UNITED STATES PATENT AND TRADEMARK OFFICE
`
`IPR2020-00034
`U.S. Patent No. 8,023,580
`
`
`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.
`
`Case IPR2020-00034
`U.S. Patent No. 8,023,580
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`IPR2020-00034
`U.S. Patent No. 8,023,580
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`
`Case IPR2020-00034
`U.S. Patent No. 8,023,580
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`1
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`TABLE OF CONTENTS
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`IPR2020-00034
`U.S. Patent No. 8,023,580
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`EXHIBIT LIST .......................................................................................................... 4
`
`TABLE OF AUTHORITIES ..................................................................................... 6
`
`I.
`
`Introduction .......................................................................................................... 7
`
`II. Background .......................................................................................................... 9
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`A. Summary of the State of Master/Slave Art Prior to the ‘580 Invention .......... 9
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`B. Summary of the Problems Identified and Solved by the Claimed Invention . 12
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`i. The Problems Identified in the ‘580 Patent ................................................. 12
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`ii. The ‘580 Solution to These Problems in a Master/Slave Setting ............... 14
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`III. The Person of Ordinary Skill in the Art ......................................................... 21
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`IV. Claim Construction ......................................................................................... 21
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`A. Construction of Claims 2 and 59 of the ‘580 Patent ...................................... 21
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`B. The Claimed “Master/Slave Relationship” Requires a Configuration Capable
`of Performing All Other Claim Limitations and Necessarily Requires That Slaves
`Only Respond to the Master When Polled By The Master .................................. 22
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`V. Argument ........................................................................................................... 26
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`A. The Petition Should be Denied Under 35 U.S.C. § 314 ................................. 26
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`B. The Office Should Decline to Institute Under 35 U.S.C. § 325(d) Because
`"the Same or Substantially the Same Prior Art or Arguments Previously Were
`Presented to the Office." ....................................................................................... 36
`
`C. The Petition Should be Denied on the Merits ................................................ 42
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`2
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`IPR2020-00034
`U.S. Patent No. 8,023,580
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`i. Yamano Fails To Disclose A Single Transceiver, In The Role Of A Master,
`That Sends First and Second Sequences As Claimed ....................................... 42
`
`ii. The Cited Art Does Not Teach and Would Not Have Suggested a Polled
`Master/Slave System ......................................................................................... 49
`
`iii. Yamano and the Secondary References Would Have failed to Teach or
`Suggest the Recited Indication of Reversion ..................................................... 58
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`iv. Yamano and Davis Would Not Have Suggested “the Third Sequence is
`Transmitted in the First Modulation Method and Indicates that Communication
`from the Master to the Slave has Reverted to the First Modulation Method.” . 60
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`VI. Conclusion ...................................................................................................... 64
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`3
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`EXHIBIT LIST
`Exhibit No.
`EX2001
`EX2002
`
`EX2003
`
`EX2004
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`EX2005
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`EX2006
`
`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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`IPR2020-00034
`U.S. Patent No. 8,023,580
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`
`Title
`Declaration of Nikil Jayant
`HEWLETT-PACKARD JOURNAL, 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.)
`
`4
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`
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`EX2012
`
`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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`IPR2020-00034
`U.S. Patent No. 8,023,580
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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
`
`5
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`
`
`TABLE OF AUTHORITIES
`Cases
`
`IPR2020-00034
`U.S. Patent No. 8,023,580
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`Arctic Cat, Inc. v. Polaris Indus. Inc., IPR2017-00199, Paper 8 (Apr. 17, 2017). . 29
`E-One, Inc. v. Oshkosh Corp., IPR2019-0016, Paper 16 (May 15, 2019) .............. 26
`in Becton Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8
`(Dec. 15, 2017) ..................................................................................................... 37
`Magellan Midstream Partners LP v. Sunoco Partners Marketing & Terminals LP,
`IPR2019-01445, Paper 12 (January 22, 2020) ..................................................... 26
`Next Caller Inc., v.TrustID, Inc., IPR2019-00961, -00962. Paper 10, at 15-16
`(October 16, 2019) ................................................................................................ 34
`NHK Spring Co., v. Intri-Plex Technologies, IPR2018-00752, Paper 8 (PTAB Sept.
