UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
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`Case IPR2020-00033
`U.S. Patent No. 8,023,580
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`APPLE INC.,
`Petitioner,
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`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`
`Case IPR2020-00033
`U.S. Patent No. 8,023,580
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`i
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`TABLE OF CONTENTS
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`EXHIBIT LIST .............................................................................................. iii
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`TABLE OF AUTHORITIES ........................................................................... v
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`I.
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`INTRODUCTION .................................................................................. 1
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`II. BACKGROUND .................................................................................... 2
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`A. Summary of the State of Master/Slave Art Prior to the ‘580 Invention
`2
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`B. Summary of the Problems Identified and Solved by the Claimed
`Invention 5
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`i. The Problems Identified in the ‘580 Patent ...................................... 5
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`ii. The ‘580 Solution to These Problems in a Master/Slave Setting ..... 7
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`III. THE PERSON OF ORDINARY SKILL IN THE ART ....................... 14
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`IV. THE PETITION SHOULD BE DENIED BECAUSE THE
`MOTOROLA PATENTS ARE NOT ANALOGOUS ART ................................... 14
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`V. CLAIM CONSTRUCTION .................................................................. 23
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`i. The Claimed “Master/Slave Relationship” Requires That Slaves
`Only Respond to the Master When Polled By The Master ............................. 23
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`ii. The Claim Limitation “Indicates An “Impending Change” In
`Modulation Requires A Change In Modulation That Is Imminent (or About
`To Happen) ...................................................................................................... 28
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`iii. The Claimed “Indicates that Reversion from the Master to the
`Slave Has Reverted to the First Modulation” Requires Both an Indication and
`a Reversion ....................................................................................................... 31
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`VI. ARGUMENT ........................................................................................ 31
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`A. The Petition Should be Denied Under 35 U.S.C. § 314(a) ................ 31
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`B. The Office Should Decline to Institute Under 35 U.S.C. § 325(d) ... 40
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`C. The Petition Should Be Denied On the Merits .................................. 46
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`i. Proposed Grounds 1 and 2 Fail to Present a Reasonable Likelihood
`of Prevailing ..................................................................................................... 46
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`ii. Proposed Ground 3 Fails to Present a Reasonable Likelihood of
`Prevailing 66
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`VII. Conclusion ......................................................................................... 76
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`EXHIBIT LIST
`Exhibit No.
`EX2001
`EX2002
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`EX2003
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`EX2004
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`EX2005
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`EX2006
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`EX2007
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`EX2008
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`EX2009
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`EX2010
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`EX2011
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`Title
`Declaration of Nikil Jayant
`HEWLETT-PACKARD JOUNRAL, Hewlett-Packard
`Company, 1998
`F. Halsall, DATA COMMUNICATIONS, COMPUTER
`NETWORKS AND OPEN SYSTEMS, Addison-
`Wesley, 1996
`A. Goldsmith, WIRELESS COMMUNICATIONS,
`Cambridge, 2005 (Excerpts)
`THE RANDOM HOUSE COLLEGE DICTIONARY
`REVISED EDITION (Excerpts)
`COLLEGIATE
`MERRIAM
`WEBSTER’S
`DICTIONARY, Merriam-Webster Incorporated, 2012
`(Excerpts)
`Opening Expert Report of Richard T. Mihran, PH.D in
`Case No. 2:19-CV-00025-JRG (E.D. Tex.)
`Docket Control Order in Case No. 2:19-CV-00025-JRG
`(E.D. Tex.)
`Claim Construction Memorandum and Order in Case No.
`2:19-CV-00025-JRG (E.D. Tex.)
`Non-Confidential Petition and Appendix for Writ of
`Mandamus in Case 20-112 (Fed. Cir.)
`Apple’s Invalidity Contentions in Case No. 2:19-CV-
`00025-JRG (E.D. Tex.)
