IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`REMBRANDT WIRELESS
`TECHNOLOGIES, LP,
`
`
`Plaintiff
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`
`
`
`APPLE INC.,
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`
`v.
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`Defendant.
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`
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`
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`
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`
`
`Case No. 2:19-CV-00025-JRG
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`REBUTTAL EXPERT REPORT OF DR. ROBERT MORROW REGARDING
`THE VALIDITY OF U.S. PATENT NOS . 8,023,580 & 8,457,228
`
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`
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`Rembrandt Wireless
`Ex. 2025
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 1 of 231
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`TABLE OF CONTENTS
`INTRODUCTION ................................................................................................................. 1
`1.
`2. QUALIFICATIONS .............................................................................................................. 1
`3. MATERIALS REVIEWED AND RELIED UPON ........................................................... 4
`4. LEGAL STANDARDS .......................................................................................................... 4
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`5. OVERVIEW OF THE PATENTS-IN-SUIT .................................................................... 12
`6. TECHNOLOGY BACKGROUND .................................................................................... 13
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`7. THE ART REFERENCED IN THE MIHRAN REPORT DOES NOT INVALIDATE
`THE ASSERTED CLAIMS. .............................................................................................. 27
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`7.1.1 Overview of References ............................................................................... 28
`7.1.2 Missing Limitations ..................................................................................... 40
`7.1.3 No Motivation to Combine .......................................................................... 55
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`7.2.1 Overview of References ............................................................................... 58
`7.2.2 Missing Limitations ..................................................................................... 65
`7.2.3 No Motivation to Combine .......................................................................... 76
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`7.3.1 Overview of References ............................................................................... 82
`7.3.2 Missing Limitations ..................................................................................... 87
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`7.3.3 No Motivation to Combine ........................................................................ 111
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`7.4.1 Overview of References ............................................................................. 117
`7.4.2 Rembrandt Is Not Collaterally Estopped Based On The Prior IPRs ......... 125
`7.4.3 Missing Limitations ................................................................................... 127
`7.4.4 No Motivation to Combine ........................................................................ 137
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`7.5.1 Overview of References ............................................................................. 139
`7.5.2 Missing Limitations ................................................................................... 149
`7.5.3 No Motivation to Combine ........................................................................ 165
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`7.6.1 Overview of Reference .............................................................................. 179
`7.6.2 Reunamaki Is Not Prior Art ....................................................................... 181
`7.6.3 Missing Limitations ................................................................................... 181
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`7.7.1 Overview of References ............................................................................. 182
`7.7.2 Medium Rate Is Not Prior Art ................................................................... 184
`7.7.3 Missing Limitations ................................................................................... 185
`8. THE ASSERTED CLAIMS HAVE PROPER WRITTEN DESCRIPTION .............. 186
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`8.1.1 The Provisional Application (12/5/1997) .................................................. 187
`8.1.2 The First Non-Provisional Application (12/4/1998) .................................. 190
`8.1.3 The Continuation-in-Part Application (4/14/2003) ................................... 193
`8.1.4 The ‘580 Patent Application (8/19/2009) .................................................. 194
`8.1.5 The ‘228 Patent Application (8/4/2011) .................................................... 196
`8.1.6 The Prior Litigation.................................................................................... 197
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`9. THE ASSERTED CLAIMS CONTAIN PATENTABLE SUBJECT MATTER ........ 200
`10. THE “SECONDARY CONSIDERATIONS” SHOW NON-OBVIOUSNESS OF THE
`PATENTS-IN-SUIT .......................................................................................................... 202
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`11. MARKING ISSUES .......................................................................................................... 212
`12. CONCLUSION .................................................................................................................. 213
`13. LIST OF EXHIBITS ......................................................................................................... 213
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`1.