`12, 2018) ............................................................................................................... 25
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ......................................... 20
`Samsung Elecs. America v. UNILOC 2017 LLC, IPR2019-01219, Paper 7 (January
`9, 2020) ................................................................................................................. 26
`Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC,
`IPR2019-01393, Paper 12 (February 5, 2020) ..................................................... 26
`
`Statutes
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`35 U.S.C. § 314(a) ..................................................................................................... 7
`35 U.S.C. § 325(d) ..................................................................................................... 7
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`6
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`Introduction
`U.S. Patent No. 8,023,580 (“the ‘580 Patent”) has been the subject of six
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`IPR2020-00034
`U.S. Patent No. 8,023,580
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`I.
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`previous IPR challenges, a recently-concluded reexamination challenge, and a
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`district court challenge which concluded with a Federal Circuit opinion affirming
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`patentability. The instant Petition treads over well-worn ground (much of which
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`Petitioner ignores), and should be denied for numerous reasons:
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`
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`First, the Petition should be denied pursuant to 35 U.S.C. § 314(a) as
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`cumulative of the related district court litigation (“the Parallel Litigation”) in which
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`substantially the same prior art, invalidity arguments, and expert testimony have
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`been presented. Trial in the Parallel Litigation is scheduled to begin on June 1, 2020,
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`and will almost certainly reach a final judgment long before any final written
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`decision would be reached in this case. Because this IPR would involve reanalyzing
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`the same references and arguments under the same claim construction standard as
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`the soon-to-be-concluded Parallel Litigation, institution would be a significant waste
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`of the Board's resources and contrary to the goal of the AIA to provide an efficient
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`alternative to litigation.
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`Second, the Petition should be denied pursuant to 35 U.S.C. § 325(d) because
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`the same or substantially the same prior art or arguments previously were presented
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`to the Office. During the now-concluded reexamination, the Office applied Yamano
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`(Petitioner’s primary reference), and confirmed the patentability of the claims over
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`U.S. Patent No. 8,023,580
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`it. The art cited in the Petition is substantially the same as or merely cumulative of
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`that previously applied.
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`Third, the Petition fails to present a prima facie showing of obviousness as to
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`the challenged '580 Patent claims, which require a single transceiver, “in the role of
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`a master” that transmits the first, second and third sequences required by the claims.
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`In Yamano, by contrast, the sequences allegedly corresponding to the claimed first
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`and second sequences are transmitted by different modems.
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`Fourth, Petitioner has not shown that it would have been obvious to modify
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`Yamano to a polling-based master/slave relationship as claimed. Petitioner’s
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`analysis simply ignores the Federal Circuit’s decision affirming the validity of this
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`patent, where the Court found that the prior art would have discouraged use of a
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`polling-based master/slave relationship
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`Finally, none of the references relied on in the Petition would have suggested
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`a third sequence that indicates that communication from the master to the slave has
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`reverted to the first modulation method. While the Petition relies on Davis for this
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`limitation, Davis only teaches reducing to a lower transmission rate if a data block
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`or portion cannot be successfully transmitted at a higher transmission rate. There
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`would have been no teaching or suggestion in Davis (or any of the other cited art) of
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`reverting to the original transmission rate (e.g., Davis’s higher transmission rate) in
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`a particular data mode transaction.
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`8
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`IPR2020-00034
`U.S. Patent No. 8,023,580
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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 EX1101, 1:27-65, 3:40-48. Thus, 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
`
`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 at 3:40-4:50, with reference to FIG. 2.