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`iii
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`EX2012
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`EX2013
`EX2014
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`EX2015
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`EX2016
`EX2017
`EX2018
`EX2019
`EX2020
`EX2021
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`EX2022
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`EX2023
`EX2024
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`Ex Parte Reexamination of U.S. Patent No. 8,457,228
`(Reexamination Control No. 90/013809)
`RESERVED
`Decision Denying Institution of Inter Partes Review in
`IPR2015-00555
`Decision Denying Institution of Inter Partes Review in
`IPR2014-00889
`U.S. Patent No. 5,537,398 to Siwiak
`U.S. Patent No. 5,793,756 to Ayerst
`U.S. Patent No. 5,649,294 to Ayerst
`U.S. Patent No. 5,875,387 to Ayerst
`U.S. Patent No. 5,168,493 to Nelson et al.
`G. Held, DICTIONARY OF COMMUNICATIONS
`TECHNOLOGY, Wiley, 1998 (Excerpts)
`DENSITY
`A.
`Kamerman,
`THROUGHPUT
`CONSTRAINTS FOR WIRELESS LANS BASED ON
`DSSS, IEEE, 1996
`U.S. Patent No. 4,814,984 to Thompson
`U.S. Patent No. 6,640,268 to Kumar
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`TABLE OF AUTHORITIES
`Cases
`Wang Laboratories v. Toshiba Corp., 993 F.2d 858 (Fed. Cir. 1993) ............. 17, 22
`Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374 (Fed. Cir. 2019) .............. 15, 16, 22
`Arctic Cat, Inc. v. Polaris Indus. Inc., IPR2017-00199, Paper 8 (Apr. 17, 2017). . 35
`E-One, Inc. v. Oshkosh Corp., IPR2019-00161, Paper 16 (May 15, 2019) ............ 32
`In re Clay, 966 F.2d 656 (Fed. Cir. 1992). .............................................................. 17
`Magellan Midstream Partners LP v. Sunoco Partners Marketing & Terminals LP,
`IPR2019-01445, Paper 12 (January 22, 2020) ..................................................... 32
`Next Caller Inc., v.TrustID, Inc., IPR2019-00961, -00962. Paper 10 (October 16,
`2019) .................................................................................................................... 40
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). ........................................ 23
`Rembrandt Wireless Tech. v. Samsung Elec. Co., 853 F.3d 1370 (2017) .. 24, 49, 69
`Samsung Elecs. America v. UNILOC 2017 LLC, IPR2019-01219, Paper 7 (January
`9, 2020) ................................................................................................................ 32
`Samsung v. Rembrandt, IPR2014-00518, Initial Decision (Sept. 23, 2014) ........... 31
`Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC,
`IPR2019-01393, Paper 12 (February 5, 2020) ..................................................... 32
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`Statutes
`35 U.S.C. § 314(a) ............................................................................................ 31, 35
`35 U.S.C. § 316. ....................................................................................................... 34
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`I.
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`INTRODUCTION
`The ‘580 Patent describes and claims Gordon Bremer’s solution to a problem
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`he discovered in the field of polled master/slave art. See Section II(B), infra. His
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`invention is captured in claims 2 and 59 of the ‘580 Patent. Claims 2 and 59 have
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`previously been challenged in the Office and in district court and have survived those
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`challenges. Because of the previous challenges, in an attempt to avoid denial based
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`on 314(a), Petitioner relies on art that, at best, is no more relevant to claims 2 and 59
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`than that which previously failed to render claims 2 and 59 anticipated or obvious,
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`including art that simply is not relevant to Mr. Bremer’s claims – claims that are
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`limited to a polled master/slave system. As a result, the Petition is flawed
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`substantively and procedurally and thus should be denied.
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`First, the Motorola Patents relied on by Petitioner focus on the paging art and
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`thus are not analogous art to the ‘580 Patent because they are not in the same field
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`of endeavor or reasonably pertinent to Mr. Bremer’s claimed invention. See Section
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`IV, infra.
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`Second, given the focus of the Motorola Patents on the paging art, they would
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`not have suggested the following limitations as claimed:
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` a polling-based master/slave relationship (see Section V(i), infra); .
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` an indication of an impending change in modulation (see Section V(ii);
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`or
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` an indication that communication from the master to the slave has
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`reverted to the first modulation method (see Section V(iii)).
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`Third, the Petition should be denied pursuant to 35 U.S.C. § 314(a) and
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`§ 325(d).
