`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`REMBRANDT WIRELESS
`TECHNOLOGIES, LP,
`
`v.
`
`APPLE INC.,
`
`Plaintiff,
`
`Defendant.
`
`
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`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`Case No. 2:19-cv-00025-JRG
`
`Hon. Rodney Gilstrap
`
`JURY TRIAL DEMANDED
`
`
`
`APPLE INC.’S INVALIDITY CONTENTIONS AND PRODUCTION OF
`DOCUMENTS PURSUANT TO PATENT RULES 3.3 AND 3.4
`
`
`
`
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`
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`
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`Rembrandt Wireless
`Ex. 2011
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00034
`Page 1 of 144
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`TABLE OF CONTENTS
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`Page
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`I.
`
`GENERAL STATEMENT AND RESERVATION OF RIGHTS ..................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`General Reservation of Rights ................................................................................ 1
`
`Asserted Claims ...................................................................................................... 1
`
`Claim Construction ................................................................................................. 2
`
`Doctrine of Equivalents .......................................................................................... 4
`
`Ongoing Discovery and Disclosures ....................................................................... 4
`
`II.
`
`INVALIDITY CONTENTIONS PURSUANT TO P.R. 3-3 ............................................. 6
`
`A.
`
`Invalidity Contentions Under P.R. 3-3(a) ............................................................... 7
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Prior Art Patents and Printed Publications.................................................. 7
`
`Applicant Admitted Prior Art ..................................................................... 8
`
`Additional Prior Art Offered For Sale and/or Publicly Used or
`Known or That May Lead to Discovery of Additional Prior Art ............. 14
`
`The Asserted Claims Are Not Entitled To the Claimed Priority
`Date and the Claims Are Invalid In View of the Accused Bluetooth
`System Under 35 U.S.C. § 102 ................................................................. 15
`
`Rembrandt is Collaterally Estopped From Disputing That Each
`Limitation of the Independent Claims is Within the Prior Art ................. 17
`
`B.
`
`Invalidity Contentions Under P.R. 3-3(b) ............................................................. 18
`
`C.
`
`D.
`
`1.
`
`2.
`
`Motivation to Combine References .......................................................... 20
`
`Secondary Considerations ....................................................................... 119
`
`Invalidity Contentions Under P.R. 3-3(c) ........................................................... 121
`
`Invalidity Contentions Under P.R. 3-3(d) ........................................................... 122
`
`1.
`
`2.
`
`3.
`
`Invalidity Under 35 U.S.C. Section 112(1)............................................. 124
`
`Indefiniteness Under 35 U.S.C. Section 112(2) ...................................... 132
`
`Invalidity Based on 35 U.S.C. § 112(6)/Functional and/or Single
`Means Claiming ...................................................................................... 134
`
`E.
`
`Lack of Patentable Subject Matter ...................................................................... 138
`
`ACCOMPANYING DOCUMENT PRODUCTION UNDER P.R. 3-4(A) AND
`(B) ................................................................................................................................... 140
`
`III.
`
`
`
`i
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`Rembrandt Wireless
`Ex. 2011
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`Pursuant to the Court’s June 4, 2019 Docket Control Order (D.I. 39), and the Rules of
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`Practice for Patent Cases for the Eastern District of Texas (“Patent Rules” or “P.R.”), Defendant
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`Apple Inc. hereby discloses its Invalidity Contentions. Defendant contends that each of the claims
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`asserted by Plaintiff Rembrandt Wireless Technologies, LP, (“Rembrandt”) is invalid under at
`
`least 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`I.
`
`GENERAL STATEMENT AND RESERVATION OF RIGHTS
`
`A.
`
`General Reservation of Rights
`
`These Invalidity Contentions, along with the information and documents that Apple
`
`produces herewith, are provisional in nature and subject to further revision. Consistent with the
`
`Patent Rules, Apple reserves the right to amend these contentions should Rembrandt: (1) provide
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`any information that it failed to provide in its P.R. 3-1 and 3-2 disclosures or otherwise properly
`
`produce; (2) amend its P.R. 3-1 and 3-2 disclosures in any way; or (3) attempt to rely upon any
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`information during claim construction proceedings, at trial, in a hearing, or during a deposition
`
`that it failed to provide in its P.R. 3-1 and 3-2 disclosures or otherwise properly produce.
