Case IPR2020-00510
`U.S. Patent No. 8,023,580
`
`
`Filed on behalf of Rembrandt Wireless Technologies, LP
`
`By:
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`
`
`
`
`
`
`Jill M. Browning (jbrowning@gbpatent.com)
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, VA 20191
`Tel: 703-716-1191
`Fax: 703-716-1180
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`QUALCOMM INCORPORATED
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP
`Patent Owner.
`____________
`
`Case IPR2020-00510
`U.S. Patent No. 8,023,580
`____________
`
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`U.S. Patent No. 8,023,580
`
`
`Filed on behalf of Rembrandt Wireless Technologies, LP
`
`By:
`
`
`
`
`
`
`
`Jill M. Browning (jbrowning@gbpatent.com)
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, VA 20191
`Tel: 703-716-1191
`Fax: 703-716-1180
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`QUALCOMM INCORPORATED
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP
`Patent Owner.
`____________
`
`Case IPR2020-00510
`U.S. Patent No. 8,023,580
`____________
`
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Case IPR2020-00510
`U.S. Patent No. 8,023,580
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`Page
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`I.
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`The Claim Language “Intended Destination” Is Limited To A Slave/Trib ... 1
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`II.
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`The ’228 Patent Claim Language Does Not Point To A Different Result ..... 4
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`III. Petitioner’s “Extrinsic Evidence” Is Not Relevant ....................................... 5
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`IV. Conclusion ................................................................................................... 5
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`i
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`Exhibit No.
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`Description
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`LIST OF CITED EXHIBITS
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`Case IPR2020-00510
`U.S. Patent No. 8,023,580
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`Filed By
`
`Petitioner
`
`Petitioner
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`U.S. Patent No. 8,023,580
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`Reexamination No. 90/013,808 File History
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`1001
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`1027
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`2007
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`Transcript of Telephonic Hearing dated July 16, 2020 Patent Owner
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`ii
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`Case IPR2020-00510
`U.S. Patent No. 8,023,580
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`TABLE OF AUTHORITIES
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`
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`CASES
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`Enzo Biochem, Inc. v. Applera Corp.,
` 599 F.3d 1325 (Fed. Cir. 2010) ........................................................................... 4
`
`Indacon v. Facebook,
` 824 F.3d 1352 (Fed. Cir. 2016) .......................................................................... 5
`
`Poly-Am. v. API Indus.,
` 839 F.3d 1131 (Fed. Cir. 2016) ........................................................................... 5
`
`VirnetX v. Mangrove Partners,
` 778 Fed. Appx. 897 (Fed. Cir. 2019) .................................................................. 4
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`iii
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`Case IPR2020-00510
`U.S. Patent No. 8,023,580
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`
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`I.
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`The Claim Language “Intended Destination” Is Limited To A Slave/Trib
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`The parties dispute the meaning of “addressed for an intended destination.”1
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`This dispute is the result of Petitioner’s tortured mapping of Trompower’s “mobile
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`device” as “the master and a base station as the slave or trib” (EX2007, 4:23-5:2)
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`resulting in multiple masters (mobile terminals) associated with a single slave/trib
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`(base station). Thus, Petitioner cannot prevail unless the “intended destination”
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`phrase is given an overly broad construction that would include the claimed
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`transceiver
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`in
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`the role of master (e.g., Trompower’s mobile
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`terminal)
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`communicating with another master (e.g., another mobile terminal). Notably,
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`neither Patent Owner, any prior patent challenger nor any district court has ever
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`construed or applied the “intended destination” limitation in the ’580 Patent to
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`encompass the destination of communications from a master to another master, or
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`to any device other than a slave/trib.
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`When properly construed in light of the intrinsic evidence, the meaning of
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`“intended destination” requires that it be limited to a slave/trib. See POPR 26-29;
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`EX1001 passim. To conclude otherwise ignores that the ’580 invention, as described
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`
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`1 Patent Owner also disputes that Petitioner has shown the cited art would have
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`suggested the “modulation methods of a different type,” “master/slave relationship”
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`or the “reversion” limitations. POPR 15-26; 31-72.
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`1
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`and claimed, requires that the “transceiver, in the role of the master according to the
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`master/slave relationship” communicate with a slave/trib (the slave/trib to which the
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`Case IPR2020-00510
`U.S. Patent No. 8,023,580
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`communication is addressed). Id.
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`Petitioner argues that the “claims are … crafted to include devices that also
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`communicate via non-master/slave relationships” and that the “cited examples in the
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`specification” do not “so limit the claims” to exclude such communications. Reply
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`2; see also Reply 4 (“the ’580 Patent also does not preclude a master-tribs system
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`from communicating with other master-tribs systems.”). Whether a device is capable
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`of additional, unclaimed functionality is not relevant to whether that device meets
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`every limitation of the claims – in this case, including the requirement that
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`communications be addressed to a slave/trib.
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`Petitioner’s position that the claimed master transceiver is not required to
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`communicate with a slave/trib and thus the “intended destination” need not be a
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`slave/trib, ignores the express language in Claims 2 and 59, which is directed to
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`“communication from the master to the slave . . .” Moreover, while the slave/trib’s
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`response to that communication is not expressly claimed, the claim language in the
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`preamble – “a slave communication … occurs in response to” the “master
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`communication” – makes clear that the intended destination of the claimed
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`communication from the master is a slave/trib. See EX1001, Claims 1, 58. When
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`read in the context of the entire claim, the claim language unequivocally establishes
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`2
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`Case IPR2020-00510
`U.S. Patent No. 8,023,580
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`that that “addressed for an intended destination” must mean “the address of the
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`slave/trib transceiver that the master seeks to communicate with.”