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`II. BACKGROUND
`A. Summary of the State of Master/Slave Art Prior to the ‘580
`Invention
`According to the ‘580 Patent, prior art master/slave systems could only
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`communicate when all network devices used a single common type of modulation
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`method. See EX1001, 1:27-65, 3:40-48. If a slave using an additional type of
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`modulation method were added to the network, the new slave could not easily
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`communicate with the master using the different modulation type because it would
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`not be compatible with the common type of modulation method. Id. Thus, to use a
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`different modulation type, it was necessary to tear down the session and start a new
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`one. Annotated FIG. 1 of the ‘580 Patent shows such a prior art master/slave system,
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`where all devices in the network communicate using only a single common type of
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`modulation method (such as the amplitude modulation used by AM radio), even
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`though some of the devices may be capable of communication via other types of
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`modulation methods:
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`The state of master/slave art prior to the ‘580 invention is described in the
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`‘580 Patent, 3:40-4:50, with reference to FIG. 2. EX2001, ⁋⁋36-46 (describing these
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`‘580 teachings from the perspective of a skilled artisan).
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`FIG. 2 discloses a polled multipoint master/slave system. At the beginning of
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`a session, the master established a common modulation type for communication with
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`all its slaves (sequence 32). All slaves were identical in that they shared a common
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`modulation with the master.
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`The master then communicated with its slaves, one at a time, by sending a
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`training sequence with the address of the slave with which it wanted to communicate,
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`followed by data, and finally a trailing sequence to end the communication
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`(sequences 34-38). A slave could not initiate a communication, but, if the slave were
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`polled by the master, it could respond to the master in a similar fashion (sequences
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`42-46). When the master had completed its communications with the first slave, it
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`could then communicate with a second slave using the same negotiated common
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`modulation (sequences 48-54). Again, the slave had to be polled before it could
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`communicate with the master. EX2001, ⁋32.
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`B. Summary of the Problems Identified and Solved by the Claimed
`Invention
`i. The Problems Identified in the ‘580 Patent
`The claimed invention was designed to address problems that resulted in a
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`polled multipoint master/slave system when the master wanted to communicate
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`using different modulation types and – as illustrated in the preferred embodiment –
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`to communicate with different types of tribs (e.g., Type A and Type B)1. With
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`1 Patent Owner uses the terms “tribs” and “slaves” interchangeably.
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`reference to FIG. 2, the problems Gordon Bremer both identified and solved are
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`described in his detailed description as follows:
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`Consider the circumstance in which master transceiver 24 and
`trib 26b share a common modulation type A while trib 26a uses a
`second modulation type B. When master transceiver attempts to
`establish A as a common modulation during sequence 32, trib 26a will
`not be able to understand that communication. Moreover, trib 26a will
`not recognize its own address during training interval 34 and will
`therefore ignore data 36 and trailing sequence 38. Master transceiver
`24 may time out waiting for a response from trib 26a because trib 26a
`will never transmit training sequence 42, data 44, and trailing sequence
`46 due to the failure of trib 26a to recognize the communication request
`(training sequence 34) from master transceiver 24. Thus, if the tribs in
`a multipoint communication system use a plurality of modulation
`methods, the overall communication efficiency will be disrupted as
`specific tribs will be unable to decipher certain transmissions from the
`master transceiver and any unilateral transmission by a trib that has not
`been addressed by the master transceiver will violate the multipoint
`protocol.
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`EX1001, 4:55-5:6.
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`Summarizing the problems inventor Bremer was first to identify:
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`a) If a prior art master wanted to communicate with a slave using a second
`modulation method that was of a different type than that used to
`previously communicate with the same or a different slave, it was
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`necessary to tear down the session and begin a new session. Doing so
`was disruptive.
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`b) If the prior art master attempted to communicate using a different
`modulation type without beginning a new session, the slaves would not
`understand the attempted communications and would not respond to
`any communications directed at them, resulting in repeated attempts by
`the master to communicate. In addition, the slaves could become
`confused by the transmissions and make improper communication
`attempts.
