`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Emerson Electric Co.,
`Petitioner
`
`
`
`v.
`
`
`
` Sipco, LLC,
`Patent Owner
`
`
`
`Case IPR2015-01973
`U.S. Patent 8,013,732
`
`
`PATENT OWNER SIPCO LLC’S OBSERVATIONS ON
`CROSS-EXAMINATION O F D R . H E P P E
`
`
`
`1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner, Sipco, LLC, hereby files observations on the testimony given
`
`by Petitioner’s Declarant Dr. Heppe (Exhibit 2010) at a deposition held on
`
`September 8, 2016.
`
`(1) Testimony From Dr. Heppe Indicating That He Would Understand The Claim
`
`Term Function Within The Context Of The ‘314 Patent As A Code For An Action Or
`
`Type Of Data. At the following transcript locations (Exhibit 2010), when asked
`
`questions relating to the meaning of the claim term “function,” Dr. Heppe testified
`
`that it would mean a code for an action or a type of data:
`
`Q. And when you answered at least those elements would be within the
`
`scope [of the claim term function], what elements are you referring to?
`
`A. So, one would be an action that could be performed. Another would
`
`be describing a type of data being sensed, so that you can characterize it
`
`for interpretation at some other location or node.
`
`(Ex. 2010, p. 12, ll. 13-20).
`
`The testimony is relevant because the reference alleged by Petitioner to teach
`
`a function code (i.e., Burchfiel), does not teach either of the items mentioned by Dr.
`
`Heppe (i.e., a code for an action or type of data); Burchfiel instead discloses an
`
`address to a process.
`
`
`
`(2) Testimony From Dr. Heppe Indicating That A Person Of Ordinary Skill In
`
`
`
`2
`
`
`
`The Art Would Have Understood The Claim Term Code At The Effective Filing Date Of
`
`The ‘732 Patent As Software Code, An Access Code, A Personal Identification Number
`
`(PIN), a Pseudo-Random Noise (PN) Code, a Command Code, An Op Code, A
`
`Frequency Hopping Code. At the following transcript locations (Exhibit 2010), when
`
`asked questions relating to the meaning of the claim term “code,” Dr. Heppe
`
`testified that it would mean software code, an access code, a personal identification
`
`number (PIN), a pseudo-random noise (PN) code, a command code, an Op Code, a
`
`frequency hopping code:
`
`Q. How would one of ordinary skill in the art as of the filing date of the
`
`'732 patent understand the term, code?
`
`MR. JACKSON: Objection.
`
`THE WITNESS: So, code has a very wide variety of possible
`
`interpretations, depending on context. It could mean software code, so
`
`it could be program instructions. It could mean an access code, such as
`
`a pin, a personal identification number, or a password. It could mean a
`
`encoded version of text, such as encrypted text. It could mean a
`
`indexed, and one element of an indexed set, such as a command code
`
`or an op code. There is probably others. So, I'm not sure I can come up
`
`with all of the contextual interpretations of the word, code, that would
`
`be known in the industry. But, there is certainly a wide variety of
`
`
`
`3
`
`
`
`interpretations for that word by itself. There is also a PN code. So, in
`
`the context of Kahn, for example, Kahn describes various spread
`
`spectrum multiple access techniques, including direct sequence
`
`spreading and I believe frequency hopping. I would have to go back
`
`and check to see if he actually did both of those, but certainly he
`
`addressed spread spectrum. So, there are pseudorandom noise codes,
`
`and there is frequency hopping codes and there is, that represent in a
`
`sense independent and to some degree uncorrelated or at least only
`
`partially correlated sequences. So, again, there is a wide variety of
`
`possible interpretations for the word, code.
`
`(Ex. 2010, p. 17, l. 12 – p. 19, l. 4).
`
`The testimony is relevant because the reference alleged by Petitioner to teach a
`
`function code (i.e., Burchfiel), does not teach any of the items mentioned in Dr.
`
`Heppe’s recitation of the understanding that a person of ordinary skill in the art
`
`would have had of the claim term “code.” Burchfiel instead discloses an address
`
`(which was not mentioned as being a code in Dr. Heppe’s testimony).
