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`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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`EMERSON ELECTRIC CO.,
`Petitioner,
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`v.
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`SIPCO, LLC,
`Patent Owner.
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`______________________
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`Case IPR2015-01973
`Patent 8,013,732
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`_____________________
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`PETITIONER’S RESPONSE TO OBSERVATIONS
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`Case IPR2015-01973
`Patent 8,013,732
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`Petitioner has the following responses to each of Patent Owner’s
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`observations on the September 8, 2016 cross-examination testimony of Dr. Stephen
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`Heppe (Paper 17).1
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`Response to Observation 1: The testimony cited by Patent Owner is about
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`the meaning of the word “function,” not the more specific term “function code.”
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`1 In each of its observations, Patent Owner fails to follow the form for
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`observations set forth in the Office Patent Trial Practice Guide: “In exhibit _, on
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`page _ of _, lines _, the witness testified _. This testimony is relevant to the _ on
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`page _ of _. The testimony is relevant because _.” 77 Fed. Reg. 48768 (emphasis
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`added). In particular, each of Patent Owner’s observations lacks at least one of
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`these explanations of relevance and therefore fails to particular identify the reasons
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`why the cited testimony is relevant to arguments in the proceeding. Accordingly,
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`each of Patent Owner’s observations should be expunged or not considered on the
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`basis that Petitioner is unable to respond fully to Patent Owner’s observations.
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`Furthermore, none of Petitioner’s responses herein should be construed as an
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`admission or acknowledgement how Patent Owner’s observations are relevant to
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`any opinion or argument in this proceeding. Petitioner also objects to each of the
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`observations because Patent Owner’s statement of relevance exceeds the
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`limitations set forth in the Trial Practice Guide.
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`-1-
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`Patent Owner did not advise the Board of all relevant testimony. Dr. Heppe
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`testified that part of the meaning of the term “function” to those in the relevant art
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`would include a code for an action or a type of data. Dr. Heppe also specifically
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`testified that he had not attempted to fully construe the term “function” in light of
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`the pertinent intrinsic evidence, and would not do so in the middle of the
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`deposition. Ex. 2009, pp. 10:22-12:11; 12:21-16:2. The testimony cited by Patent
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`Owner is not relevant to the issues in this proceeding because, contrary to Patent
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`Owner’s implication, Dr. Heppe testified and explained that Burchfiel discloses the
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`claimed “function code.” Ex. 2009, pp. 22:11-24:12; 39:15-42:14.
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`Response to Observation 2: The testimony cited by Patent Owner is about
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`the meaning of the word “code,” not the more specific term “function code.”
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`Patent Owner did not advise the Board of all relevant testimony. Dr. Heppe
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`testified that part of the meaning of the term “code” to those in the relevant art
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`would include a software code, an access code, personal identification number,
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`pseudo-random noise code, command code, op code, frequency hopping code, and
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`other codes. Dr. Heppe also specifically testified that he had not attempted to fully
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`construe the term “code” in light of the pertinent intrinsic evidence, and would not
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`do so in the middle of the deposition. Ex. 2009, pp. 16:4-17:11; 19:6-21:5. The
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`testimony cited by Patent Owner is not relevant to the issues in this proceeding
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`because, contrary to Patent Owner’s implication, Dr. Heppe testified and explained
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`-2-
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`Patent 8,013,732
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`that Burchfiel discloses the claimed “function code.” Ex. 2009, pp. 22:11-24:12;
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`39:15-42:14.
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`Response to Observation 3: The testimony cited by Patent Owner is
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`directed to whether any prior art reference relied upon by Petitioner discloses
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`codes that are “unique” to a particular device and no other device. Contrary to
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`Patent Owner’s incomplete citation, Dr. Heppe testified that Burchfiel, for
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`example, disclosed codes that are unique to a single packet radio and no other. Ex.
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`2009, pp. 34:3-35:9. Dr. Heppe also testified that the cited prior art discloses
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`function codes that are unique to a transceiver. Ex. 2009, pp. 36:10-39:13.