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`One of ordinary skill in the relevant art would have understood that FIG. 2
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`and its description do not disclose and would not have suggested the above-described
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`problems, or the goal of using different types of modulations in one polled multipoint
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`master/slave session. EX2001, ⁋35
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`ii. The ‘580 Solution to These Problems in a Master/Slave Setting
`In the context of the polled multipoint master/slave system described above,
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`Gordon Bremer invented a communication system “in which multiple modulation
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`methods are used to facilitate communication among a plurality of modems in a
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`network, which have heretofore been incompatible.” EX1001, 2:17-20. Mr. Bremer
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`solved the above-described problems with his claimed master/slave communication
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`system such that a master can seamlessly communicate with slaves using multiple
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`types of modulation methods. EX1001, 1:66-2:33; EX2001, ⁋36.
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`The claimed invention of the ‘580 Patent is further described with reference
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`to the embodiment illustrated in FIG. 2 and in FIGs. 3-8 and their written description.
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`EX2001, ⁋⁋36-46.
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`Annotated FIG. 8 shows two communications intended for different slaves.
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`The first communication 170 uses a first type of modulation method for both the
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`initial training signal and the subsequent data signal, while communication 172 uses
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`the first type of modulation method for the training signal and the second type of
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`modulation method for the data signal:
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`EX1001, 4:21-24, 4:42-44, FIG. 8. Information in the training signal indicates
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`whether there will be an impending, i.e., about to happen or imminent, change from
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`the first type of modulation method to the second type of modulation method. Id.
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`(training signal includes “notification of change to Type B” modulation method).
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`The trailing signal illustrates the third sequence sent using the Type A modulation
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`method. EX2001, ⁋38
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`The solution to the problems described above is captured in the language of
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`claims 2 and 59 and described in the ‘580 specification with reference to FIG. 5:
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`With reference to FIG. 5 and claim terms in italics, if the Master is
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`communicating with a Type A trib (“Trib 1 Type A”) using a negotiated first
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`modulation type A in the normal fashion and then wants to communicate with a Type
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`B trib (“Trib 2 Type B”), the Master transmits “first information” comprising a “first
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`sequence” modulated according to the “first modulation method” (one that the Type
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`A trib understands) that “indicates an impending change” to a second modulation
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`method (illustrated as training sequence 106). The Master then transmits to the Type
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`B trib “second information for at least one group of transmission sequences
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`compris[ing] a second sequence that is modulated according to the second
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`modulation method,” which is “a different type than the first modulation method.”
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`In the FIG. 5 embodiment, the “second sequence” is illustrated as transmission
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`sequence 108 and uses the second type of modulation method, i.e., one that the Type
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`B trib can understand. EX2001, ⁋40.
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`It is at this point that the “third sequence” limitations of claims 2 and 59 come
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`into play. To satisfy the limitations of claims 2 and 59, the transceiver must be
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`“configured to transmit a third sequence after the second sequence wherein the third
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`sequence is transmitted in the first modulation method and indicates that
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`communication from the master to the slave has reverted to the first modulation
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`method.” EX2001, ⁋41.
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`Again, referring to FIG. 5, after the Master completes its communication with
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`a Type B trib using Type B modulation (transmission sequence 108), claims 2 and
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`59 require that the Master send a “third sequence” to inform the Type A trib that
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`“communication from the master has reverted to the first modulation method”
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`(illustrated as sequences 114, 126-132). See also the “trailing signal,” i.e., the third
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`sequence, for communication 172 in Fig. 8. EX2001, ⁋42.