`
`
`
`(3) Testimony From Dr. Heppe Indicating That A Person Of Ordinary Skill In the
`
`Art Would Have Understood The Claim Term “Unique” To Be Associated With A
`
`Particular Device And No Other Device.
`
`
`
`4
`
`
`
`At the following transcript locations (Exhibit 2010), when asked a question
`
`relating to the meaning of the claim term “unique,” Dr. Heppe testified that a
`
`person of ordinary skill in the art would have understood the claim term “unique”
`
`to be associated with a particular device and no other device:
`
`Q. And how would a person of ordinary skill in the art have defined the
`
`claim term, unique?
`
`MR. JACKSON: Objection.
`
`THE WITNESS: Assigned -- so, in a computer communication system,
`
`of which there is a large variety, including things like telephones and e-
`
`mail systems and so on, as well as packet radios, the, in order to ensure
`
`that messages get to the intended destination, assuming that you want
`
`to address messages to particular destinations, as opposed to other
`
`destinations, you need to assign a code that is not repeated elsewhere in
`
`the network. At least that is the normal way that people would
`
`interpret the word, unique. So, unique would be that you have a code or
`
`an address that is identified and associated with a particular device and no
`
`other device. (Exhibit 2010, p. 35, l. 11 – p. 36, l. 8, emphasis added).
`
`This testimony is relevant because the prior art asserted by the Petitioner does not
`
`disclose any codes that are associated with a particular device and no other device
`
`(i.e., does not disclose codes that are unique).
`
`
`
`(4) Testimony From Dr. Heppe Indicating That The So Called Admitted Prior Art
`
`Does Not Teach A Function Code That Is Unique To A Transceiver: At the following
`
`transcript locations (Exhibit 2010), when asked a question about whether the
`5
`
`
`
`
`
`admitted prior art taught the claim limitation of a function code that is unique to a
`
`transceiver, Dr. Heppe testified that it did not teach that claim limitation:
`
`Q. Yes, I will repeat the question. Is it your opinion that the admitted
`
`prior art discloses a function code that is unique to a transceiver?
`
`A. Oh, that was your question? I thought it was a different question.
`
`The function code that is unique to a transceiver. Well, I guess one
`
`issue is the primary locations where I identified discussion of prior art
`
`in the '732 doesn't really address transceivers per se. It addresses wired
`
`control systems, if you will, monitoring and control systems. So, I
`
`would have to review the specification in more detail. The portions that
`
`I had identified in my declaration, which are specifically Column 1,
`
`Lines 54 to 65, and Column 2, Lines 27 to 29 -- well, hold on. There
`
`might be some additional disclosure. Hold on. Let me look at Column
`
`5. So, the prior art discussions that I had identified in my declaration, at
`
`least, which is limited to Column 1, Lines 54 to 65, 2 -- Column 2,
`
`Lines 27 to 29, Column 5, 32 to 41 -- actually 32 to 44, don't address
`
`transceivers in the sense of Rf transceivers, packet radio transceivers.
`
`You could argue that wired nodes comprise transceivers as well, but if
`
`you are focusing on Rf transceivers, the admitted prior art doesn't really
`
`address Rf transceivers in this context, at least those portions of the
`
`specification that I identified. So, I would have to review the rest of the
`
`specification to see if there was some other disclosure of admitted prior
`
`art in the specification.
`
`(Exhibit 2010, p. 43, l. 24 – p. 45, l. 12 (emphasis added)).
`
`
`
`The testimony is relevant because it indicates that according to Petitioner’s expert,
`
`
`
`6
`
`
`
`Dr. Heppe, the claim limitation of a function code unique to a transceiver, is not
`
`taught by the admitted prior art.
`
`
`
`(5) Testimony From Dr. Heppe Indicating That He Is Confused About What Is
`
`And What Is Not The Admitted Prior Art. At the following transcript locations
`
`(Exhibit 2010), when asked specific questions relating to whether the Rf transceiver
`
`identified by the reference number 350 in Figure 3D of the ‘314 patent is part of the
`
`Admitted Prior Art, Dr. Heppe gave conflicting and contradictory testimony:
`
`Q. So, let me see if I understand your testimony correctly. Is it your
`
`testimony that the Rf transceiver identified by the reference number 350
`
`in Figure 3D is not part of the admitted prior art?