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`REBUTTAL EXPERT REPORT OF DR. ROBERT MORROW
`REGARDING VALIDITY OF U.S. PATENT NOS. 8,023,580 & 8,457,228
`INTRODUCTION
`
` I have been retained by Heim, Payne & Chorush, LLP and Ahmad, Zavitsanos, Anaipakos,
`Alavi & Mensing P.C., counsel for Plaintiff Rembrandt Wireless Technologies, LP (hereinafter
`“Rembrandt”), as an independent technical expert in this litigation. Among other things, I have
`been asked by counsel to opine on the validity of certain claims from U.S. Patent No. 8,023,580
`(“the ‘580 Patent”) and U.S. Patent No. 8,457,228 (“the ‘228 Patent) (collectively, the
`“Asserted Patents” or the “Patents-in-Suit”). Specifically, I have been asked by counsel to
`review the Opening Expert Report of Richard T. Mihran, Ph.D. on invalidity issues (“Mihran
`Report”) and to offer rebuttal opinions when I disagree with the opinions expressed in the
`Mihran Report.
`
` The statements made in this expert report are made on my own personal knowledge and
`opinion, and I can and will testify competently to the content of this expert report if called on
`to do so at trial. In forming my opinions, I reviewed many documents, including many
`documents previously submitted by Rembrandt and its experts. Where appropriate, I copied
`relevant excerpts from those prior documents that reflect my opinions into this report (rather
`than “reinvent the wheel,” so to speak). I reserve the right to supplement or modify my
`opinions as the lawsuit develops or as new facts or other relevant information are uncovered
`and to testify in that regard, including testimony in rebuttal to opinions offered by experts
`representing Apple either prior to or during trial. I also intend to prepare demonstrative
`exhibits that are consistent with my opinions in this report for use at trial.
`
` I am being compensated at my standard consulting rate of $550 per hour. My compensation
`is not dependent on the outcome of this case.
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`2.
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`QUALIFICATIONS
`
` My education and expertise qualify me to do the below analysis. I have summarized in this
`section my educational background, career history, and other relevant qualifications. More
`details are set forth in my curriculum vitae, attached as Exhibit A to this report.
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` I earned a Bachelor of Science degree in Electrical Engineering from the United States Air
`Force Academy in 1974, a Master of Science degree in Electrical Engineering from Stanford
`University in 1982, and a Ph.D. degree in Electrical Engineering from Purdue University in
`1988. My doctoral research was in spread spectrum communications. While studying for my
`Ph.D., I received the “best paper” award at the Purdue Electrical Engineering and Industrial
`Institute conference in 1986.
`
` I served as an officer in the United States Air Force from 1974 to 1994, retiring as a Lieutenant
`Colonel. My career included serving as an instructor pilot in three different military aircraft,
`as an Associate Professor of Electrical Engineering and Director of Research at the U.S. Air
`Force Academy, and as an Assistant Professor of Electrical Engineering and Deputy
`Department Head of the Department of Electrical and Computer Engineering at the Air Force
`Institute of Technology. For my work as chairman of an international space symposium, I
`received the Meritorious Service Award from the Armed Forces Communications and
`Electronics Association (AFCEA) in 1991. I have also received numerous other honors and
`awards, which are listed in my CV at Exhibit A. I was awarded United States Patent No.
`5,022,046 on June 4, 1991, for an invention using different header and data packet structures
`for improved performance in a spread spectrum wireless network.
`
` After retiring from the Air Force, I started Morrow Technical Services and began teaching
`courses in wireless technology, including Bluetooth, Wi-Fi, and cellular systems. I have taught
`courses in the U.S., Canada, Mexico, Costa Rica, Brazil, Singapore, and the United Kingdom.
`My work at Morrow Technical Services also includes writing and editing journal and
`conference papers (of which I have authored 40—many directed to Bluetooth) and books, and
`designing and marketing optical collimation tools for astronomy telescopes. I received the top
`instructor award for a course at Networld Interop in 2004, and I was selected by Purdue
`University faculty as a 2018 Outstanding Electrical and Computer Engineer.
`
` I have extensive experience with Bluetooth technology. For example, in late 1999, a few
`months after the first general Bluetooth Specification 1.0A was released on July 26, 1999, I
`developed a short course entitled “Bluetooth and Short-Range Wireless” and taught it for the
`first time in January 2000 to Teledesic, a satellite telecommunications company. Since then I
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`have taught Bluetooth short courses of two to five days duration to commercial and
`government clients, including Chamberlain, VXI, Summit Datacom, Vocollect, Intel, GTECH,
`Plantronics, National Semiconductor, Philips, Microsoft, Texas Instruments, Marvell,
`Motorola, Broadcom, and the U.S. Navy. After the Bluetooth Specification 2.0 + EDR was
`released in 2004, my classes included coverage of EDR operations.