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`Briefly, FIG. 2 discloses a polled multipoint master/slave system. At the
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`beginning of a session, the master established a common modulation type for
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`communication with all its slaves (sequence 32 in FIG. 2). All slaves were identical
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`in that they shared a common 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 wants 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 in FIG. 2). A slave could not initiate a communication, but, if the
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`slave were polled by the master, it could respond to the master in a similar fashion
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`(sequences 42-46 in FIG. 2). When the master had completed its communications
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`with the first slave, it could then communicate with a second slave using the same
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`negotiated common modulation (sequences 48-54 in FIG. 2). Again, the slave had
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`to be polled before it could communicate with the master. EX2001 at ¶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 the problems that resulted in
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`a polled multipoint master/slave system when the master wanted to communicate
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`using different modulation types and – and as illustrated in the preferred embodiment
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`described in the specification -- to communicate with different types of tribs (e.g.,
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`Type A and Type B). With reference to FIG. 2, the problems Gordon Bremer both
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`identified and solved are 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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`EX1101, 4:55-5:6.
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`Summarizing the problems inventor Bremer was first to identify:
`
`a)
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`If a prior art master wanted to communicate with a slave using a second
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`modulation method that was of a different type than that used to previously
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`communicate with the same or a different slave (“wherein the second modulation
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`method is of a different type than the first modulation method”), it was necessary to
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`tear down the session and begin a new session. Doing so was disruptive.
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`b)
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`If the prior art master attempted to communicate using a different modulation
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`type without beginning a new session, the slaves would not understand the attempted
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`communications and would not respond to any communications directed at them,
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`U.S. Patent No. 8,023,580
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`resulting in repeated attempts by the master to communicate. In addition, the slaves
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`could become confused by the transmissions and make improper communication
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`attempts.
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`One of ordinary skill in the relevant art would have understood that FIG. 2 and its
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`description do not disclose and would not have suggested the above-described
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`problems, or even the goal of using different types of modulations in one polled
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`multipoint master/slave session. EX2001 at ¶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 system and method of communication in which multiple
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`modulation methods are used to facilitate communication among a plurality of
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`modems in a network, which have heretofore been incompatible.” EX1101, 2:17-
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`20. Mr. Bremer solved the above-described problems with his claimed master/slave
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`communication system such that a master can seamlessly communicate with slaves
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`using multiple types of modulation methods, thereby permitting selection of the
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`modulation type best suited for a particular application. EX1101, 1:66-2:33;
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`EX2001 at ¶36.
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`The claimed invention of the ‘580 Patent is further described with reference
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`to the preferred embodiment illustrated in FIG. 2 and in FIGs. 3-8 and their written
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`description. Specifically, FIGs. 3 and 4 show block diagrams of the master
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`transceiver and tributary transceivers, while FIG. 5 shows a ladder diagram
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`illustrating the operation of those transceivers. FIGs. 6 and 7 show state diagrams
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`for exemplary tributary transceivers. And FIG. 8 shows a signal diagram for
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`exemplary transmissions. EX2001 at ¶37.
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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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`EX1101,4:21-24, 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 at ¶38.
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`Mr. Bremer’s solution to the problems described above is captured in the
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`language of claims 2 and 59 and described in the ‘580 specification with reference
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`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 modulation method, i.e., one that the Type B
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`trib can understand. EX2001 at ¶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 at ¶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 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 at ¶30.
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`The ‘580 specification describes Mr. Bremer’s “switches” between
`
`modulation types as follows:
`
`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]
`
`…. 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]
`
`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 receive data
`from master transceiver 64 as part of sequence 132. [6:49-54]
`
`Thus, with reference to the preferred embodiment disclosed in FIG. 5 (and using the
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`language of 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” – one that is
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`incompatible with the first -- telling Type A tribs to ignore the second message’s
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`“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 at ¶¶43-44. 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
`
`modulation type in a polled master/slave setting. And in the disclosed preferred
`
`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 to that
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`problem. See EX1101, 5:57-7:3 (describing FIG. 5); EX2001 at ¶46.
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`
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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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`IPR2020-00034
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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 at ¶28.