`
`Moreover, Apple further reserves the right to amend these contentions based on further discovery
`
`or Court rulings (or any other related reason) such as described herein. Apple provides these
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`Invalidity Contentions, as well as the accompanying production of documents, for the sole purpose
`
`of complying with P.R. 3-3 and 3-4.
`
`B.
`
`Asserted Claims
`
`In its Initial Infringement Contentions, dated April 26, 2019 (“Infringement Contentions”),
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`Rembrandt asserts that Apple infringes the following claims (“Asserted Claims”) of U.S. Patent
`
`Nos. 8,023,580 (“the ’580 patent”) and 8,457,228 (“the ’228 patent”) (collectively, “the Patents-
`
`In-Suit”):
`
`1
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`Patent Number
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`Claims
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`8,023,580
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`8,457,228
`
`2, 59
`
`21
`
`Apple’s invalidity contentions do not address any claims not asserted in Rembrandt’s
`
`Initial Infringement Contentions. To the extent that the Court or the Patent Rules permit
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`Rembrandt to assert additional claims against Apple, Apple reserves the right to disclose new or
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`supplemental invalidity contentions regarding such claims.
`
`C.
`
`Claim Construction
`
`Claim construction proceedings for this action have not yet occurred. Accordingly, Apple
`
`reserves the right to modify, amend, or supplement their Invalidity Contentions in accordance with
`
`P.R. 3-6 following claim construction rulings from this Court, or to the extent permitted by this
`
`Court. Apple also reserves the right to modify, amend or supplement their invalidity contentions
`
`upon Rembrandt’ modification of its asserted claim constructions, including as adopted by
`
`Rembrandt in its Infringement Contentions.
`
`Apple’s Invalidity Contentions are based in part on its present understanding of
`
`Rembrandt’s Infringement Contentions.
`
` In some instances, Rembrandt’s Infringement
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`Contentions contradict the teachings of the Patents-In-Suit, contradict the understanding of the
`
`claim terms by a person of ordinary skill in the art, and are vague and conclusory concerning how
`
`the claim limitations supposedly read on the accused products or activities. In addition, Rembrandt
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`fails (i) to specify where each limitation of the Asserted Claims is found in each accused
`
`2
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`instrumentality1 and (ii) to identify corresponding structure in the patent and accused
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`instrumentalities for terms it may contend require disclosure of an algorithm and therefore may be
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`treated as means-plus-function terms. As a result, Apple is currently unable to fully discern
`
`Rembrandt’s position regarding the construction of the patent claim limitations or terms. To the
`
`extent that Rembrandt is permitted to supplement its Infringement Contentions, Apple reserves the
`
`right to modify, amend, and/or supplement its Invalidity Contentions.
`
`Apple’s Invalidity Contentions do not represent their agreement or view as to the meaning
`
`of any claim term contained therein. By including prior art that is anticipatory or renders obvious
`
`claims based on the construction apparently applied by Rembrandt to its claims, Apple’s Invalidity
`
`Contentions are not—and should not be interpreted as—adoptions or admissions as to the accuracy
`
`of that scope or construction.
`
`Nothing in Apple’s Invalidity Contentions should be deemed an admission regarding the
`
`scope of any claims or the proper construction of those claims or any terms contained therein. Nor
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`should anything contained herein be understood or deemed to be an express or implied admission
`
`or contention with respect to the proper construction of any terms in any asserted claim, or with
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`respect to the alleged infringement of that claim.
`
`Unless otherwise stated herein, Apple takes no position on any matter of claim construction
`
`in these Invalidity Contentions. Apple reserves the right to propose any claim construction it
`
`considers appropriate and to contest any claim construction it considers inappropriate. Apple also
`
`reserves the right to argue that certain claim terms, phrases, and elements are indefinite, lack
`
`
`1 For example and without limitation, Rembrandt fails to identify what it considers to be the
`claimed transceiver in any given accused product, let alone within each accused product.
