DECLARATION OF DR. STEPHEN HEPPE REGARDING ‘732 PATENT
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`1.
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`I offer this Declaration on behalf of Petitioner Emerson, in regard to
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`my opinions regarding the issues discussed herein.
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`I.
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`Scope of Declaration, Summary of Opinion, and Background
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`2.
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`I have been asked to provide my analysis and opinion regarding
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`certain issues raised in the Patent Owner’s Response and the Declaration of Dr.
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`Almeroth.
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`3.
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`I have previously provided information regarding my qualifications
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`and experience, my opinion regarding the level of ordinary skill associated with the
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`‘732 Patent, and the meaning of certain claim terms used in the asserted claims.
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`This information, and these opinions, are unchanged.
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`II. Opinions
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`4.
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`Both Patent Owner (“PO”) and Dr. Almeroth attempt to distinguish
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`the ‘732 Patent over the prior art by, in part, distinguishing between “function
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`code” and “address”. See, e.g., PO Response pp. 21-27, Almeroth Declaration ¶¶
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`128-143. As I understand the argument presented, it appears that PO and Dr.
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`Almeroth associate the term “address”, as used in the ‘732 Patent, with the address
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`or ID of a transceiver. They argue that this is different from a “function code” as
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`used in the ‘732 Patent, and therefore, a “function address” as used in the prior art
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`1.
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`I offer this Declaration on behalf of Petitioner Emerson, in regard to
`
`my opinions regarding the issues discussed herein.
`
`I.
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`Scope of Declaration, Summary of Opinion, and Background
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`2.
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`I have been asked to provide my analysis and opinion regarding
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`certain issues raised in the Patent Owner’s Response and the Declaration of Dr.
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`Almeroth.
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`3.
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`I have previously provided information regarding my qualifications
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`and experience, my opinion regarding the level of ordinary skill associated with the
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`‘732 Patent, and the meaning of certain claim terms used in the asserted claims.
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`This information, and these opinions, are unchanged.
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`II. Opinions
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`4.
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`Both Patent Owner (“PO”) and Dr. Almeroth attempt to distinguish
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`the ‘732 Patent over the prior art by, in part, distinguishing between “function
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`code” and “address”. See, e.g., PO Response pp. 21-27, Almeroth Declaration ¶¶
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`128-143. As I understand the argument presented, it appears that PO and Dr.
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`Almeroth associate the term “address”, as used in the ‘732 Patent, with the address
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`or ID of a transceiver. They argue that this is different from a “function code” as
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`used in the ‘732 Patent, and therefore, a “function address” as used in the prior art
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`(e.g., Burchfiel or Kahn) cannot be the claimed “function code”.
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`5.
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`In my experience, persons of skill in the art sometimes use different
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`terms to describe the same concept, and the ability of different researchers to
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`describe a process in similar but not identical terms is well-understood.
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`6.
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`Here, the linguistic and logical flaw (in the argument put forward by
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`PO and Dr. Almeroth) due to treating language as inflexible is clear based on the
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`simple fact that “address”, as used in Burchfiel in relation to the function field, is
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`not a “transceiver address”. So it is immediately clear that the narrow definition of
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`“address”, as put forward by PO and Dr. Almeroth, is incorrect at least as it relates
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`to Burchfiel.
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`7.
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`Both “code” and “address” are general terms which can also substitute
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`for “ID”, “label”, or “index” in some contexts. A POSITA will recognize
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`compound terms such as e.g. “ID code”, “memory address”, “row/column address
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`(index)”, “function name”, and “function label”. All of these are “identifiers”. In
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`the ‘732 Patent, a “function code” is an identifier for a function such as “on/off”,
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`“temperature set”, or “actual temperature”. See, e.g., ‘732 Patent, FIG. 3D. Some
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`functions may require an “argument” or “data field”. For example, the
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`“temperature set” function would typically require a data value, in addition to the
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`function code itself, to specify the desired temperature.1 In operation, the function
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`code may cause a processor to “branch” to a particular subset of code (associated
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`with the indicated function), stored in a particular subset of memory, starting with
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`a particular memory address.
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` For example, a function code indicating
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`“temperature set” might branch to a particular starting address in memory, which is
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`the start of a subset of code which instructs the processor on how to actually set a
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`temperature. In order to determine the proper starting address, the processor could
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`compare the function code to a list of known function codes, the list indicating the
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`starting addresses of particular subsets of software stored in memory. This is an
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`example of “indirect addressing”.