`
` My book Bluetooth Operation and Use, published by McGraw-Hill in 2002, provides a
`comprehensive coverage of Bluetooth, from operation of the radio to user expectations. My
`book Wireless Network Coexistence, published by McGraw-Hill in 2004, includes an
`analysis of the ability of Bluetooth to coexist with other interfering networks, such as Wi-Fi.
`
` I have also been hired to serve as an expert on Bluetooth-related matters by many top
`companies, including Broadcom, IBM, Ford, Motorola, and Toyota.
`
` I also have extensive experience with other wireless technologies. My course “Short Range
`Wireless and Bluetooth” included sections on Wi-Fi and other technologies, and this course
`was expanded to four and five day versions. I developed a new course “IEEE 802.11 and
`Bluetooth Operations” in 2002 and taught it to Infineon, Plantronics, and Philips, among
`others. Due to increased demand, I developed a three-day short course “IEEE 802.11 (Wi-Fi)
`Operations” and began teaching it in 2005 to Qualcomm. Other customers included Her
`Majesty’s Government Communication Center in the United Kingdom, Titan, L3
`Communications, and Broadcom.
`
` In 2002 I began teaching short courses in cellular communications, including GSM, CDMA,
`and LTE technologies. In 2005 I developed another comprehensive wireless course called
`“Short Range Wireless Networks” that included Bluetooth, Wi-Fi, ZigBee, and other
`technologies as they entered the marketplace. My second book, Wireless Network
`Coexistence, published by McGraw-Hill in 2004, is a comprehensive study of coexistence
`challenges among Wi-Fi, Bluetooth, ZigBee, and other short-range networks.
`
` In the mid-1990’s, which is the time frame of the applicable patents, my wireless experience
`included Bachelors, Masters, and PhD degrees in electrical engineering, along with several
`published works. During this time I studied basic and advanced communication systems,
`including digital and analog modulation methods used in public service, military, paging, and
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`amateur communications. I have held an Advanced Class Amateur Radio license since the late
`1970’s and have personally built and/or operated equipment that employed SSB, AM, FM,
`PSK, and FSK modulation techniques. For several years between 1982 and 1994, I served on
`the electrical engineering faculty at the U.S. Air Force Academy, a fully accredited
`undergraduate university, and at the Air Force Institute of Technology, a fully accredited
`graduate school. I taught undergraduate and graduate courses in digital and analog
`communications, and served as a laboratory course director and Director of Research at the
`Air Force Academy.
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`3.
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`MATERIALS REVIEWED AND RELIED UPON
`
` In forming the opinions set forth in this expert report, I have reviewed a number of materials.
`A list of the documents that I have reviewed and relied upon for this report is attached as
`Exhibit B (as well as those cited in the body of this report). I have also reviewed and relied
`upon each of the documents reviewed by Dr. Mihran and listed at Exhibit C of his Report. I
`have also relied on my education, experience, and knowledge of computer science, engineering
`and software practices, as well as my understanding of the applicable legal principles.
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`4.
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`LEGAL STANDARDS
`
` I am not an attorney. I have been advised of the following general principles of patent law to
`be considered in formulating my opinions as to the validity of the Patents-in-Suit. I have
`applied these principles to the facts set forth in this report in rendering my opinions.
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`
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`Claim Interpretation
`
` I understand that claims are to be interpreted from the perspective of one of ordinary skill in
`the art at the time of the invention and have considered such an interpretation in forming my
`opinions on validity. I also understand that claim construction is a matter of law and that claims
`are to be construed by the Court.
`
` It is my understanding that the claims of the patent are construed consistent with the so-called
`intrinsic evidence, which includes the language of the claim itself, the specification of the
`patents, other claims of the patent and the relevant prosecution histories from the U.S. Patent
`and Trademark Office (“USPTO”). Other materials (such as dictionaries) not in the written
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`records of the patents, i. e., extrinsic evidence, may also be considered if they are consistent
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`with (not contradictory to) the intrinsic evidence.
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`18.