`Rembrandt also accuses dozens of Apple products but provided only a single claim chart that fails
`to include any information about how Apple’s own products.
`
`3
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`written description, are not enabled, are not patentable, are not novel or are otherwise invalid under
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`35 U.S.C. § 101 or § 112.
`
`Because of the uncertainty of claim construction, Apple reserve the right to further
`
`supplement or modify the positions and information in these Invalidity Contentions, including
`
`without limitation, the prior art and grounds of invalidity set forth herein, after the Asserted Claims
`
`have been construed, in accordance with the Local Patent Rules and the Court’s Orders.
`
`D.
`
`Doctrine of Equivalents
`
`Rembrandt has failed to provide contentions compliant with P.R. 3-1(d) regarding its
`
`allegations of infringement under the doctrine of equivalents. For example, Rembrandt has not
`
`provided contentions that identify the basis for Rembrandt’s position regarding each limitation
`
`allegedly infringed under the doctrine of equivalents and its alleged equivalent element in the
`
`accused products. Accordingly, Apple understands that Rembrandt will not rely on the doctrine
`
`of equivalents to show infringement of any limitation of any asserted claim. Should Rembrandt
`
`be permitted to amend its contentions to include any specific allegations of infringement under the
`
`doctrine of equivalents, Apple reserves the right to amend and supplement these Invalidity
`
`Contentions as appropriate.
`
`E.
`
`Ongoing Discovery and Disclosures
`
`Discovery in this case and Apple’s investigations are continuing. Apple expressly reserves
`
`the right to amend or modify these disclosures based on additional information obtained through
`
`continued formal discovery or other means pursuant to Fed. R. Civ. P. 26(e). Discovery is ongoing
`
`and Apple has not yet completed its search for and analysis of relevant prior art and other
`
`information, some of which is in the possession of third parties, and some of which was unavailable
`
`to Apple as a result of Rembrandt’s inexcusable delay in identifying and producing prior art,
`
`invalidity contentions and other documents relevant to patentability produced in other litigations
`
`4
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`involving the Patents-In-Suit and related patents, which documents were in Rembrandt’s
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`possession at the outset of this case and should have been immediately produced under the
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`mandatory provisions of the Discovery Order in this case (Dkt. No. 40). In light of Rembrandt’s
`
`delay in providing this information required under the mandatory disclosure provisions of the
`
`Discovery Order, and the abbreviated time for review, Apple reserves the right to supplement,
`
`amend, or alter the positions taken and information disclosed in these Invalidity Contentions. To
`
`the extent that Rembrandt’s production of such documents relating to the patentability of the
`
`Asserted Claims remains incomplete, Apple further reserves the right to supplement, amend, or
`
`alter the positions taken and information disclosed in these Invalidity Contentions.
`
`Apple further reserves the right to revise, amend, or supplement the information provided
`
`herein, including by identifying, charting, and relying on additional information, references,
`
`systems, and devices, should Apple’s further search and analysis yield additional such information,
`
`references, systems, or devices, consistent with the Local Patent Rules and the Federal Rules of
`
`Civil Procedure. In addition, Apple reserves the right to supplement, amend, or alter the positions
`
`taken and information disclosed in these Invalidity Contentions, including without limitation, the
`
`prior art and grounds of invalidity set forth herein under 35 U.S.C. §§ 101, 102, 103 or 112, to take
`
`into account information or defenses that may come to light as a result of Apple’s discovery efforts;
`
`additional information obtained as to the priority date(s) of the asserted claim; testimony or
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`documents produced by a party or non-party; and positions that Rembrandt may take concerning
`
`infringement or invalidity issues. For example, Apple may seek further discovery from third
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`parties believed to have knowledge, documentation, or corroborating evidence concerning items
`
`of prior art, including prior art listed in the Exhibits hereto. Such third parties may include, without
`
`limitation, the authors, inventors, assignees, owners, or developers of the references and
`
`5
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`technologies listed in these disclosures. In particular, Apple reserves the right to assert invalidity
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`under 35 U.S.C § 102(c), (d), (f), or (g) to the extent that discovery or further investigation yields
`
`information forming the basis for such grounds for invalidity.