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`8.
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`The ‘732 patent describes the “function code” as a code corresponding
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`to an event that occurred, or a condition, or a function to be performed by a device
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`or controller receiving the code. For example, the ‘732 patent states that a
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`“[u]nique transmitter identification code 326 coupled with a function code for a
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`smoke alarm on condition is formatted by data controller 324 for transformation
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`into a RF signal ….” Id., 9:46-50. In a similar vein, in the originating
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`1 At least the “temperature set” and “actual temperature” functions, listed in FIG.
`3D, require an auxiliary data field, since the unary codes 1 and 3 cannot specify
`one of a plurality of temperatures. The “on/off” and “air/heat” functions could be
`implemented as “toggles” to avoid the need for an auxiliary data field; however, a
`POSITA would recognize that this would require knowledge of “state” on the part
`of the commanding system. This could be avoided by including an auxiliary data
`field for these functions as well. The ‘732 Patent does not describe how any of
`these auxiliary data fields are to be supported.
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`transmitter/transceiver, the ‘732 patent explains that “[l]ookup table 325 may be
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`provided to assign a given and unique function code for each button pressed.” ‘732
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`at 9:11-13. The ‘732 patent also explains that, at the gateway, “[a]nother look up
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`table may be used to associate function codes with the interpretation thereof. For
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`example, a unique code may be associated by a look up table to identify functions
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`such as test, temperature, smoke alarm active, security system breach, etc.” Id.,
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`11:47-51. The look-up tables are stored in memory. Id., 11:42-44.
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`9.
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`In Burchfiel, the “function field” contains an “address” of a particular
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`control process, which is a unique label, or ID, that “selects” the indicated process.
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`Burchfiel, p. 247. I also addressed the use of a “function field” in relation to
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`Burchfiel during my deposition (54:21 – 58:10). This is the same functionality as
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`required in the ‘732 Patent for the “function code”. Just as the “function codes” of
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`the ‘732 differentiate various functions, and can be used as an index to select a
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`particular function (e.g., in a lookup table), the “function field” of Burchfiel
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`differentiates various functions, and can be used as an index or identifier to
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`“select” a particular function.
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`10. Therefore, it is my opinion that the “address” provided by Burchfiel’s
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`“function field” satisfy the requirements of a “function code”.
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`11. The PO, at pp. 25-26 of PO Response, states that Petitioner has failed
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`to explain why one would have stored function codes in Kahn’s radio or would
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`have modified Kahn’s radio to transmit function codes. But, as a POSITA would
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`understand, the reasoning is clear from the prior discussion. In regard to the first
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`point (storing the function codes in memory), a POSITA would understand that the
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`function code is simply a string of characters that has no meaning unless it can be
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`interpreted. One obvious way to interpret a function code is to compare it with a
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`list of known function codes which allows the processor to “select” the associated
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`functionality (e.g., through indirect addressing to a particular subset of memory
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`associated with the function). The function codes must be stored in memory so
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`that the “incoming” function code can be compared to the known function codes
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`(stored in memory) in order to support the functional selection (redirection or
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`indirect addressing to specific software functionality).
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`12. As to the second point (transmitting function codes), if this is not
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`already inherent in Kahn (i.e., since Kahn can report error conditions), it would
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`have been obvious to a POSITA in view of Burchfiel. Burchfiel transmits a
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`“function field” in order to select, e.g., a “command” process or a “measurement”
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`process. Burchfiel at 247. It would have been obvious to a POSITA to transmit
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`Burchfiel’s “function fields” in order to control the devices to implement command
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`or measurement processes, for example, in a selective manner.
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`13. The HART specifications provide additional information about
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`function codes that can be exchanged between a master station (such as Kahn’s
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`“station” or a remote user on the ARPANET) and a slave station (such as a PR in
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`the PRNET). These details could be used, for example, to support the control,
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`debugging, and measurement processes noted by Kahn.
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` See my initial
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`Declaration, ¶ 35. The Fisher General Catalog (and the HART specifications) also
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`provide teachings of function codes; for example, the Fisher Catalog indicates a
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`digital output in HART format (Fisher Catalog, p. 46).
