p. 3, bottom). Mr.
`
`Black also noted the coordination among standards-setting organization,
`
`stating "The Group [ETSI] was aware of the work already underway within
`
`the IEEE P802.11 Wireless LAN Working Group and stressed the need for
`
`active communication to be maintained with any new European
`
`standardization activity." Exh. 1019, p. 2, middle.
`
`23. R.W. Gibson, an employee of Boeing, published an article in Computer
`
`Standards & Interfaces in 1991. Exh. 1021. The article was entitled "IEEE
`
`802 standardization efforts". In the article, Mr. Gibson notes that the 802.11
`
`Working Group was part of the larger IEEE 802 project. Exh. 1021, Fig. 1
`
`and p. 202, left column. The IEEE 802 project had "informational and
`
`liaison representation with many other standards bodies." Exh. 1021, p. 195,
`
`right column, middle. This was done "to insure that the knowledge gained
`
`in developing standards or the implementation of standards is shared in order
`
`to further enhance the organization's work." Exh. 1021, p. 196, left column.
`
`Mr. Gibson discusses the organization of Project 802 and its working groups
`
`(Exh. 1021, pp. 196-197), and notes that Working Groups accept papers or
`
`proposals from individuals for consideration by the group. Exh. 1021, p.
`
`11
`
`
`
`196, left column.
`
`24. Generally, since its inception, the 802.11 Working Group has met six times a
`
`year. Three of those meetings (referred to as 802 Plenary meetings and held
`
`in March, July, November) are in conjunction with the entire 802
`
`organization and all of its active WGs and Committees. It is an opportunity
`
`to broaden participation to the entire 802 community. The remaining three
`
`meetings, called interim meetings, are held in January, May, and September.
`
`In the 1990-1998 timeframe, these meetings were only 802.11 but, like the
`
`Plenary Meetings, were open to any interested party as long as you
`
`registered and paid any applicable fee. The meetings took place during one
`
`week and lasted four and one half days, Monday through Thursday plus a
`
`half-day on Friday.
`
`C. Practices and Procedures of the IEEE 802.11 Working Group Relating
`to the Presentation of Papers
`
`25. In the 1990-1992 time period, a person wishing to present a paper at a
`
`meeting would, in advance of the meeting, contact the then Chair, Vic
`
`Hayes. Mr. Hayes would provide a Document number, and the presenter
`
`would include that number in the upper right hand corner of the paper. The
`
`date of the presentation would be printed in the upper left hand corner of the
`
`paper. At the meeting that function of providing document numbers was
`
`handled by a volunteer designated at the opening meeting.
`
`12
`
`
`
`26. Each presenter was required to bring a sufficient number of copies of the
`
`paper so that each person attending could receive a copy at the meeting. The
`
`papers were distributed into folders for each person attending the meeting.
`
`27. On average at between 50 and 100 people would attend any given meeting in
`
`the 1990-1992 timeframe.
`
`28. Following the meeting, a copy of each paper presented was distributed to
`
`each voting member of the 802.11 Working Group, whether that person had
`
`attended the meeting or not. Additionally copies were sent the members of
`
`the press, regulators and other parties having declared an interest in being on
`
`the distribution. A full set of papers was also sent to IEEE for archiving and
`
`to Alpha Graphics, a document order service in Phoenix, from whom, any
`
`interested party could order what papers they wanted. See Exh. 1023.
`
`29. Each paper presented at a meeting was also indexed in a "Document Index"
`
`included and published with the minutes of the meeting, and also retained by
`
`Mr. Hayes.
`
`30. The meetings of the 802.11 Working Group were open to anyone who
`
`wished to attend, including non-Members.
`
`31. As a prerequisite to presenting a paper to the Working Group, a presenter
`
`had to agree that the information therein would not be treated as
`
`Confidential and, rather, would be released to the public domain and
`
`13
`
`
`
`publicly disclosed to and by the Group.
`
`32. At any time, any person seeking information about the Working Group,
`
`whether a member of the 802.11 Working Group or not, could contact Mr.
`
`Hayes and request access to the Document Indexes and/or any of the papers
`
`that had been presented to the Working Group or could obtain them directly
`
`from Alpha Graphics
`
`33. In 1992 there were approximately 79 voting members of the 802.11
`
`Working Group. See ¶42, below. These members included representatives
`
`from corporations, universities, and trade groups. It is my impression from
`
`the time that most people who were interested in wireless networking were
`
`aware of the formation and existence of the 802.11 Working Group.
