IPR2017-00216
`Patent No. 8,013,732
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`EMERSON ELECTRIC CO.,
`Petitioner,
`v.
`SIPCO, LLC,
`Patent Owner.
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`Case No. IPR2017-00216
`Patent Number 8,013,732
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`Before LYNNE E. PETTIGREW, STACEY G. WHITE, and
`CHRISTA P. ZADO, Administrative Patent Judges.
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`PETITIONER’S RESPONSE TO PATENT OWNER’S
`OBSERVATIONS ON CROSS-EXAMINATION
`OF PETITIONER’S REPLY WITNESS DR. HEPPE
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`Patent No. 8,013,732
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`EMERSON ELECTRIC CO.,
`Petitioner,
`v.
`SIPCO, LLC,
`Patent Owner.
`
`
`
`
`Case No. IPR2017-00216
`Patent Number 8,013,732
`
`
`
`
`
`
`Before LYNNE E. PETTIGREW, STACEY G. WHITE, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`
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`PETITIONER’S RESPONSE TO PATENT OWNER’S
`OBSERVATIONS ON CROSS-EXAMINATION
`OF PETITIONER’S REPLY WITNESS DR. HEPPE
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`
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`Petitioner hereby responds to Patent Owner’s (“PO”) Observations of the
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`IPR2017-00216
`Patent No. 8,013,732
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`December 21, 2017 cross-examination testimony of Dr. Heppe, Paper 39 (“Obs.”).
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`Response to Observation 1. PO’s Observation is improper and should be
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`expunged or not considered because it contains attorney argument. To the extent
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`considered, PO argues, incorrectly, that “Petitioner is conflating information that is
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`useful to the measurement tools Kahn describes as being used only within the
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`context of the PRNET… as opposed to what Kahn describes as actually being sent
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`over the ARPANET.” Obs. 3. Contrary to PO, Dr. Heppe testified that Kahn
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`describes that “measurement data” is collected in the PRNET and transmitted to a
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`gateway, which further transmits that “measurement data” “over the WAN”
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`(ARPANET) to the “UCLA 360/91 computer.” Ex. 2023, 147:7-148:5, 158:18-
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`159:10, 61:19-62:5, 63:1-64:9; Ex. 1002, 1495, col. 1; see also Ex. 1004 ¶¶ 41, 67;
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`Ex. 1046 ¶ 32. For example, PO omits Dr. Heppe’s testimony that “the pickup
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`packet contains select information, which would be measurement data, plus the
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`selectors of the multiple nodes along the path…. You write that information into
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`the measurement file and transmit the contents over the WAN. Yes, that is a
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`disclosure of those elements of the claim” and “measurement data … gets
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`collected and written into the measurement file as they are received by the station.
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`So the measurement file actually contains select information. It contains the IDs,
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`and it also contains the data within a pickup packet, which includes the trace of
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`all the repeaters along the route, the source as well as all the repeaters along the
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`IPR2017-00216
`Patent No. 8,013,732
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`route…. All of that information in the measurement file is ultimately passed
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`through the gateway and translated and formatted by the gateway process in order
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`to deliver that information across the ARPANET to the 360/91 computer at
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`UCLA.” Ex. 2023, 158:18-159:10, 63:1-64:9; see also Ex. 1004 ¶ 67; Ex. 1046 ¶¶
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`28-32; Ex. 1002, 1495, col. 1. PO also omits Dr. Heppe’s testimony that “[t]he
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`final destination of the PRNET measurement data is the UCLA 360/91
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`computer” to be “use[d] by several analysis programs.” Ex. 2023, 147:7-148:5; Ex.
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`1002, 1495, col. 1; see also Ex. 1004 ¶ 41; Ex. 1046 ¶ 32; Ex. 2023, 63:1-64:9,
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`152:23-154:23.
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`Response to Observation 2. PO’s Observation is improper and should be
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`expunged or not considered because it contains attorney argument. To the extent
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`considered, PO argues, incorrectly, that “the claimed translation requires more
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`than simply adding or removing headers to a packet” and “Dr. Heppe has provided
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`no evidence of the required claimed translation.” Obs. 5. PO omits Dr. Heppe’s
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`testimony that “the measurement file actually contains select information. It
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`contains the IDs, and it also contains the data within a pickup packet, which
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`includes the trace of all the repeaters along the route, the source as well as all the
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`repeaters along the route.… All of that information in the measurement file is
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`ultimately passed through the gateway and translated and formatted by the
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`gateway process in order to deliver that information across the ARPANET to the
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`IPR2017-00216
`Patent No. 8,013,732
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`360/91 computer at UCLA.” Ex. 2023, 63:1-64:9; see also Ex. 1004 ¶¶ 67, 69-71;
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`Ex. 1046 ¶¶ 37-41; Ex. 1002, 1494–1495; Ex. 1011, 1397-1400. PO also omits Dr.