`
`Apple further reserves the right to rely upon prior art cited in the file histories of the
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`Patents-In-Suit and related U.S. and foreign patent applications, including post-issuance
`
`proceedings, as invalidating references or to show the state of the art. Apple further intends to rely
`
`on inventor admissions, and admissions by Rembrandt and others providing testimony on behalf
`
`of Rembrandt (e.g., experts), concerning the scope of the prior art relevant to the Patents-In-Suit
`
`found in, inter alia: the patent prosecution history for the Patents-In-Suit and any related patents
`
`or patent applications, including post-issuance proceedings; any deposition testimony of the named
`
`inventor on the Patents-In-Suit; and the papers filed and any evidence submitted by Rembrandt in
`
`connection with this litigation, prior litigations, and other proceedings involving the Patents-in-
`
`Suit. Apple hereby incorporates by reference the relevant testimony of any fact witnesses who are
`
`deposed, provide declarations, or otherwise testify in this lawsuit. Apple also hereby incorporates
`
`by reference the reports and testimony of Apple’s expert witnesses regarding invalidity of the
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`Patents-In-Suit.
`
`II.
`
`INVALIDITY CONTENTIONS PURSUANT TO P.R. 3-3
`
`Subject to Apple’s reservation of rights herein, and with respect to each asserted claim in
`
`Rembrandt’s Infringement Contentions, Apple provides these Invalidity Contentions to:
`
`(a) identify each item of prior art that either anticipates or renders obvious each asserted
`
`claim (see Section II.A);
`
`(b) specify whether each item of prior art anticipates each asserted claim or renders it
`
`obvious, and where a combination of items of prior art render a claim obvious, identify such
`
`combination, and motivation to combine such items. For example, Exhibits B-Y, Z-1, and Z-2 and
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`6
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`Section II.A.5 below identify exemplary disclosures that anticipate each asserted claim and/or
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`exemplary obviousness combinations and exemplary motivations to combine such references;
`
`(c) provide a chart identifying where specifically in each alleged item of prior art each
`
`element of each asserted claim is found. See Section II.C (identifying items of prior art that
`
`anticipate and/or render obvious, alone or in combination, one or more of the Asserted Claims,
`
`either expressly, implicitly, or inherently as understood by a person of ordinary skill in the art);
`
`(d) identify the asserted claims that are invalid based on indefiniteness under 35 U.S.C.
`
`§ 112(2), lack of enablement or written description under 35 U.S.C. § 112(1) (see Section II.D);
`
`and
`
`(e) identify the asserted claims that are invalid because they are directed to unpatentable
`
`subject matter under 35 U.S.C. § 101 (see Section II.E).
`
`A.
`
`Invalidity Contentions Under P.R. 3-3(a)
`
`1.
`
`Prior Art Patents and Printed Publications
`
`Each of the Asserted Claims is anticipated and/or rendered obvious by prior art. Pursuant
`
`to P.R. 3-3(a), Apple identifies the prior art references that anticipate or render obvious an Asserted
`
`Claim in Exhibits A-W, which are hereby incorporated by reference as if fully set forth herein.
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`In addition, Apple identifies and hereby incorporates by reference as if set forth fully herein
`
`the prior art references alleged to anticipate or render obvious an Asserted Claim as described in
`
`any prior reexaminations or inter partes reviews of the Patents-in-Suit, and any future
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`reexaminations or inter partes reviews of the Patents-In-Suit that a requestor may file or the PTO
`
`may grant, and invalidity contentions related thereto. Apple also incorporates by reference, as if
`
`set forth fully herein, all prior art cited during the prosecution of the Patents-In-Suit.