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`Response to Observation 4: The testimony cited by Patent Owner is
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`directed to whether the Admitted Prior Art teaches a function code that is unique to
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`a transceiver. This testimony is not relevant to any issue in this proceeding
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`because Petitioner did not rely on the Admitted Prior Art for disclosure of a
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`function code that is unique to a transceiver. Instead, Burchfiel and Kahn teach or
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`suggest that claim feature. Petition, p. 49-50; Ex. 2009, pp. 36:10-39:13; 46:5-
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`47:22.
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`Response to Observation 5: The testimony cited by Patent Owner is
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`directed to whether Figure 3D of the ‘732 patent is part of the Admitted Prior Art.
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`From this limited testimony, Patent Owner extrapolates to conclude that Dr. Heppe
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`does not understand what constitutes the Admitted Prior Art. Patent Owner did not
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`advise the Board of all relevant testimony. Dr. Heppe testified that he did not
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`undertake to determine whether Figure 3D, or parts of Figure 3D, were part of the
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`Admitted Prior Art. Ex. 2009, 53:18-57:20. The testimony cited by Patent Owner
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`is not relevant to any issue in this proceeding because Dr. Heppe relied upon other
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`aspects of the ‘732 patent specification as disclosure of the relevant Admitted Prior
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`Art.
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`Response to Observation 6: The testimony cited by Patent Owner is
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`whether Exhibit 1009 describes aspects of a wireless communication protocol or a
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`wired communication protocol. Although Dr. Heppe testified that he believed that
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`the exhibit describes aspects of a wired communication protocol, that does not
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`render the teachings of Exhibit 1009 irrelevant to the patentability of Patent
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`Owner’s challenged claims. Exhibit 1009 (coupled with Exhibit 1010) teach that it
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`was known by those of skill in the art that communication data packets could
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`include function codes based on, or in response to, data sensed by a sensor. Dr.
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`Heppe never testified that the teachings of Exhibit 1009 could not be used in a
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`wireless communications network/device as recited in the challenged claims.
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`Response to Observation 7: The testimony cited by Patent Owner is
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`whether Exhibit 1010 describes aspects of a wireless communication protocol or a
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`wired communication protocol. First, the cited testimony only states that Dr.
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`Heppe does not read Exhibit 1010 as disclosing a network of wireless devices.
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`Even if Exhibit 1010 describes aspects of a wired communication protocol, that
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`does not render the teachings of Exhibit 1010 irrelevant to the patentability of
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`Patent Owner’s challenged claims. Exhibit 1010 (coupled with Exhibit 1009)
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`teach that it was known by those of skill in the art that communication data packets
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`could include function codes based on, or in response to, data sensed by a sensor.
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`Dr. Heppe never testified that the teachings of Exhibit 1010 could not be used in a
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`wireless communications network/device as recited in the challenged claims.
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`Dated: September 30, 2016
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`Respectfully submitted,
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`/s/ Donald L. Jackson
`Donald L. Jackson (Reg. No. 41,090)
`DAVIDSON BERQUIST JACKSON &
`GOWDEY, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Tel: 571-765-7700
`Fax: 571-765-7200
`djackson@dbjg.com
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`Counsel for Petitioner
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`-5-
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`Case IPR2015-01973
`Patent 8,013,732
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a true and correct copy of Petitioner’s
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`Response to Observations has been electronically served on the Patent Owner’s
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`attorneys on the 30th day of September, 2016 at the following addresses:
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`Dr. Gregory J. Gonsalves
`Reg. No. 43,639
`2216 Beacon Lane
`Falls Church, VA 22043
`Email: Gonsalves@gonsalveslawfirm.com
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`James E. Schutz
`Reg. No. 48,658
`Troutman Sanders LLP
`600 Peachtree St., Suite 5200
`Atlanta, GA 30308
`Email: james.schutz@troutmansanders.com
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`Respectfully submitted,
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`/s/ Donald L. Jackson
`Donald L. Jackson
`Registration No. 41,090
`Counsel for Petitioner
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`-6-
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