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`14. With regard to claims 28, 29, and 35, it would have also been obvious
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`to POSITA to use a function code that is “unique to the transceiver” or “specific to
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`the sensor.” At p. 27 of PO Response, and also at pp. 30-31, PO asserts that
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`Petitioner did not cite to any expert testimony or prior art documents supporting
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`why it would have been obvious to combine a transceiver’s unique ID with a
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`function code to make the function codes unique to the transceiver. But, as I noted
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`in my Declaration at ¶ 120, Burchfiel discloses “distinct predetermined function
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`codes” since these can be understood to include the destination PRU I.D. (which
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`Burchfiel teaches is unique). Burchfiel, p. 247, col. 1. The combination of a
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`unique PRU I.D., and an arbitrary set of function codes, results in a set of distinct
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`and predetermined function codes that are different from the function codes
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`associated with another wireless communication device.
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`15. Additionally, a person of skill in the art would have recognized that,
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`independent of the unique PRU I.D., it would have been obvious to assign a unique
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`set of function codes to each PRU, interpreted by look-up tables at the source and
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`destination tailored to the PRU. While this involves additional software
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`development and maintenance effort compared to a system with shared function
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`codes, it is no more than the repetition of a known element, and would be obvious
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`to a POSITA to allow for unambiguous control of the function of a particular PRU.
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`Furthermore, a POSITA would understand that, in a scenario where exactly one
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`transceiver was adapted to support, .e.g., a control process, such as setting a
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`thermostat (and nothing else), and another transceiver was adapted to support, e.g.,
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`a measurement process, such as a smoke alarm (and nothing else), the function
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`codes would be unique to each transceiver (or specific to each sensor).
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`16. At pp. 41-42 of its Response, PO argues that “the mere citation of one
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`document to another does not mean that their teachings should be combined”
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`(citing also to Dr. Almeroth’s Declaration at ¶ 117). While it is possible that PO
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`(and Dr. Almeroth) might be able to find an example where this statement is true, I
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`specifically disagree that the citations that I relied upon in Kahn were of the type
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`that suggested the teachings should not be combined. Speaking in general, I am
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`aware of at least two reasons why an author would include a citation to a different
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`paper: a) a direct quote needs attribution to provide recognition of a different
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`author or a different paper (perhaps by the same author); or b) the author is
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`directing the reader to a different reference in order to provide additional
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`information for those readers wishing to learn more. In the engineering papers I
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`have read, authors have provided citations for each of these reasons. For either
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`reason (and certainly for the second reason), a reader would be motivated to go to
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`the referenced paper in order to gain a greater appreciation for the issues being
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`discussed. For example, Kahn refers to Cerf for a description of the gateway
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`process used to interconnect with the ARPANET. Kahn, p. 1494, col. 2
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`([34]). Kahn also references Burchfiel (p. 1477, col. 1 [note 24]) for additional
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`information on the function of Kahn’s stations, repeaters, and terminals.2 These
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`are not generic citations acknowledging authorship or prior work; instead, they are
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`specific pointers related to additional information concerning the subject matter
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`being discussed. Accordingly, it is my opinion that Kahn’s citations to Cerf and
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`Burchfiel support the obvious combination of Kahn, Cerf, and Burchfiel.
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`17. At p. 49 of its Response, PO states that I did not cite to any documents
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`to support the assertion that sensors/actuators could be integrated without undue
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`experimentation into a system like Kahn. But as I noted in my deposition, this is
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`an exercise for undergraduate students, and would be well within the capability of
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`2
` Burchfiel provides additional information about the radios disclosed in Kahn.
`Contrary to the suggestion at pp. 40-41 of PO Response, Burchfiel does not replace
`any aspect of Kahn. Kahn can be combined with the APA to provide a wireless
`communication network, instead of a wired network, between sensors/actuators
`and a central location. In the combination, at least some of the Kahn terminals
`would be modified to communicate with the APA’s sensors/actuators. But that
`does not destroy the purpose of, or alter the teachings of, Kahn/Burchfiel.
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`a POSITA. Heppe Deposition, 34:12 – 46:7; 70:5 – 71:22.