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`IV. Claim Construction
`A. Construction of Claims 2 and 59 of the ‘580 Patent
`Claims 2 and 59 of the ‘580 Patent must be construed under Phillips v. AWH
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`
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`Corp., 415 F.3d 1303 (Fed. Cir. 2005). During the earlier IPRs, they were given the
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`broadest reasonable construction. Thus, to the extent Petitioner relies on those
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`constructions, they must be scrutinized to ensure that they remain appropriate under
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`Phillips.
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`Particularly relevant to Patent Owner’s position that the references cited by
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`Petitioner – alone or as combined – do not render claims 2 and 59 invalid under §
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`103(a) is the construction of the claim phrases (1) “master/slave relationship,” and
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`(2) “indicates that communication from the master to the slave has reverted to the
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`first modulation method.” Petitioner’s statement that these terms (along with other
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`terms in the claims) should be construed “according to their plain and ordinary
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`meaning consistent with the specification” (Petition, 16) is not helpful, because
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`Petitioner fails to specify what constitutes the plain and ordinary meaning of these
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`terms.
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`B. The Claimed “Master/Slave Relationship” Requires a Configuration
`Capable of Performing All Other Claim Limitations and Necessarily
`Requires That Slaves Only Respond to the Master When Polled By
`The Master
`
`The claims at issue require: “A communication device capable of
`
`
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`communicating according to a master/slave relationship in which a slave
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`communication from a slave to a master occurs in response to a master
`
`communication from the master to the slave”; and “A communication device
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`capable of communicating according to a master/slave relationship in which a slave
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`message from a slave to a master occurs in response to a master message from the
`
`master to the slave” (claims 1 and 58, respectively, on which claims 2 and 59
`
`depend) (emphasis added). In light of this and other language in claims 2 and 59,
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`they are directed to a network historically-referred to in the computer industry as a
`
`polled master/slave network in which one centralized “master” device controls all
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`network communications with the other subordinate “slave” or “tributary” devices
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`which has been programmed to capture Mr. Bremer’s solution to the problem he
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`identified. EX2001 at ¶107.
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`Consistent with and essential to the Bremer invention, as disclosed and
`
`claimed in the ‘580 Patent, the slave devices cannot respond to the master unless
`
`polled. EX1101,Abstract. “[A] master controls the initiation of its own transmission
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`to the tribs and permits transmission from a trib only when that trib has been
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`IPR2020-00034
`U.S. Patent No. 8,023,580
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`selected.” Id. at 4:7-9. See also id. at 2:24-29 (describing the claimed invention as
`
`one involving “communication according to a master/slave relationship in which a
`
`communication from a slave to a master occurs in response to a communication from
`
`the master to the slave.”). See also Rembrandt v. Samsung, 853 F.3d 1370, 1379 n.
`
`4 (“Upender refers to master/slave as the ‘polling’ protocol, but both parties agree
`
`that the two are synonymous for the purposes of this case.”). EX2001 at ¶108.
`
`The specification further supports Patent Owner’s position that the claims
`
`require polling. See, e.g., EX1101,2:25-29 (in the summary of the invention, “a
`
`device [according to the invention] may be capable of communicating according to
`
`a master/slave relationship in which a communication from a slave to a master occurs
`
`in response to a communication from the master to the slave.”) (emphasis added);
`
`id. at 4:6-9 (referring to Fig. 2, showing “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”) (emphasis added); id. at 4:49 (referring to Fig. 2, “Master transceiver
`
`24 is conditioned to expect data only from trib 26b because trib 26b was selected as
`
`part of training sequence 48”) (emphasis added); id. at 5:4-6 (referring to Fig. 2,
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`“any unilateral transmission by a trib that has not been addressed by the master
`
`transceiver will violate the multipoint protocol”); id. at 6:30-32 (referring to Fig. 5
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`and only showing slave (trib) communications after receiving polling messages from
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`23
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`the “master” device) (emphasis added); id. at 6:16-7:3 (referring to Figs. 5, 6 and 7
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`and explaining that, unless the master transmits a poll request, the tribs will not
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`transmit information but rather will time out and await further polling).1 EX2001 at
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`¶109.
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`Extrinsic evidence also “can shed useful light” during claim construction.