`
`A. No, that is not my testimony.
`
`Q. Okay. So, you feel that the Rf transceiver identified by 350 in Figure
`
`3D is also part of the admitted prior art?
`
`A. That is not my testimony either.
`
`(Exhibit 2010, p. 53, ll. 8-17 (emphasis added)).
`
`Dr. Heppe’s inconsistent and contradictory testimony is relevant because it
`
`indicates that he does not have an understanding about what constitutes the
`
`Admitted Prior Art.
`
`
`
`(6) Testimony From Dr. Heppe Indicating That The HART, Communications
`
`Protocol, Physical and Data Link Specification (Exhibit 1009) Does Not Relate To A
`
`
`
`7
`
`
`
`Network Of Wireless Devices, As Required By The Claims Of the ‘314 Patent: At the
`
`following transcript locations (Exhibit 2010), when asked a specific question about
`
`whether Exhibit 1009 teaches a network of wireless devices, Dr. Heppe testified
`
`that Exhibit 1009 did not teach such a network:
`
`Q. My question was directed to whether Exhibit 1009 disclosed a
`
`network of wireless devices.
`
`A. Oh. I believe it is limited to wired physical layer. Let me check, just
`
`to be sure. I believe this document is limited to a wired physical layer
`
` (Exhibit 2009, p. 59, ll. 12 - 19 (emphasis added)).
`
`The testimony is relevant because it indicates that Petitioner is relying on a reference
`
`that is limited to a wired physical layer in proposed obviousness grounds against
`
`claims that are directed to a wireless network.
`
`
`
`(7) Testimony From Dr. Heppe Indicating That The HART, Communications
`
`Protocol, Universal Command Specification (Exhibit 1010) Does Not Relate To A
`
`Network Of Wireless Devices, As Required By The Claims Of the ‘314 Patent: At the
`
`following transcript locations (Exhibit 2010), when asked a specific question about
`
`whether Exhibit 1010 teaches a network of wireless devices, Dr. Heppe testified
`
`that Exhibit 1010 did not teach such a network:
`
`Q. Does Exhibit 1010 disclose a network of wireless devices in your
`
`opinion?
`
`A. The question was disclose a network of --
`
`
`
`8
`
`
`
`Q. I will ask it again, just to help you out. Does Exhibit 1010 disclose a
`
`network of wireless devices?
`
`A. Oh. I don't believe it discloses wireless devices -- or network of wireless
`
`devices, I should say.
`
` (Exhibit 2009, p. 60, ll. 12 - 22 (emphasis added)).
`
`The testimony is relevant because it indicates that Petitioner is relying on a reference
`
`that is limited to a wired communication in its proposed obviousness grounds against
`
`claims that are directed to a wireless network.
`
`
`
`Respectfully submitted,
`
`/s/ Dr. Gregory J. Gonsalves
`Dr. Gregory J. Gonsalves (Reg. No. 43,639)
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`gonsalves@gonsalveslawfirm.com
`
`
`
`
`
`
`9
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that the foregoing Patent Owner Sipco, LLC’s Observations On
`
`Cross Examination was served on the Petitioner by e ma i l at the following e m a i l
`
`addresses on September 14, 2016.
`
`Lead Counsel
`Donald L. Jackson (Reg. No. 41,090)
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Dr., Suite 500
`McLean, Virginia 22102
`Telephone: 571-765-7700
`Fax: 571-765-7200
`
`Back-up counsel
`Walter D. Davis, Jr. (Reg. No. 45,137)
`James D. Berquist (Reg. No. 34,776)
`Davidson Berquist Jackson & Gowdey, LLP,
`8300 Greensboro Dr., Suite 500,
`McLean, Virginia 22102
`Telephone: 571-765-7700
`
`SIPCO-IPCO-IPR@davidsonberquist.com
`
`
`
`/s/ Gregory J. Gonsalves
`Dr. Gregory J. Gonsalves
`Reg. No. 43,639
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`gonsalves@gonsalveslawfirm.com
`
`
`10