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
`Patent 8,013,732
`
`_____________________
`
`
`PETITIONER’S RESPONSE TO OBSERVATIONS
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`______________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`
`
`EMERSON ELECTRIC CO.,
`Petitioner,
`
`v.
`
`SIPCO, LLC,
`Patent Owner.
`
`
`______________________
`
`
`Case IPR2015-01973
`Patent 8,013,732
`
`_____________________
`
`
`PETITIONER’S RESPONSE TO OBSERVATIONS
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-01973
`Patent 8,013,732
`
`
`Petitioner has the following responses to each of Patent Owner’s
`
`observations on the September 8, 2016 cross-examination testimony of Dr. Stephen
`
`Heppe (Paper 17).1
`
`Response to Observation 1: The testimony cited by Patent Owner is about
`
`the meaning of the word “function,” not the more specific term “function code.”
`
`
`1 In each of its observations, Patent Owner fails to follow the form for
`
`observations set forth in the Office Patent Trial Practice Guide: “In exhibit _, on
`
`page _ of _, lines _, the witness testified _. This testimony is relevant to the _ on
`
`page _ of _. The testimony is relevant because _.” 77 Fed. Reg. 48768 (emphasis
`
`added). In particular, each of Patent Owner’s observations lacks at least one of
`
`these explanations of relevance and therefore fails to particular identify the reasons
`
`why the cited testimony is relevant to arguments in the proceeding. Accordingly,
`
`each of Patent Owner’s observations should be expunged or not considered on the
`
`basis that Petitioner is unable to respond fully to Patent Owner’s observations.
`
`Furthermore, none of Petitioner’s responses herein should be construed as an
`
`admission or acknowledgement how Patent Owner’s observations are relevant to
`
`any opinion or argument in this proceeding. Petitioner also objects to each of the
`
`observations because Patent Owner’s statement of relevance exceeds the
`
`limitations set forth in the Trial Practice Guide.
`
`-1-
`
`
`
`Case IPR2015-01973
`Patent 8,013,732
`
`Patent Owner did not advise the Board of all relevant testimony. Dr. Heppe
`
`testified that part of the meaning of the term “function” to those in the relevant art
`
`would include a code for an action or a type of data. Dr. Heppe also specifically
`
`testified that he had not attempted to fully construe the term “function” in light of
`
`the pertinent intrinsic evidence, and would not do so in the middle of the
`
`deposition. Ex. 2009, pp. 10:22-12:11; 12:21-16:2. The testimony cited by Patent
`
`Owner is not relevant to the issues in this proceeding because, contrary to Patent
`
`Owner’s implication, Dr. Heppe testified and explained that Burchfiel discloses the
`
`claimed “function code.” Ex. 2009, pp. 22:11-24:12; 39:15-42:14.
`
`Response to Observation 2: The testimony cited by Patent Owner is about
`
`the meaning of the word “code,” not the more specific term “function code.”
`
`Patent Owner did not advise the Board of all relevant testimony. Dr. Heppe
`
`testified that part of the meaning of the term “code” to those in the relevant art
`
`would include a software code, an access code, personal identification number,
`
`pseudo-random noise code, command code, op code, frequency hopping code, and
`
`other codes. Dr. Heppe also specifically testified that he had not attempted to fully
`
`construe the term “code” in light of the pertinent intrinsic evidence, and would not
`
`do so in the middle of the deposition. Ex. 2009, pp. 16:4-17:11; 19:6-21:5. The
`
`testimony cited by Patent Owner is not relevant to the issues in this proceeding
`
`because, contrary to Patent Owner’s implication, Dr. Heppe testified and explained
`
`-2-
`
`
`
`Case IPR2015-01973
`Patent 8,013,732
`
`that Burchfiel discloses the claimed “function code.” Ex. 2009, pp. 22:11-24:12;
`
`39:15-42:14.
`
`Response to Observation 3: The testimony cited by Patent Owner is
`
`directed to whether any prior art reference relied upon by Petitioner discloses
`
`codes that are “unique” to a particular device and no other device. Contrary to
`
`Patent Owner’s incomplete citation, Dr. Heppe testified that Burchfiel, for
`
`example, disclosed codes that are unique to a single packet radio and no other. Ex.