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`The ‘580 specification describes Mr. Bremer’s “switches” between
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`modulation types as follows:
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`To switch from type A modulation to type B modulation, master
`transceiver 64 transmits a training sequence 106 to type A tribs 66a in
`which these tribs are notified of an impending change to type B
`modulation. … After notifying the type A tribs 66a of the change to
`type B modulation, master transceiver 64, using type B modulation,
`transmits data along with an address in sequence 108, which is destined
`for a particular type B trib 66b. …. [6:3-12]
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`…. If, however, master transceiver transmits a training sequence
`in which the type A tribs 66a-66a are notified of a change to type B
`modulation as indicated by sequence 106, then a transition is made to
`state 124 where all type B transmissions are ignored until a type A
`modulation trailing sequence (e.g., sequence 114) is detected. Upon
`detecting the type A trailing sequence, a type A trib 66a returns to state
`122 where it awaits a training sequence. [6:41-48]
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`To initiate a communication session with a type A trib 66a,
`master transceiver 64 transmits a training sequence 126 in which an
`address of a particular Type A trib 66a is identified. The identified Type
`A trib 66a recognizes its own address and transitions to state 128 to
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`receive data from master transceiver 64 as part of sequence 132. [6:49-
`54]
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`Thus, with reference to the embodiment of FIG. 5 (and using the language of
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`claims 2 and 59), Mr. Bremer’s switches include:
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`a) “a first sequence” (e.g., training sequence 106) sent by the master using the
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`“first modulation method” to inform the Type A tribs of “an impending change from
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`the first modulation method to the second modulation method” – telling Type A tribs
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`to ignore the second message’s “second sequence” which is not intended for them;
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`b) “a second sequence” (e.g., transmission sequence 108) sent by the master
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`using the second (incompatible) modulation method to the Type B trib; and
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`c) “a third sequence” (e.g., trailing sequence 114, and sequences 126-132)
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`sent by the master using the “first modulation method” to inform Type A tribs that
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`“communication from the master has reverted to the first modulation method.”
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`EX2001, ⁋44. The combination of Gordon Bremer’s claimed sequences
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`captures his solution to the problems he identified in a polled multipoint master/slave
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`system, i.e., switching from one modulation type to another incompatible
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`modulation type in a polled master/slave setting. And in the disclosed preferred
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`embodiment, his switch is illustrated as taking place from one trib type to another.
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`None of the cited references discloses or would have suggested either the problem
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`Mr. Bremer set out to solve in the master/slave setting, or his solution. See EX1001,
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`5:57-7:3 (describing FIG. 5); EX2001, ⁋44.
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`III. THE PERSON OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art would have had a B.S. in Electrical
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`Engineering, Computer Science, or a related field, and two years of experience in
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`the field of communication systems. EX2001, ⁋28.
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`IV. THE PETITION SHOULD BE DENIED BECAUSE THE MOTOROLA
`PATENTS ARE NOT ANALOGOUS ART
`Petitioner relies exclusively on patents issued to Motorola relating to its pager
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`technology, i.e., Briancon, Leitch, Ayerst, Siwiak ‘306, and Siwiak ‘038 (“Motorola
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`Patents”). More particularly, the Motorola Patents are related to its FLEX™ family
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`of pagers. That family includes FLEX™, ReFLEX™, and InFLEXion™. EX2002,
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`59. The Motorola Patents simply are not relevant to the polled master/slave art
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`described and claimed in the ‘580 Patent, given their focus on the field of pager art.2
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`Prior art paging systems have very different requirements and operate in a
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`very different way. EX2001, ⁋303. Significantly, a paging transmitter does not poll
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`a pager but instead sends a message to which the subscriber can later respond. See
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`2 Petitioner has acknowledged the potential validity of this argument by filing
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`four petitions rather than two. See EX1030, 3 (“difference in the exemplary devices
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`… (pagers vs. computers [etc.]) is material ….”).
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`EX2003, 7-9. Other basic differences in the pager art include the need for simulcast
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`widespread broadcasting and for accommodating many subscribers over large
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`geographical areas, introducing significant design constraints (e.g., EX1008, 1:26-
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`2:11; EX2004, 2-3. At the time of Mr. Bremer’s invention, the needs of paging
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`systems were not relevant to polled master/slave systems. EX2001, ⁋⁋295-298.
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`Further, because of the significant differences between pager art and polled
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`master/slave art, the pager art would not have suggested key limitations in the ‘580
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`claims, i.e., those requiring (1) a polled master/slave system, (2) an indication of an
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`impending change to a second modulation method, and (3) an indication that
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`communication from the master to the slave has reverted to the first modulation
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`method. See Sections V(i), VI(C)(i)(a), VI(C)(ii)(a); EX2001, ⁋⁋105-121. Given the
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`lack of relevance of the field of pager art to challenges/solutions faced in the field of
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`polled master/slave art, only using significant hindsight and arbitrary selection of
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`segments of the pager art teachings, as Petitioner has done, can support a different
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`conclusion. EX2001, ⁋304.