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`The Court’s Claim Construction Memorandum and Order issued on January 15, 2020 in the
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`current
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`litigation.
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`In this expert report, I have used the Court’s Claim Construction
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`Memorandum and Order to address the validity issues. The Court’s Claim Construction
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`Memorandum and Order construes the claim terms as follows, and I have adopted those
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`constructions in my validity analysis:
`
`— Claim Construction
`“modulation method [] of a different type”
`“different families of modulation
`(’580 Patent, Claims 1, 58)
`techniques, such as the FSK family of
`modulation methods and the QAM family
`of modulation methods.”
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`[AND]
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`’228 Patent, Claim 1
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`“different types of modulation methods”
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`19.
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`For those terms that the Court did not construe, my assessment and determination of validity
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`is informed by the plain and ordinary meaning these terms would have to one of ordinary skill
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`in the art at the time of the invention deemed to have read the claim term in the context of the
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`particular claim as well as the entire patent, including the specification.
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`4.2
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`Presumption of Validity And Burden of Proving Invalidity
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`20.
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`I understand that a patent is presumed valid. I understand that the basis for that presumption
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`of validity is the fact that allowed claims have passed through a rigorous examination process
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`at the US. Patent Office. The evidence to overcome the presumption ofvalidity must be “clear
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`and convincing.” Thus, in order to invalidate any claim of the Patents—in-Suit, I understand
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`that Apple must set forth clear and convincing evidence that places an “abiding conviction” in
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`the mind of the jury that the facts it relies upon to prove invalidity are “highly probable.”
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`4.3
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`Anticipation
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`21.
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`It is my understanding that anticipation under 35 U.S.C. section 102 requires that a single prior
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`art reference or product clearly and convincingly discloses or contains, expressly or inherently,
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`every limitation of the claimed invention. Relevant standards1 for anticipation (from 35 U.S.C.
`§102, pre-AIA) are reproduced below:
`(a) The invention was known or used by others in this country, or patented or described
`in a printed publication in this or a foreign country, before the invention thereof by the
`applicant for patent
`(b) The invention was patented or described in a printed publication in this or a foreign
`country or in public use or on sale in this country, more than one year prior to the date
`of the application for patent in the United States …
`(e) The invention was described in — (1) an application for patent, published under
`section 122(b), by another filed in the United States before the invention by the
`applicant for patent or (2) a patent granted on an application for patent by another filed
`in the United States before the invention by the applicant for patent, except that an
`international application filed under the treaty defined in section 351(a) shall have the
`effects for the purposes of this subsection of an application filed in the United States
`only if the international application designated the United States and was published
`under Article 21(2) of such treaty in the English language
`(f) He did not himself invent the subject matter sought to be patented
`[and]
`(g)(2) Before such person’s invention thereof, the invention was made in this country
`by another inventor who had not abandoned, suppressed, or concealed it. In
`determining priority of invention under this subsection, there shall be considered not
`only the respective dates of conception and reduction to practice of the invention, but
`also the reasonable diligence of one who was first to conceive and last to reduce to
`practice, from a time prior to conception by the other.
` I understand that, in general, the anticipation analysis under 35 U.S.C. § 102 is limited to the
`use of a single reference. I further understand that portions of additional documents may be
`relied upon as part of the anticipation analysis if the primary reference incorporates the
`additional documents by reference. In order for the primary reference to incorporate additional
`documents by reference, the primary reference must identify with detailed particularity what
`specific material it incorporates and clearly indicate where that material is found in the
`additional documents. A mere reference to another document is insufficient to incorporate that
`
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`1 Dr. Mihran does not identify which section(s) of §102 he relies upon to show anticipation of the Asserted Claims.
`For example, with respect to Briancon, Dr. Mihran just states (at ¶49) that he “understand[s] that [Briancon] is prior
`art to the ‘580 and ‘228 Patents” and (at Exs. D-E, p. 1) that the Asserted Claims are invalid “under one or more
`sections of 35 U.S.C. §102.” But based on the prior art asserted (e.g., mainly patents and printed publications), I
`assume that Dr. Mihran relies on one or more of the cited sections of §102.
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`document by reference. Moreover, the referenced document must, itself, be publicly-available
`to be properly incorporated by reference.