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`18. Furthermore, Kahn teaches at least a packet interface (connecting to a
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`“terminal” which would be understood to include other interfaces, such as serial
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`data interfaces and even analog interfaces), and the Fisher Catalog shows that the
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`sensor/actuators can use the HART protocol which is a packet-based protocol
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`(Fisher Catalog, p. 46). Thus, linking the two interfaces together would have been
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`obvious and well within the capability of a POSITA to accomplish without undue
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`experimentation.3 Moreover, even assuming that one of the interfaces may be
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`proprietary, it does not lessen the obviousness of using a sensor or actuator in the
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`packet radio system of Kahn. A POSITA would have found it obvious to use any
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`appropriate packet interface to communicate with the sensor or actuator, and well
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`within his/her ability to accomplish without undue experimentation.
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`3 The Fisher Catalog discloses a large number of field devices that could be used to
`monitor or control various aspects of a plant’s operation. One of skill in the art
`would have been aware of all of the field devices including a thermostat
`device. Fisher Catalog specifies the “interface specifications” needed to
`communicate with the thermostat device. For the TE1220 Thermocouple
`Temperature Transmitter, the Fisher Catalog specifies the output signal range. Ex.
`1008 at p. 46. For the 1151GP Gauge Pressure Transmitter, the Fisher Catalog
`indicates that its output is “4 to 20 mA dc (up to 600 ohm load impedance with 24
`Vdc power, or up to 1650 ohm load impedance with 45 Vdc power), or 10 to 50
`mA dc (up to 300 ohm load impedance with 45 Vdc power.)” and can transmit
`“with HART digital communications.” Id. A person of ordinary skill would take
`into account the specifications stated in the Fisher Catalog when implementing an
`interface for a specific system.
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`19.
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` Even in the case where a sensor/actuator only had an analog output,
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`e.g., a POSITA would be able to integrate the associated output data into a packet
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`system by digitizing the analog signal, inputting the data into a processor, having
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`the processor packetizing the information, and communicating that packet to
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`another device using a predefined communication protocol, or a communication
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`protocol specifically designed for that application. These types of communications
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`interface issues would have been squarely within the level of skill in the art.
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`20. At pp. 33-36 of its Response, in relation to “motivation to combine”,
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`PO first suggests that Kahn does not address reducing costs by moving from a
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`wired to a wireless network (arguing that Kahn focuses instead on centralized
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`versus distributed control), and then relies on Dr. Almeroth to support the
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`contention that “the cost [discussed in the ’732 patent] is in developing sensors,
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`installing sensors, connecting sensors and controllers to the local controller, and
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`installation and operation of the local controller” (Ex. 2001, Dr. Almeroth’s
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`Declaration, ¶ 104), and that “[t]he cost of wiring is not emphasized, or is minor in
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`comparison to the other costs mentioned.” (id.). This is a mischaracterization of
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`Kahn and the ‘732 Patent. For example, Kahn describes various reasons to rely on
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`a packet radio network (“motivation to combine”) including support for mobile
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`users and bursty traffic, and flexibility in rapid deployment and reconfiguration not
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`currently possible with most fixed plant installations. Kahn, pp. 1468-69.
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`“Although the original impetus for packet radio development was and still is
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`largely based on tactical military computer communication requirements [10], the
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`basic concept is applicable to an extremely wide range of new and innovative
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`computer communication applications never before possible in any practical way.”
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`Id. “Deployment of the packet radio net should be rapid and convenient, requiring
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`little more than mounting the equipment at the desired location.” Id., p. 1470. So
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`Kahn provides explicit motivations to combine. Furthermore, one of skill in the art
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`would recognize that the flexibility and convenience in deployment and
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`reconfiguration, explicitly discussed by Kahn, stems in large measure from the
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`avoidance of the need for network wiring. A POSITA would also recognize that
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`the expense of installing and connecting sensors, acknowledged in the ‘732 Patent
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`at 2:34-37 and 2:40-43, includes the expense of laying and maintaining the wires,
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`especially if the wires have to be laid underground or in overhead conduit such as
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`would be necessary in an industrial or manufacturing plant. One skilled in the art
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`would also have recognized that one advantage of using a wireless connection
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`includes the ability to relocate a transceiver/sensor/actuator without having to re-
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`wire the plant.