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`Dr. Heppe’s testimony that “in paragraph 40 [of Ex. 1046], I note that Cerf
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`explains the encapsulation of internet datagrams in the packet format of each
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`intermediate network is a form of protocol translation.… [T]he PRNET uses
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`lower level network and link layer protocols, which are not the same as the
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`network and link layer protocols employed on the ARPANET. … [T]herefore,
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`when information moves from the PRNET to the ARPANET, or in the other
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`direction, the information is encapsulated in different network and link layer
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`packets. And Cerf describes those as a form of protocol translation.” Ex. 2023,
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`41:16-44:9; Ex. Ex. 1004 ¶¶ 67, 69-71; Ex. 1046 ¶¶ 37-41; see also Ex. 2023,
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`138:17-139:5 (“Q. And do you agree that no payload undergoes protocol
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`translation? A. No, I disagree with that. That’s a totally false statement. We’ve
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`already discussed that packets can move from a packet radio and an attached
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`device through the packet radio network to the station and the gateway out over the
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`ARPANET. Those packets contain a payload. Clearly, those payloads are
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`translated as they move through a gateway.”), 44:10-45:2, 60:15-61:18, 67:17-25,
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`111:4-112:17, 128:12-129:5, 147:7-149:17.
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`Response to Observations 3 and 4.1 PO’s Observations are improper and
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`IPR2017-00216
`Patent No. 8,013,732
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`should be expunged or not considered because they contains attorney argument. To
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`the extent considered, PO argues, incorrectly, that “at no point does Kahn actually
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`teach that the route setup packets ever pass through the gateway” (Obs. 5) and “Dr.
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`Heppe has indicated it is not obvious that Kahn teaches a route setup packet
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`crossing over to the ARPANET” (Obs. 6). As Dr. Heppe explained, in addition to
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`teaching the use of “pickup packets” and including the “entire set of selectors” in
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`the header, Kahn discloses the use of a “route setup packet” that also contains the
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`entire set of selectors. Ex. 2023, 158:18-159:10, 63:1-64:9, 119:23-122:15, 123:9-
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`124:16; Ex. 1002, 1495, col. 1, 1479, col. 2, 1482, col. 2; Ex. 1004 ¶¶ 61, 67; Ex.
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`1046 ¶¶ 22-24. PO omits Dr. Heppe’s testimony that Kahn teaches that “[a]ny
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`packet – exact words, any packet may be a route setup packet, subject only to the
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`maximum packet length constraints of the network. Any packet. A route setup
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`packet may also contain data. So Kahn is clearly stating that any packet can be a
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`route setup packet and they may contain data. Certainly there are packets in
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`Kahn that move from the PRNET to the ARPANET.” Ex. 2023, 107:1-108:4; see
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`also Ex. 1002, 1482, col. 2, 1479, col. 2; Ex. 1004 ¶ 61; Ex. 1046 ¶¶ 23, 25-26; Ex.
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`2023, 108:5-25, 124:17-125:11, 126:3-127:11.
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`1 PO’s Observation apparently intended to cite Ex. 2014, 5:23-6:4; not id. 3:19-25.
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`Response to Observation 5. PO’s Observation is improper and should be
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`IPR2017-00216
`Patent No. 8,013,732
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`expunged or not considered because it contains attorney argument. To the extent
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`considered, PO argues, incorrectly, that in Cunningham, “accumulated data –
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`rather than the items recited in the claim limitation – are what is transmitted
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`outside the network.” Obs. 7-8. PO omits Dr. Heppe’s testimony that “as a first
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`point, I disagree with [patent owner’s and Dr. Almeroth’s] analysis, because the
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`claim does not require the gateway to directly forward or route signals to the
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`computer over the WAN, so as to preclude the gateway from collecting
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`information before transmitting it.… The second point or second prong of my
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`analysis, is, putting that aside for the moment, Cunningham doesn’t require that
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`data be collected. So what I’m pointing out here is that Cunningham’s
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`teachings are broad enough to include the case[] [w]here only a single packet is
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`handled.” Ex. 2023, 159:23-161:2; Ex. 1046 ¶ 45; Ex. 1014, 7:19-27, 12:52-59,
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`14:12-61, 32:6-9, Fig. 21, 13:44-56, 31:6-27, 44:12-41, 44:53-64, 47:44-54, 32:42-
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`46, Figs. 49, 21.
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`Response to Observation 6. PO’s Observation is improper and should be
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`expunged or not considered because it contains attorney argument. To the extent
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`considered, PO argues, incorrectly, that “[Tobagi] is relied upon beyond simply
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`supporting what one of skill in the art would understand Kahn to mean.” Obs. 8-9.