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`In addition, Apple identifies and hereby incorporates by reference as if set forth fully herein
`
`the prior art references and invalidity contentions as described in any other lawsuits or proceedings
`
`7
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`wherein invalidity contentions have been or will be provided regarding the Patents-In-Suit,
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`including:
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` Rembrandt Wireless Technologies LP v. Samsung Electronics Co LTD et al, 2-16-
`
`cv-00170 (TXED);
`
` Rembrandt Wireless Technologies LP v. Samsung Electronics Co., Ltd., et al, 2-
`
`13-cv-00213 (TXED) (the “Samsung Litigation”);
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` Rembrandt Wireless Technologies, LP v. Broadcom Incorporated et al, 8-19-cv-
`
`00708 (CACD); and
`
` Rembrandt Wireless Technologies, LP v. Qualcomm Incorporated, 8-19-cv-00705
`
`(CACD).
`
`2.
`
`Applicant Admitted Prior Art
`
`Each of the references identified in Exhibit A may be used in combination with admissions
`
`in the specification regarding the prior art to render obvious the Asserted Claims. More
`
`particularly, public admissions by Rembrandt and/or the named inventor, Gordon Bremer, as well
`
`as admissions about the prior art in the ’580 and ’228 patent specifications and the prosecution
`
`history of the parent application, Serial No. 09/205,205 (’205 Application), which issued as U.S.
`
`patent No. 6,614,838 (’838 Patent), are binding, and can be used when determining whether a
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`claim is obvious. Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342, 1362 (Fed. Cir.
`
`2007) (“Admissions in the specification regarding the prior art are binding on the patentee for
`
`purposes of a later inquiry into obviousness.”); Constant v. Advanced Micro–Devices, Inc., 848
`
`F.2d 1560, 1570 (Fed.Cir.1988) (“A statement in the patent that something is in the prior art is
`
`binding on the applicant and patentee for determinations of anticipation and obviousness.”).
`
`8
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`Collectively, these admissions are referred herein, and in the supporting exhibits, as “Admitted
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`Prior Art.”
`
`For example, Mr. Bremer admitted in his sworn testimony that he did not invent
`
`master/slave communications, he did not invent multipoint communications, QAM modulation,
`
`FSK modulation, DMT modulation, PAM modulation, PSK modulation, or PPM modulation.
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`Samsung Litigation, 02/09/2015 PM Trial Tr. at 137-138. Accordingly, Rembrandt cannot dispute
`
`that this subject matter is part of the prior art.
`
`Likewise, the ’580 and ’228 patents describe various aspects of the prior art including a
`
`prior art multipoint network architecture using a master modem and at least two tribs. Rembrandt
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`introduced new terms “slave” and “master/slave relationship” into the specification of both patents
`
`in 2011, using these new terms as if they were the same as “tributary” and polled multipoint
`
`networks of master and tributary modems, respectively, albeit describing them in different
`
`language. ’580 patent at 2:25-29 and claims 1 and 58; see also ’228 patent at 2:31-34 and claim
`
`1. For example, in the “Description of the Illustrative Embodiments,” the ’580 and ’228 patents
`
`discuss an “polled multipoint communication protocol,” asserting that in such a protocol the
`
`“master … permits transmission from a trib only when that trib has been selected.” ’580 patent at
`
`4:4:9, ’228 patent at 4:30-33. In the “Summary” and claims, the ’580 and ’228 patents describe a
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`“master/slave” relationship as being one where “communication from a slave to a master occurs
`
`in response to a communication from the master to the slave.” ’580 patent at 2:24-29 and claim 1.
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`Rembrandt represented to the Examiner that no new matter was added when it introduced the new
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`“slave” and “master/slave relationship” terminology to the claims and specification of the ‘580
`
`patent, and cited as support paragraphs [0024-0025], [0031-0036] and [0048] of the specification.
`
`Reply Pursuant To 37 CFR 1.111, dated March 1, 2011, ’580 Patent File History, pp. 20-22. The
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`9
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`cited paragraphs discuss master and tributary (trib) modems or transceivers in multipoint
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`communication systems, including the prior art system illustrated in Figures 1 and 2.