`
`34. Any person who attended any meeting of the 802.11 Working Group would
`
`have been familiar with these procedures for accessing past presentation
`
`papers.
`
`D. Publication of the Natarajan 1992 Article in March 1992
`
`35. I have reviewed the IEEE Document No.: IEEE P802.11/92-39, Medium
`
`Access Control Protocol for Wireless LANS (An Update), by K.S.
`
`Natarajan, C.C. Huang, and D.F. Bantz ("Natarajan 1992"). This document
`
`is provided as Exhibit 1011.
`
`36. I have also reviewed the Tentative Minutes of the IEEE P802.11 Working
`
`14
`
`
`
`Group ("Meeting Minutes (IEEE P802.11-92/45)"). This document is
`
`attached as Exhibit 1015.
`
`37. The "March 9, 1992" date in the upper left hand corner of the Natarajan
`
`1992 indicates that the paper was presented at the March meeting of the
`
`802.11 Working Group. See Exh. 1015. That meeting was held in Irvine,
`
`California. Id.
`
`38. Dr. Natarajan's attendance and presentation are both confirmed by the
`
`Meeting Minutes, which include Natarajan 1992 on the Document List, and
`
`also identify Dr. Natarajan as attending that meeting. Id. pp. 30, 32.
`
`39. According to the Meeting Minutes (IEEE P802.11-92/45), there were 102
`
`attendees present at the March 1992 meeting of the IEEE 802.11 Working
`
`Group. See Exh. 1015, pp. 28-31.
`
`40. The attendees included representatives from Xircom, Motorola, HUGHES
`
`Network Systems, Hitachi, NCR Systems, Fairchild Data Corp., ATT Bell
`
`Laboratories, Hewlett Packard, Digital Equipment Corporation, IBM, Apple
`
`Computer, Intel, Honeywell, National Semiconductor, and Stanford
`
`University. Id.
`
`41. Consistent with the practices and procedures of the IEEE 802.11 Working
`
`Group, at least 102 copies of Natarajan 1992 would have been distributed to
`
`those attendees of the meeting. This is confirmed in the Meeting Minutes
`
`15
`
`
`
`(IEEE P802.11-92/45), Exh. 1015, p. 2, "Document distribution is done
`
`using pigeon holes – you will find your copies and messages in the
`
`referenced location in the expanding file folders." (emphasis added.)
`
`42. In March 1992 there were 79 voting members of the IEEE 802.11 Working
`
`Group. See Exh. 1015, p. 4.
`
`43. Further consistent with the practices and procedures of the IEEE 802.11
`
`Working Group, copies of Natarajan 1992 would have been sent to each of
`
`the voting members of the group following the meeting, generally within
`
`approximately 30 days as well as to members of the press, regulators on
`
`other parties on the distribution list maintained by Mr. Hayes.
`
`44. The public and non-confidential nature of the papers presented at the March
`
`1992 Meeting of the IEEE 802.11 Working Group, including Natarajan
`
`1992, is articulated in the Meeting Minutes (IEEE P802.11-92/18), Exh.
`
`1025, p. 2, 5, "Vic Hayes stated that the meetings are open and anyone can
`
`attend. The information is in the public domain."
`
`45. This is also confirmed in the rules governing the 802.11 Working Group in
`
`the 1991-1993 time period, Exh. 1024, p. 5, which state:
`
`"4.3.4 Meetings and Participation
`
`Working Group meetings are open to anyone. Only members have
`
`the right to participate in the discussions. The privilege of non-
`
`members to participate in discussions may be granted by the
`
`16
`
`
`
`Chairperson." (emphasis added)
`
`46. I have reviewed the Declaration of Dr. Kadathur S. Natarajan wherein he
`
`confirms that he attended the March 1992 IEEE 802.11 Working Group
`
`meeting, orally presented the paper at the meeting, and distributed copies of
`
`the papers to the attendees of the meeting, as was required by the rules at the
`
`time and consistent with the routine practice of the 802.11 Working Group
`
`during the relevant time period.
`
`
`
`I declare under penalty of perjury under the laws of the United States of
`
`America that the foregoing is true and correct. All statements made of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true. I understand that willful false statements and the like are
`
`punishable by fine or imprisonment, or both (18 U.S.C. § 1001).
`
`
`Executed on June 6, 2014
`
`
`____________________________
`Robert Heile
`
`
`
`
`
`
`17
`
`
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