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`Phillips, 415 F.3d at 1317. In his Treatise, “Data Communications, Computer
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`Networks and Open Systems” (4th Ed. 1998), Professor Fred Halsall, Newbridge
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`Professor of Communications Engineering, University of Wales, describes examples
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`of how polling works:
`
`
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`To ensure that only one message is transmitted at any instant on
`each shared communication line, the central computer … either polls
`or selects each terminal connected to the line in a particular
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`1 Provisional Application No. 60/067,562, to which the ’580 Patent claims priority
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`and which is incorporated by reference into the specification (EX1101 at 1:14-17),
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`also supports Patent Owner’s construction in that it states: “[T]he master controls
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`the initiation of its own transmission (outbound) and allows transmission of each
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`tribs (inbound).” EX1114 (Provisional Application) at 4 (emphasis added). In other
`
`words, the slave/trib cannot transmit “inbound” to the master unless the master
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`“allows” it to do so. Id.
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`
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`24
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`U.S. Patent No. 8,023,580
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`sequence. As each terminal connected to the shared line is allocated a
`unique identifier, the central computer communicates with a terminal
`by sending it messages with the identity of the terminal at the
`head. Messages can be of two types: control or data.
`
`
`Periodically the central computer sends each terminal, in turn, a
`poll control message, which effectively invites the polled terminal to
`send a message if it has one waiting. If it has, it responds with a data
`message, otherwise it responds with a nothing-to-send control
`message. ….” [EX2003 at 162-63 (emphasis added).]
`
`
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`The poll is a message that provides permission to the slave or tributary to
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`transmit on the network, e.g., “invit[ing] the polled terminal to send a message if it
`
`has one waiting.” In a polled master/slave relationship, slave devices are denied
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`permission to transmit on the network until the master permits transmission from the
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`slave via a poll. EX2001 at ¶111.
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`While the Petition does not expressly construe “master/slave relationship,”
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`other than referring to its “plain and ordinary meaning consistent with the
`
`specification,” Petitioner’s expert, Lanning -- using a methodology completely
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`divorced from the specification -- opines that a “master/slave” relationship exists in
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`division multiple access (TDMA) protocols (e.g., EX1103 at ⁋⁋27, 77, 104, 106,
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`110-118), which he then maps to this limitation. In contrast to Lanning’s approach,
`
`“master/slave relationship,” “master,” and “slave” must be construed read in light of
`
`the specification and in light of the other limitations in the claim. Thus, mere
`
`reference to any alleged “master/slave” device – in the Davis system – would not
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`25
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`suggest the claimed communication device of the ‘580 Patent. The device claimed
`
`in the ‘580 Patent – communicating in a master/slave relationship – requires much
`
`more, including polling. See the discussion above. In a polled master/slave
`
`relationship, slave devices are denied permission to transmit on the network until the
`
`master permits transmission from the slave via a poll. By contrast, in the TDMA
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`system of Christian each slave is never denied permission to transmit during its time
`
`slot; it can always do so. EX2001 at ⁋ 87.
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`In fact, the art cited and relied on by Petitioner would not have suggested Mr.
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`Bremer’s communication device, in a master/slave relationship, as described and
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`claimed in the the ‘580 Patent. In large part, that is because of the significant
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`differences in the challenges that the cited art was attempting to address compared
`
`to that addressed by Mr. Bremer. See Section II, supra. Those differences expose
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`the nonobviousness of Mr. Bremer’s claimed invention. See Section V.C, infra.
`
`
`
`V. Argument
`A. The Petition Should be Denied Under 35 U.S.C. § 314
`Based solely on the relationship between the IPR proceedings and the parallel
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`district court case, the Board recently has denied institution under § 314(a) in several
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`IPR proceedings based on NHK Spring Co., v. Intri-Plex Technologies, IPR2018-
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`26
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`00752, Paper 8 (PTAB Sept. 12, 2018) (precedential).2 See, e.g., E-One, Inc. v.
`
`Oshkosh Corp., IPR2019-0016, Paper 16 (May 15
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