`
`2009, pp. 34:3-35:9. Dr. Heppe also testified that the cited prior art discloses
`
`function codes that are unique to a transceiver. Ex. 2009, pp. 36:10-39:13.
`
`Response to Observation 4: The testimony cited by Patent Owner is
`
`directed to whether the Admitted Prior Art teaches a function code that is unique to
`
`a transceiver. This testimony is not relevant to any issue in this proceeding
`
`because Petitioner did not rely on the Admitted Prior Art for disclosure of a
`
`function code that is unique to a transceiver. Instead, Burchfiel and Kahn teach or
`
`suggest that claim feature. Petition, p. 49-50; Ex. 2009, pp. 36:10-39:13; 46:5-
`
`47:22.
`
`Response to Observation 5: The testimony cited by Patent Owner is
`
`directed to whether Figure 3D of the ‘732 patent is part of the Admitted Prior Art.
`
`From this limited testimony, Patent Owner extrapolates to conclude that Dr. Heppe
`
`does not understand what constitutes the Admitted Prior Art. Patent Owner did not
`
`-3-
`
`
`
`Case IPR2015-01973
`Patent 8,013,732
`
`advise the Board of all relevant testimony. Dr. Heppe testified that he did not
`
`undertake to determine whether Figure 3D, or parts of Figure 3D, were part of the
`
`Admitted Prior Art. Ex. 2009, 53:18-57:20. The testimony cited by Patent Owner
`
`is not relevant to any issue in this proceeding because Dr. Heppe relied upon other
`
`aspects of the ‘732 patent specification as disclosure of the relevant Admitted Prior
`
`Art.
`
`Response to Observation 6: The testimony cited by Patent Owner is
`
`whether Exhibit 1009 describes aspects of a wireless communication protocol or a
`
`wired communication protocol. Although Dr. Heppe testified that he believed that
`
`the exhibit describes aspects of a wired communication protocol, that does not
`
`render the teachings of Exhibit 1009 irrelevant to the patentability of Patent
`
`Owner’s challenged claims. Exhibit 1009 (coupled with Exhibit 1010) teach that it
`
`was known by those of skill in the art that communication data packets could
`
`include function codes based on, or in response to, data sensed by a sensor. Dr.
`
`Heppe never testified that the teachings of Exhibit 1009 could not be used in a
`
`wireless communications network/device as recited in the challenged claims.
`
`Response to Observation 7: The testimony cited by Patent Owner is
`
`whether Exhibit 1010 describes aspects of a wireless communication protocol or a
`
`wired communication protocol. First, the cited testimony only states that Dr.
`
`Heppe does not read Exhibit 1010 as disclosing a network of wireless devices.
`
`-4-
`
`
`
`Case IPR2015-01973
`Patent 8,013,732
`
`Even if Exhibit 1010 describes aspects of a wired communication protocol, that
`
`does not render the teachings of Exhibit 1010 irrelevant to the patentability of
`
`Patent Owner’s challenged claims. Exhibit 1010 (coupled with Exhibit 1009)
`
`teach that it was known by those of skill in the art that communication data packets
`
`could include function codes based on, or in response to, data sensed by a sensor.
`
`Dr. Heppe never testified that the teachings of Exhibit 1010 could not be used in a
`
`wireless communications network/device as recited in the challenged claims.
`
`Dated: September 30, 2016
`
`Respectfully submitted,
`
`/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
`
`Counsel for Petitioner
`
`-5-
`
`
`
`Case IPR2015-01973
`Patent 8,013,732
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a true and correct copy of Petitioner’s
`
`Response to Observations has been electronically served on the Patent Owner’s
`
`attorneys on the 30th day of September, 2016 at the following addresses:
`
`Dr. Gregory J. Gonsalves
`Reg. No. 43,639
`2216 Beacon Lane
`Falls Church, VA 22043
`Email: Gonsalves@gonsalveslawfirm.com
`
`James E. Schutz
`Reg. No. 48,658
`Troutman Sanders LLP
`600 Peachtree St., Suite 5200
`Atlanta, GA 30308
`Email: james.schutz@troutmansanders.com
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Donald L. Jackson
`Donald L. Jackson
`Registration No. 41,090
`Counsel for Petitioner
`
`-6-
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