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`21. At pp. 37-38 of its Response, PO identifies several purported reasons
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`to not apply a wireless network for systems like those described in the APA,
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`including issues of interference, delay, and security. As a preliminary matter, I
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`observe that even if true, these issues would not eliminate the motivation to
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`combine discussed above – they would merely introduce additional problems to be
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`solved. Furthermore, all networks face these problems to one degree or another –
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`even wired networks – and those of skill recognize that there are solutions (and
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`that new methods are always being developed, for both general-purpose as well as
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`specialized network applications). For example, Kahn discloses several ways of
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`reducing the adverse effects of interference (i.e., CSMA, FDMA, spread
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`spectrum). Additionally, spread spectrum is a type of security, and Kahn also
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`discusses encryption. Moreover, a person of ordinary skill would view time delay
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`as one potential factor to be considered rather than a disqualifying factor; time
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`delay is not critical in many applications, such as industrial plant environments.
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`Often, a delay of a second or two would not materially affect how a plant operator
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`responds to an exception condition. As another example, in a residential
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`environment, the fact that a home furnace turns on several seconds after a
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`thermostat senses a change in temperature would not be viewed as problematic or
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`disqualifying.
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`22. At pp. 51-52 of its Response, PO also suggests that I did not provide
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`any reason why one would have replaced the prior art controller from the APA
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`with Kahn’s microprocessor controller. However, an obvious reason known to a
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`POSITA is simply to reduce costs through use of a single general-purpose
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`microprocessor (and programming a microprocessor to perform several known
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`functions is well within the ability of a POSITA to accomplish without undue
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`experimentation). Furthermore, Kahn recognizes that, in a wireless system, there
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`is a microprocessor controller needed to format packets for transmission, and
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`receive and understand packets. There is no need for a centralized controller to
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`receive the outputs of the sensors such as that disclosed in the APA because the
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`sensor data has to be packetized at the sensor for transmission in Kahn.
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`23. At pp. 54-55 of its Response, PO suggests based on Dr. Almeroth’s
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`opinion that Kahn does not disclose concatenation of packets. But Kahn’s pickup
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`packets do concatenate locally-generated data (“packets”) with messages received
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`from other packet radios. Kahn, p. 1495. PO asserts that the claim “requires a data
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`controller to receive a data packet through the transceiver, to receive sensed data
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`from a sensor, and to prepare for transmission a data packet by appending the
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`sensed data to the received data packet.” PO Response, p. 54. If the “local data”
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`of Kahn, such as e.g. counts of packets received or packets received in error, is
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`treated as “sensed data”, then Kahn discloses this limitation. Even if Kahn is not
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`found to disclose this limitation due to lack of “sensed data”, it would be obvious
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`to concatenate “sensed” local data, from sensors as disclosed in the APA, with
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`received packets as disclosed in Kahn, to practice the claim limitation in order to,
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`e.g., minimize the fragmentation of data required to be transmitted, which could
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`reduce the possibility of transmission collisions with other terminals.
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`24. PO also suggests that the concatenation process disclosed in Kahn
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`might be time-consuming and therefore disfavored, but I disagree. Concatenating
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`received data with measured packet count data (as disclosed in Kahn) would
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`involve very little delay since the measured data is already available. This would
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`also be true for “sensed” data from a sensor (in the APA), even if that is found to
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`be distinguished from the “measured” data of Kahn. Furthermore, supervisory
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`control and data acquisition systems do not require instantaneous communication.
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`25.
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`In regard to PO’s complaint about my obviousness analysis in general
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`(PO Response at pp. 55-57), I attempted to comply with the proper obviousness
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`standards when I prepared by original declaration. Implicitly, when I identified a
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`secondary reference as disclosing a particular claim feature, I was asserting that the
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`primary reference arguably may not disclose the claim feature. In many cases,
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`however, I believed that the primary reference does disclose the feature, but that if
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`it is argued otherwise, the secondary reference discloses that feature.
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`Statement Under U.S.C. Section 1001 of Title 18
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`I declare under penalty of perjury under the law of the United States that all
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`statements made herein of my own knowledge are true and that all statements
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`made on information and belief are believed to be true; and further that these
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`statements were made with the knowledge that willful false statements and the like
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`so made are punishable by fine or imprisonment or both under Section 1001 of
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`Title 18 of the United States Code.
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`Executed this 28th day of July, 2016 in New Yok City, New York.
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`Respectfully,
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`_______________________
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`-15-
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