`
`The discussions of master and tributary modems or transceivers in multipoint
`
`communication systems cited as support for the new terminology was carried forward into the ’580
`
`and ’228 patents as issued, including the admission that multipoint communication systems and
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`polled multipoint protocol operation were known in the prior art. In particular, Figure 1, which
`
`shows a master modem or transceiver 24 in communication with three tributary modems or
`
`transceivers 26-26 is labeled as “Prior Art.” See In re Nomiya, 509 F.2d 566, 571 (CCPA 1975)
`
`(holding applicant’s labeling of two figures in the application drawings as “prior art” to be an
`
`admission that what was pictured was prior art relative to applicant’s improvement); MPEP
`
`§ 2129. In addition, the specification of the ’580 and ’228 patents admits that multipoint
`
`communication systems utilizing a master and multiple tributary transceivers were known in the
`
`prior art. ’580 patent at 3:40-44; ’228 patent at 3:64-4:1 (“With reference to FIG. 1, a prior art
`
`multipoint communication system 22 is shown to comprise a master modem or transceiver 24,
`
`which communicates with a plurality of tributary modems (tribs) or transceivers 26-26 over
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`communication medium 28.”) (emphasis added). Likewise, the discussion of the operation of the
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`multipoint communication system cited as support also carried through into the issued patents:
`
`Referring now to FIG. 2, an exemplary multipoint communication session
`is illustrated through use of a ladder diagram. This system uses polled
`multipoint communication protocol. That is, a master controls the initiation
`of its own transmission to the tribs and permits transmission from a trib
`only when that trib has been selected.
`
`’580 patent at 4:4-9; ’228 patent at 4:28-33 (emphasis added). The patents are explicit that Fig. 2
`
`illustrates the operation of the prior art system of Fig. 1. ’580 patent at 3:9-10, ’228 patent at 3:33-
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`34 (“FIG. 2 is a ladder diagram illustrating the operation of the multipoint communication system
`
`of FIG. 1.”).
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`10
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`Rembrandt made consistent admissions during prosecution of one of the parent
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`applications to the ’580 and ’228 patents. During prosecution of the ’838 patent, an Office Action,
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`mailed on June 28, 2001, required the Applicant to designate Figure 2 as prior art: “Figure 2
`
`should be designated by a legend such as - prior art - because only that which is old is illustrated.”
`
`In a “First Amendment And Response” filed October 1, 2001, the Applicant made the amendment,
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`thus admitting that the subject matter shown in Figure 2 was known in the prior art.
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`Similarly, the U.S. Patent Trial and Appeal Board (“PTAB”) found that “the ’580 patent's
`
`disclosed multipoint communication systems (or master/slave systems), depicted in Figures 1 and
`
`2 and described in column 3, line 40 through column 4, line 50, contains material that may be used
`
`as prior art against the patent under 35 U.S.C. § 103(a).” IPR2014-00518, Pap. 47 at 13 (Sept. 17,
`
`2015); ’580 Prosecution History at 402. See also IPR2014-00519, Pap. 49 at 5 (Sept. 17, 2015);
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`IPR2014-00892, Pap. 46 at 13, 19 (Sept. 24, 2015); IPR2014-00893, Pap. 44 at 13, 19 (Sept. 24,
`
`2015); IPR2014-00895, Pap. 44 at 13 (Sept. 24, 2015).
`
`The prior art depicted in Figures 1 and 2 and described in column 3, line 40 through column
`
`4, line 50 includes “a master modem or transceiver 24, which communicates with a plurality of
`
`tributary modems (tribs) or transceivers 26-26 over communication medium 28.” ’580 patent at
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`3:41-44; ’228 patent at 3:64-4:1.
`
`The system described in the Admitted Prior Art operates using a polled multipoint
`
`communication protocol. ’580 patent at 4:6; ’228 patent at 4:30. In this protocol, “a master
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`[transceiver] controls the initiation of its own transmission to the tribs and permits transmission
`
`from a trib only when that trib has been selected.” ’580 patent at 4:7-9; ’228 patent at 4:31-33.
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`The master transceiver selects a trib by “transmit[ting] a training sequence 34 that includes the
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`address of the trib that the master seeks to communicate with. In this case, the training sequence
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`34 includes the address of trib 26a.” ’580 patent at 4:14-17; ’228 patent at 4:38-41. Further,
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`“[b]ecause master transceiver 24 selected trib 26a for communication as part of training sequence
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`34, trib 26a is the only modem that will return a transmission. Thus, trib 26a transmits data 44
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`destined for master transceiver 24.” ’580 patent at 4:29-33; ’228 patent at 4:53-55.
