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