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` I understand that the phrase “printed publication” as used in § 102(a) and (b) means sufficiently
`accessible to the public interested in the art, and depends upon dissemination and accessibility.
`Even a document that has been distributed is not necessarily a printed publication if, for
`example, distribution is governed by a binding agreement of confidentiality.
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` I understand that to be “known” under § 102(a), the knowledge must be publicly accessible
`and must be sufficient to enable one with ordinary skill in the art to practice the invention. I
`further understand that an invention is “used by others in this country” under § 102(a) if the
`use is accessible to the public.
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` I understand that a claimed invention is anticipated under 35 U.S.C. § 102(e) if that invention
`is described in another U.S. Patent that was filed earlier in the United States.
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` With regard to alleged prior art under 35 U.S.C. § 102(g), I understand that the first person to
`reduce an invention to practice (“the senior party”) is prima facie the first and true inventor. A
`reduction to practice of a claimed invention occurs at the earlier of (1) the date when a physical
`embodiment including all limitations of the claims is constructed and tested sufficiently to
`determine that it works for its intended purpose (an actual reduction to practice); or (2) the
`filing of a patent application (a constructive reduction to practice). I further understand that a
`constructive reduction to practice date is the earliest effective filing date for the patent,
`including the benefit of any foreign priority filing dates. I understand that the work of a person
`who was first to conceive but second to reduce to practice (“the junior party”) can constitute
`prior art under § 102(g) if the junior party can prove that (1) it conceived the invention before
`the senior party; and (2) it exercised reasonable diligence in reducing that invention to practice
`from the senior party’s date of conception to the date of reduction to practice.
`
` I understand that “conception” occurs when an inventor had formed in his or her mind a definite
`and firm idea of what the invention is going to be, and the date when this occurs is called the
`inventor’s date of conception of his or her invention. Conception must include every limitation
`of the claimed invention and is not complete until concrete enough that a person of ordinary
`skill could construct the apparatus without unduly extensive research or experimentation.
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` I understand that, to show “diligence” in reducing an invention to practice, an inventor must
`show he or she had been continuously working on attempting to reduce the invention to
`practice, without any significant gaps in time or effort in this attempt. I understand that if an
`inventor works continuously to either file a patent on the invention, or to create a device that
`includes the invention, then the inventor has shown diligence. On the other hand, I understand
`that if an inventor stops attempting to reduce his or her invention to practice, then the inventor
`has not been diligent. I understand that the law requires corroborating evidence (e.g.,
`documents, testimony and other evidence) of conception, reduction to practice, and diligence.
`
` Obviousness
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` It is my understanding that a claim is invalid for obviousness under 35 U.S.C. § 103 if, for
`example, two or more prior art references in combination clearly and convincingly disclose,
`expressly or inherently, every claim limitation so as to render the claim, as a whole, obvious.
`The relevant standard for obviousness (from 35 U.S.C. §103, pre-AIA) is as follows:
`(a) A patent may not be obtained though the invention is not identically disclosed or
`described as set forth in section 102 of this title, if the differences between the subject
`matter sought to be patented and the prior art are such that the subject matter as a whole
`would have been obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains. Patentability shall not be
`negatived by the manner in which the invention was made.
` In determining whether or not a patented invention would have been obvious, the following
`factors must be considered: (a) the scope and content of the prior art; (b) the differences
`between the prior art and the claims at issue; (c) the level of ordinary skill in the art; and (d)
`whatever “secondary considerations” may be present.
`
` I understand that certain “secondary considerations” may be relevant in determining whether
`or not an invention would have been obvious, and that these secondary considerations may
`include commercial success of a product using the invention, if that commercial success is due
`to the invention; long-felt need for the invention; evidence of copying of the claimed invention;
`industry acceptance; initial skepticism; failure of others; praise of the invention; and the taking
`of licenses under the patents by others. And any evidence of secondary considerations must
`be considered as part of the obviousness analysis.