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`The Admitted Prior Art describes that the master can poll another trib (i.e., slave
`
`transceiver) for data as well:
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`The foregoing procedure is repeated except master transceiver identifies trib
`26b in training sequence 48. In this case, trib 26a ignores the training
`sequence 48 and the subsequent transmission of data 52 and trailing
`sequence 54 because it does not recognize its address in training sequence
`48. Master transceiver 24 transmits data 52 to trib 26b followed by trailing
`sequence 54 . . . To send information back to master transceiver 24, trib 26b
`transmits training sequence 56 to establish a communication session. Master
`transceiver 24 is conditioned to expect data only from trib 26b because trib
`26b was selected as part of training sequence 48. Trib 26b transmits data 58
`to master transceiver 24 terminated by trailing sequence 62.
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`’580 patent at 4:35-50; ’228 patent at 4:59-5:6.
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`Accordingly, based on Rembrandt’s admissions that multipoint communication systems
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`including master modems or transceivers and tributary modems or transceivers and polled
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`multipoint protocol are in the prior art, together with its representation that its addition of “slave”
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`and “master/slave relationship” did not add new matter to its patents, and citation to multipoint
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`communication systems including master and tributary modems or transceivers and polled
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`multipoint protocol as support for the new terminology, Apple contends that Rembrandt is bound
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`by its representations and has admitted that communication systems including a master modem
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`transceiver capable of communicating or configured to communicate according to a master/slave
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`relationship, as described in the patents, are in the prior art. The Admitted Prior Art thus includes
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`at least the following claimed subject matter of the Asserted Claims:
`
`‘580, Claim 2:
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`A communication device capable of communicating according to a
`master/slave relationship in which a slave communication from a slave to a
`master occurs in response to a master communication from the master to the
`slave, the device comprising:
`
`a transceiver, in the role of the master according to the master/slave
`relationship, for sending at
`least
`transmissions … wherein each
`transmission comprises a group of transmission sequences, wherein each
`group of transmission sequences is structured with at least a first portion
`and a payload portion … wherein at least one group of transmission
`sequences is addressed for an intended destination of the payload portion.
`
`‘580 Claim 59:
`
`A communication device capable of communicating according to a
`master/slave relationship in which a slave message from a slave to a master
`occurs in response to a master message from the master to the slave, the
`device comprising:
`
`a transceiver, in the role of the master according to the master/slave
`relationship … wherein the transceiver is configured to transmit
`messages….
`
`‘228 Claim 21:
`
`
`
`A master communication device configured to communicate with one or
`more slave transceivers according to a master/slave relationship in which a
`slave communication from a slave device to the master communication
`device occurs in response to a master communication from the master
`communication device to the slave device, the master communication
`device comprising:
`
`a master transceiver configured to transmit a first message over a
`communication medium from the master transceiver to the one or more
`slave transceivers, wherein the first message comprises:
`
`first information modulated according to a first modulation method,
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`second information, including a payload portion, modulated according to
`the first modulation method, wherein the second information comprises data
`intended for one of the one or more slave transceivers and
`
`first message address information that is indicative of the one of the one or
`more slave transceivers being an intended destination of the second
`information…
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`The master communication device as in claim 1, wherein the first
`information that is included in the first message comprises the first message
`address data.
`
`As described below, it would have been obvious to combine each identified prior art
`
`reference with this Admitted Prior Art to render obvious the Asserted Claims.2
`
`3.
`
`Additional Prior Art Offered For Sale and/or Publicly Used or Known
`or That May Lead to Discovery of Additional Prior Art
`
`Apple further contends that the asserted claims are invalid as anticipated and/or obvious in
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`view of public knowledge and uses and/or offers for sale of products and services under 35 U.S.C.
`
`§§ 102(a) and/or (b). For example, Apple’s Invalidity Contentions and accompanying document
`
`production reference or describe products and/or systems that were in use, on sale or otherwise
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`publicly available before the alleged priority date of the Patents-In-Suit. Based on th