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`Petitioner does not point to any intrinsic evidence suggesting that the
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`“intended destination” of a communication from the “transceiver, in the role of the
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`master” is a device other than a slave/trib, except to a snippet of language routinely
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`included by patent practitioners in the Background to avoid unjustifiably limiting
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`claim scope. Reply 2-3 (quoting EX1001, 3:32-39). When read in context, the quoted
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`language means only that the invention was meant to “cover all modifications,
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`equivalents, and alternatives falling within the spirit and scope of the . . . claims.”
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`EX1001, 3:38-39 (emphasis added). Such language does not expand the claim scope
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`to encompass a communication from the “transceiver, in the role of the master” to
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`an “intended destination” that is something other than a slave/trib.
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`The prosecution history further supports Patent Owner’s proposed
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`construction of the “intended destination” as a slave/trib. During a third-party
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`requested ex parte reexam Patent Owner stated: “The specification of the ’580 Patent
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`makes clear that the claimed ‘intended destination’ is a particular trib in the
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`network.” EX1027, 1211 (emphasis added)(citing EX1001, 4:14-17 (“training
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`sequence 34 … includes the address of a trib that the master seeks to communicate
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`with”)). Whether the trib is a “particular trib” or just “a trib” is not the issue here.
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`Rather the issue is whether it must be a trib or could be another master. While Patent
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`3
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`Case IPR2020-00510
`U.S. Patent No. 8,023,580
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`Owner believes there is no difference between a trib and a particular trib in the
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`context of the claims, neither construction is broad enough to include a master.2
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`II. The ’228 Patent Claim Language Does Not Point To A Different Result
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`Petitioner argues that Claim 1 of the ’228 Patent includes recitations
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`indicating that a slave/trib is “an intended destination” and, because the ’580 Patent
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`claims omit such recitations, the invention is not so limited. Reply 3 (citing Enzo
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`Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1333 (Fed. Cir. 2010)). In Enzo, the
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`Federal Circuit saw “no basis to read a ‘hybridization’ requirement into the claims”
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`because “[n]othing in the claims refers to hybridization ….” Id. at 1333. Here, the
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`claim language itself provides a “basis to read” the slave/trib as the “intended
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`destination” of the master communication because the language “communication
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`from the master to the slave” is part of and limits both Claims 2 and 59. Also unlike
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`the case in Enzo (see id.), such a construction is fully supported by other intrinsic
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`evidence. See EX1001 passim; POPR 26-29.
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`Any reliance on claim differentiation is misplaced because the claims being
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`2 Further, if the Board were to decide that “intended destination” could be construed
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`to include a non-slave/trib, Patent Owner’s statement in the reexam clearly
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`disclaimed such scope. VirnetX, Inc. v. Mangrove Partners Master Fund Ltd., 778
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`Fed. Appx. 897, 910 (Fed. Cir. 2019).
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`4
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`Case IPR2020-00510
`U.S. Patent No. 8,023,580
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`compared are not “otherwise identical in scope.” Indacon v. Facebook, 824 F.3d
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`1352, 1358 (Fed. Cir. 2016). Claim differentiation cannot be used “to broaden claims
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`beyond their meaning in light of the patent as a whole” or “override clear statements
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`of claim scope.” Poly-Am. v. API Indus., 839 F.3d 1131, 1137 (Fed. Cir. 2016).
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`III. Petitioner’s “Extrinsic Evidence” Is Not Relevant
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`Lacking intrinsic evidence, Petitioner turns to “extrinsic evidence,” i.e., new
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`exhibits 1056-1066 relating to industry standards and primarily relies on those not
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`even mentioned in the ’580 Patent, i.e., V.110 and V.120. Reply 4-5. Petitioner does
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`not point to any place in these exhibits that construes “intended destination” in the
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`context of a master/slave relationship, and the standards do not refer to a
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`master/slave relationship. It is not relevant that modems in other systems compatible
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`with the same industry standards have configurations that do not utilize a
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`master/slave relationship. Those systems are not part of the invention described and
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`claimed in the ‘580 Patent.
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`IV. Conclusion
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`Patent Owner respectfully requests that the Board adopt Patent Owner’s
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`proposed construction and refuse to institute inter partes review.
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`Date: July 30, 2020
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`Respectfully Submitted,
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`
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`
` /Jill M. Browning/
`Jill M. Browning (Reg. No. 42,364)
`Lead Counsel for Patent Owner
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`5
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the foregoing:
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`Case IPR2020-00510
`U.S. Patent No. 8,023,580
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`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`was served by electronic mail on this 30th day of July, 2020, upon Counsel for
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`Petitioner, as follows:
`
`Eagle Robinson
`Richard Zembek
`James Warriner
`Eric Green
`Norton Rose Fulbright US LLP
`98 San Jacinto Blvd.
`Suite 1100
`Austin, Texas 78701-4255
`Tel.: 512-474-5201
`Fax: 512-536-4598
`Email:
`eagle.robinson@nortonrosefulbright.com
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`richard.zembek@nortonrosefulbright.com
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`rembrandt-qc-ipr@nortonrosefulbright.com
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`
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`/Jill M. Browning/
`Jill M. Browning
`Registration No. 42,364
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`Tel: 703-716-1191
`Fax: 703-716-1180
` jbrowning@gbpatent.com
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