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`Contrary to PO, Dr. Heppe testified that Kahn alone discloses the use of a “pickup
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`packet[],” which contains “measurement data” (select information), along with
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`IPR2017-00216
`Patent No. 8,013,732
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`selectors (transmitter identification information) for each packet radio unit in the
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`route to “provid[e] a trace of their history.” Ex. 2023, 158:18-159:10, 63:1-64:9,
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`35:22-37:6; Ex. 1002, 1495, col. 1; Ex. 1004 ¶ 67; Ex. 1046 ¶ 24. To refute PO’s
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`and Dr. Almeroth’s erroneous assertions, Dr. Heppe cited Tobagi as further
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`confirmation that this understanding of a POSITA is indeed correct. Ex. 1046 ¶¶
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`24-25, 28, 30, 32-35. For example, Dr. Heppe testified that “Kahn teaches that the
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`point of collecting the information is to perform analysis and evaluation of the
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`network—thus, it does not make any sense, as Patent Owner and Dr. Almeroth
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`assert [POR 30-32; Ex. 2014 ¶¶ 119-121], to remove the routing information that
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`the measurement tools are specifically seeking to collect at the station (including
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`the contents of the pickup packets…) before transmitting to the UCLA computer
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`for analysis.” Ex. 1046 ¶ 33. Dr. Heppe testified that Kahn has “express
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`disclosure that the pickup packets ‘provid[e] a trace of their history’ for the UCLA
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`computer where the information will be used ‘by several analysis programs.’” Ex.
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`1046 ¶ 33; Ex. 1002, 1495, col. 1. Dr. Heppe further explained that “the Tobagi
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`article (published in 1976) confirms that it would have been known to a POSITA
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`that such measurement tools ‘provide a means to evaluate the performance of the
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`operational protocols employed and the identification of their key parameters’
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`further used to assist in the study of ‘routing strategies’” and that “the Pickup
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`packet is a valuable tool in routing studies in that it contains the actual and
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`IPR2017-00216
`Patent No. 8,013,732
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`complete route taken by the packet.” Ex. 1046 ¶ 33; Ex. 1048, 589, col. 2, 594, col.
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`2. PO omits Dr. Heppe’s testimony reiterating this point in response to questioning
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`from Patent Owner’s counsel:
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`Q. Are you relying upon Tobagi to show that, in whole or in part to
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`show that any particular claim is unpatentable?
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`A. Tobagi actually confirms the understanding that a person of skill
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`would have in the art, reading Kahn. So I believe that Kahn by itself
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`is sufficient and Tobagi confirms it.
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`Ex. 2023, 9:15-21; see also Ex. 2023, 9:22-10:21, 35:22-37:6, 38:7-39:8. PO
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`further mischaracterizes Dr. Heppe’s testimony as “indicat[ing] examples of
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`material he has relied upon in Tobagi that was not explicitly disclosed in Kahn.”
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`Obs. 8. To the contrary, Dr. Heppe was merely “point[ing] to examples” of where
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`Tobagi is discussed in Dr. Heppe’s rebuttal declaration so that PO’s counsel could
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`“continue the discussion if … necessary.” Ex. 2023, 10:22-11:1. PO further omits
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`Dr. Heppe’s testimony in response to the same question by PO’s counsel, in which
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`Dr. Heppe testified that “Tobagi is not going beyond what Kahn teaches” and “I
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`don’t believe that Tobagi is -- is needed to go beyond what is in Kahn, or Kahn
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`combined with the understanding of a person of skill.” Ex. 2023, 11:2-13:18.
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`Observation 6 is further irrelevant to “Patent Owner’s Construction Relating To
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`‘Low Power,’” as the term “low power” does not even appear in the Challenged
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`IPR2017-00216
`Patent No. 8,013,732
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`Claims (nor has PO proposed any such construction).
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`Respectfully submitted,
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`Dated: January 12, 2018
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`By:
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`/s/ Steven Pepe
` Steven Pepe
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`IPR2017-00216
`Patent No. 8,013,732
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing PETITIONER’S RE-
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`SPONSE TO PATENT OWNER’S OBSERVATIONS ON CROSS-
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`EXAMINATION OF PETITIONER’S REPLY WITNESS DR. HEPPE was served
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`on January 12, 2018 in its entirety by causing the aforementioned document to be
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`electronically mailed, pursuant to the parties’ agreement, to the following attorneys
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`of record:
`
`Dr. Gregory J. Gonsalves (Lead Counsel)
`Reg. No. 43,639
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`gonsalves@gonsalveslawfirm.com
`
`Thomas F. Meagher (Back-up Counsel)
`Reg. No. 29,831
`Meagher Emanuel Laks Goldberg & Liao, LLP
`One Palmer Square, Suite 325
`Princeton, NJ 08542
`(609) 454-3500
`tmeagher@meagheremanuel.com
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`IPR2017-00216
`Patent No. 8,013,732
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`Dustin B. Weeks (Back-up Counsel)
`Reg. No. 67,466
`600 Peachtree Street
`5200 Bank of America Plaza
`Atlanta, Georgia 30308
`dustin.weeks@troutmansanders.com
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`Counsel for Patent Owner SIPCO, LLC
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`Dated:
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`January 12, 2018
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`By: /Crena Pacheco/
`Name: Crena Pacheco
`
`ROPES & GRAY LLP
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`2
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