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`Recently, in Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374 (Fed. Cir. 2019),
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`the Federal Circuit addressed whether certain art should be considered “analogous
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`art.” In doing so, the court identified two separate tests: (1) whether the art is from
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`“the same field of endeavor,” and, (2) if not, whether the reference still is
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`“reasonably pertinent to the particular problem with which the inventor is involved.”
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`Airbus, 941 F.3d at 1379.
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`With respect to the “field of endeavor” inquiry, the Federal Circuit identified
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`several relevant factors:
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`…. To determine the applicable field of endeavor, the factfinder must
`consider “explanations of the invention’s subject matter in the patent
`application, including the embodiments, function, and structure of
`the claimed invention.” … .
`
`While the disclosure of the references is the primary focus, this court
`has also instructed that the factfinder must consider each reference’s
`disclosure in view of the “the reality of the circumstances,” … and
`“weigh those circumstances from the vantage point of the common
`sense likely to be exerted by one of ordinary skill in the art in
`assessing the scope of the endeavor …”.
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`Airbus, 941 F.3d at 1380 (citations omitted) (emphasis added).
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`The Federal Circuit identified additional factors the Board considered,
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`including the titles, the problems addressed, and the fact that the term “fire” did not
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`appear at all in Kotliar. Airbus, 941 F.3d at 1380. The Board’s findings were
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`sufficient to support its determination that Kotliar was not in the same field of
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`endeavor as the subject patent, “especially for a ‘common sense’ inquiry like this.”
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`Id., 1380-81 (citation omitted).
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`Significantly, the Federal Circuit’s field of endeavor inquiry looks beyond the
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`broad field in which both the alleged analogous art and subject invention happen to
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`fall. See, e.g., Wang Laboratories v. Toshiba Corp., 993 F.2d 858 (Fed. Cir. 1993)
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`and In re Clay, 966 F.2d 656 (Fed. Cir. 1992). In Wang, the fact that both the patents-
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`in-suit and the prior art related to memory modules was not sufficient to characterize
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`them as in the same field of endeavor. 993 F.2d at 863. Similarly, in In re Clay,
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`even though both the patent application and the prior art related to the petroleum
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`industry, those facts were not sufficient to characterize them in the same field of
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`endeavor. 966 F.2d at 658-60.
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`The Federal Circuit’s analysis supports the conclusion that the field of
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`endeavor relevant to the Motorola Patents, i.e., that of pager art, is not analogous to
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`that relevant to the ‘580 Patent’s polled master/slave art.
`
`Focusing on Briancon as exemplary, consideration of the factors relevant to
`
`the field of the endeavor inquiry – including the need to take a “common sense”
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`approach – supports Patent Owner’s position that Briancon is not analogous prior
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`art.3
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`3 Patent Owner discusses Briancon in more detail than the other Motorola
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`Patents as representative, as it is one of the primary references relied on by
`
`Petitioner. However, the other Motorola Patents are not relevant to the field of Mr.
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`Briancon’s “Field of the Invention” focuses on “in particular … transmitting
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`a message within a synchronous protocol to a receiving device, wherein the message
`
`includes a plurality of independent analog parts,” EX1004, 1:13-16 (emphasis
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`added). Briancon further describes its field of endeavor throughout the specification,
`
`identifying the challenge of transmitting a “plurality of independent analog parts”
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`(multi-part analog messages) within the confines of the particular synchronous
`
`paging protocol in which Briancon was working (InFLEXion™). See EX1004,
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`1:39-48; 1:59-2:14; 3:40; 10:43-44; EX2001, ⁋⁋51, 295. However, the solution to
`
`that problem would not have been relevant – or pertinent – to a person of ordinary
`
`skill trying to solve the incompatibility problem that Bremer faced in the context of
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`polled master/slave systems. EX2001, ⁋295.
`
`Briancon clearly is focused on Motorola’s pager art, as indicated by the
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`citation to other Motorola patents directed to the FLEX protocols including Leitch
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`Bremer’s claimed invention for substantially the same reasons as Briancon is not
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`relevant.