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` I understand that a patent composed of several elements is not proved obvious merely by
`demonstrating that each of its elements was, independently, known in the prior art. Most, if not
`all, inventions rely on building blocks of prior art. But multiple prior art references or elements
`may, in some circumstances, be combined to render a patent claim obvious. I understand that
`I should consider whether there is an “apparent reason” to combine the prior art references or
`elements in the way the patent claims. To determine whether such an “apparent reason” to
`combine the prior art references or elements in the way a patent claims, it will often be
`necessary to look to the interrelated teaching of multiple patents, to the effects of demands
`known to the design community or present in the marketplace, and to the background
`knowledge possessed by a person having ordinary skill in the art. Further, one must consider
`the prior art as a whole—not just cherry-picking certain disclosures from a prior art reference
`and ignoring other prior art references or other disclosures from the same prior art references.
`In this case, Apple has the burden to prove by clear and convincing evidence that, at the time
`of the claimed invention, there was an apparent reason that would have prompted a person
`having ordinary skill in the field of the invention to combine the known elements and
`references in the way the claimed invention does.
`
` I also understand that there are restrictions in applying “common sense” to an obviousness
`analysis. First, I understand that common sense could, in limited circumstances, be invoked to
`provide a known motivation to combine, not to supply a missing claim limitation. I also
`understand that reliance on “common sense” cannot be used as a substitute for actual
`evidence and analysis.
`
` I also understand that when the prior art “teaches away” from combining prior art references
`or certain known elements, discovery of a successful means of combining them is more likely
`to be non-obvious. A prior art reference may be said to “teach away” from a patent when a
`person of ordinary skill, upon reading the reference, would be discouraged from following the
`path set out in the patent or would be led in a direction divergent from the path that was taken
`by the patent. Additionally, a prior art reference may “teach away” from a claimed invention
`when substituting an element within that prior art reference for a claim element would render
`the claimed invention inoperable.
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` I also understand that it is not permissible to use hindsight in assessing whether a claimed
`invention is obvious. Rather, I understand that, to assess obviousness, you must place yourself
`in the shoes of a person having ordinary skill in the relevant field of technology at the time the
`inventions were made who is trying to address the issues or solve the problems faced by the
`inventor and ignore the knowledge you currently now have of the inventions. The prior art
`itself, and not the inventor’s achievements, must establish any obviousness. Further, I
`understand that defining the problem to be solved in terms of its solution reveals improper
`hindsight in the selection of the prior art relevant to obviousness. Further, an overly narrow
`statement of the problem can represent a form of hindsight, because often the inventive
`contribution lies in defining the problem in a new revelatory way. Similarly, an assertion that
`a person of ordinary skill could combine the references, rather than that they would have been
`motivated to do so, is an impermissible form of hindsight. Moreover, knowledge of a problem
`and motivation to solve it are entirely different from motivation to combine particular
`references to reach the particular claimed method.
`
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`Inherency
`
` I understand that a reference that does not expressly disclose a claim limitation may
`nevertheless “inherently” disclose the limitation if the missing matter is necessarily present in
`the system or method described in the reference. The disclosure must be sufficient to show that
`the natural result flowing from the operation of the system or method disclosed in the reference
`would require the missing matter or result in the performance of a missing step. And Apple
`has the burden to prove inherency.
`
` Written Description
`
` I understand that a patent claim satisfies the written description requirement if it reasonably
`conveys to those skilled in the art that the inventor had possession of the claimed invention as
`of the filing date. I further understand that the inquiry to determine whether a claim satisfies
`the “written description” requirement is performed from the viewpoint of a person having
`ordinary skill in the field of technology of the patent when the application was filed. This
`written description requirement may be satisfied by any combination of the words, structures,
`
`10
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`Rembrandt Wireless
`Ex. 2025
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 14 of 231
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`figures, diagrams, formulas, etc., contained in the patent application. The level of detail
`required to satisfy the written description requirement varies depending on the nature and scope
`of the claims and on the complexity and predictability of the relevant technology. The written
`description requirement does not demand specific examples to be disclosed in the specification.
`Failure to satisfy the written description requirement must be shown by clear and convincing
`evidence.
`
`
`
`Patentable Subject Matter
`
` I understand, per 35 U.S.C. §101, “whoever invents or discovers any new and useful process,
`machine, manufacture, or composition of matter, or any new and useful improvement thereof,
`may obtain a patent therefore.” However, I understand that the Supreme Court has interpreted
`§ 101 to cont