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`‘7474 in which “voice messages are compressed … and then transmitted … using a
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`synchronous protocol, such as the well-known In FLEXion™ protocol, licensed
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`by Motorola ….”, Siwiak ‘038 (titled “Frequency Division Multiplexed
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`Acknowledge Back Paging System”), and Davis ‘582 (titled “Method and
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`Apparatus for Acknowledging and Answering a Paging Signal”). EX1004, 1:19-
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`46. Briancon describes the problems with such analog protocols and what is needed
`
`to address those problems:
`
`In a system using such an analog protocol for signals sent from
`the paging fixed network to the pager, as described in Leitch '747, and
`having acknowledge capability, as described in Siwiak '038 and Davis
`'582, it is also desirable to be able to include, in a message that has an
`information part, a plurality of probable analog responses ….
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`EX1004, 1:43-49 (emphasis added). Briancon’s challenges associated with sending
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`the plurality of probable analog responses include (i) “how to separate the plurality
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`of probable analog responses carried with the message” and (ii) “how to provide for
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`user selection of one of the voice responses” (EX1004, 1:59-2:3; 2:4-14).
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`4 Leitch ‘747 is the application that ultimately issued as Leitch ‘440 (relied on
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`by Petitioner).
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`In contrast, the ‘580 Patent is directed to data communications that are
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`between a single master and at least two slaves (or tribs) and those in which the
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`slaves only respond to the master when polled. See Section II, supra (describing Mr.
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`Bremer’s claimed invention and the problem Mr. Bremer identified and solved); see
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`also Section V, infra (further describing the requirements of Mr. Bremer’s claimed
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`invention).
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`The terms used in Briancon to describe the relevant technology also are
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`telling. Notably, Briancon does not mention any of the following terms even once:
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`master/slave, master, slave, trib, poll, or multipoint (or any form of these terms).5
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`Instead, Briancon uses the terms “pager” or “paging” 16 times.
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`In contrast, the ‘580 Patent does not use the term “pager” or “paging” or any
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`other form of this term even once. Instead, consistent with its focus on a single field,
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`i.e., that involving an incompatibility problem with polled master/slave protocols,
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`5 Of the five references relied on by Petitioner, the term “master/slave” is used
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`only once in a single reference, i.e., Ayerst. And even then, it is only used in very
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`cursory manner. EX1007, 5:14-22. There is no description of the “master/slave
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`scheme” Ayerst envisions or teaching in Ayerst how a “master/slave scheme” would
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`be utilized.
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`the ‘580 Patent uses the term “master” 94 times, “slave” 24 times, “trib” 89 times,
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`some form of “poll” 10 times, and “multipoint” 29 times.
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`In view of the significant differences described above, Airbus, Wood, and
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`Clay fully support the conclusion that the Motorola Patents are not in the same field
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`of endeavor as that of the ‘580 Patent.
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`Turning to the Federal Circuit’s second inquiry, i.e., its “reasonably pertinent”
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`test, it described that inquiry as follows:
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`… Outside of an inventor’s field of endeavor, “we only presume
`knowledge from those arts reasonably pertinent to the particular
`problem with which the inventor was involved.” Wood, 599 F.2d at
`1036 … . This rule reflects the “reality of the circumstances” that “an
`inventor could not possibly be aware of every teaching in every art.”
`… . Indeed, “[t]he pertinence of the reference as a source of solution
`to the inventor’s problem must be recognizable with the foresight of
`a person of ordinary skill, not with the hindsight of the inventor’s
`successful achievement.” ….
`
`Accordingly, a reference outside an inventor’s field of endeavor
`is “reasonably pertinent” only if its subject matter “logically would
`have commended itself to an inventor’s attention in considering his
`problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). In other
`words, references are “reasonably pertinent” only if “a person of
`ordinary skill would reasonably have consulted those references and
`applied their teachings in seeking a solution to the problem that the
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`inventor was attempting to solve.” .… [I]f the problems addressed are
`substantially different, then the references are not analogous. See
`Clay, 966 F.2d at 659–60. In Clay, for example, we held that a reference
`… was not reasonably pertinent … even though both references
`generally related to the petroleum industry. Id.
`
`Airbus, 941 F.3d at 1381-82 (emphasis
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