Trials@uspto.gov
`571-272-7822
`
` Paper No. 9
` Entered: June 25, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00369
`Patent 6,128,290
`____________
`
`
`
`Before JAMESON LEE, MATTHEW R. CLEMENTS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`571-272-7822
`
` Paper No. 9
` Entered: June 25, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00369
`Patent 6,128,290
`____________
`
`
`
`Before JAMESON LEE, MATTHEW R. CLEMENTS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`IPR2015-00369
`Patent 6,128,290
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`I. INTRODUCTION
`
`On December 4, 2014, Petitioner Apple Inc. (“Apple”) filed a Petition
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`(Paper 1, “Pet.”) requesting inter partes review of claims 1–4 of U.S. Patent
`
`No. 6,128,290 (Ex. 1001, “the ’290 patent”). On March 30, 2015, Patent
`
`Owner DSS Technology Management, Inc. (“DSS”) timely filed a
`
`Preliminary Response (Paper 8, “Prelim. Resp.”). We have jurisdiction
`
`under 35 U.S.C. § 314, which provides that inter partes review may not be
`
`instituted “unless . . . there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition,
`
`Preliminary Response, and the proffered evidence, we conclude that Apple
`
`has established a reasonable likelihood that it would prevail in challenging
`
`the patentability of claims 1–4 of the ’290 patent under 35 U.S.C. § 103(a)
`
`on one of the grounds presented. Accordingly, we institute inter partes
`
`review of those claims.
`
`A. Related Matters
`
`The parties inform us that the ’290 patent is the subject of two district
`
`court actions: DSS Technology Management, Inc. v. Apple, Inc., No. 5:14-
`
`cv-05330-LHK (N.D. Cal.), and DSS Technology Management, Inc. v.
`
`Lenovo (United States), Inc., No. 6:14-cv-00525-JDL (E.D. Tex.). Pet. 3–4;
`
`Paper 4, 2. Additionally, claims 6, 7, 9, and 10 of the ’290 patent are the
`
`subject of a concurrently filed petition for inter partes review, IPR2015-
`
`00373.
`
`B. The ’290 Patent (Ex. 1001)
`
`The ’290 patent, titled “Personal Data Network,” issued October 3,
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`2000, from U.S. Patent Application No. 08/949,999 (Ex. 1005, 22–62, “the
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`IPR2015-00369
`Patent 6,128,290
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`’999 application”). The ’999 application was filed October 14, 1997, as a
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`continuation-in-part (“CIP”) of U.S. Patent Application No. 08/611,695 (Ex.
`
`1006, 21–61, “the ’695 application”), filed March 6, 1996, which matured
`
`into U.S. Patent No. 5,699,357 (Ex. 2001, “the ’357 patent”). See Ex. 1001,
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`col. 1, ll. 6–8.
`
`The ’290 patent relates to a data network for bidirectional wireless
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`data communications between a host or server microcomputer unit and a
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`plurality of peripheral units referred to as personal electronic accessories
`
`(PEAs). Ex. 1001, col. 1, ll. 11–14, col. 2, ll. 15–18. Among the objects of
`
`the invention is the provision of a data network that requires extremely low
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`power consumption, “particularly for the peripheral units,” avoids
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`interference from nearby similar systems, and is of relatively simple and
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`inexpensive construction. Id. at col. 1, ll. 33–34, 39–45. Figure 1 of the
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`’290 patent, reproduced below, is illustrative of the described wireless data
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`network system.
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`Figure 1 is a block diagram of a wireless data network system linking
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`a server microcomputer, referred to as “personal digital assistant (PDA) 11,”
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`with a plurality of peripheral units, or PEAs, 21–29. Id. at col. 2, ll. 42–44,
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`col. 2, l. 66–col. 3, l. 15.
`
`According to the ’290 patent, “the server microcomputer unit and the
`
`several peripheral units which are to be linked are all in close physical
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`proximity, e.g., within twenty meters, to establish, with very high accuracy,
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`a common time base or synchronization.” Id. at col. 1, ll. 50–54. “Using the
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`common time base, code sequences are generated which control the
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`operation of the several transmitters in a low duty cycle pulsed mode of
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`operation.” Id. at col. 1, ll. 57–59. “The server and peripheral unit
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`transmitters are energized in low duty cycle pulses at intervals which are
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`determined by a code sequence which is timed in relation to the
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`synchronizing information initially transmitted from the server
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`microcomputer.” Id. at col. 2, ll. 35–39. “The low duty cycle pulsed
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`operation both substantially reduces power consumption and facilitates the
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`rejection of interfering signals.” Id. at col. 1, ll. 59–61. “In the intervals
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`between slots in which a PEA is to transmit or receive, all receive and
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`transmit circuits are powered down.” Id. at col. 4, ll. 6–8.
`
`C. Illustrative Claim
`
`As noted above, Apple challenges claims 1–4 of the ’290 patent.
`
`Claim 1, the sole independent claim challenged, is reproduced below.
`
`Challenged claims 2–4 depend directly or indirectly from claim 1.
`
`1. A data network system for effecting coordinated operation of a
`plurality of electronic devices, said system comprising:
`
`a server microcomputer unit;
`
`
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`4
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`IPR2015-00369
`Patent 6,128,290
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`a plurality of peripheral units which are battery powered and portable,
`which provide either input information from the user or output
`information to the user, and which are adapted to operate within short
`range of said server unit;
`
`said server microcomputer incorporating an RF transmitter for
`sending commands and synchronizing information to said peripheral
`units;
`
`said peripheral units each including an RF receiver for detecting said
`commands and synchronizing information and including also an RF
`transmitter for sending input information from the user to said server
`microcomputer;
`
`said server microcomputer including a receiver for receiving input
`information transmitted from said peripheral units;
`
`said server and peripheral transmitters being energized in low duty
`cycle RF bursts at intervals determined by a code sequence which is
`timed in relation to said synchronizing information.
`
`Ex. 1001, col. 11, l. 61–col. 12, l. 18.
`
`D. Evidence of Record
`
`Apple relies on the following references, as well as the Declaration of
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`Jack D. Grimes, Ph.D. (Ex. 1008):
`
`Reference
`
`Thomas J. Barber Jr., BODYLANTM: A LOW-POWER
`COMMUNICATION SYSTEM (M.S. thesis, Massachusetts
`Institute of Technology) (“Barber”)
`
`Exhibit
`
`1002
`
`Natarajan (U.S. Patent No. 5,241,542; issued Aug. 31, 1993)
`
`1003
`
`Neve (U.S. Patent No. 4,887,266; issued Dec. 12, 1989)
`
`1004
`
`
`
`
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`5
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`E. Asserted Grounds of Unpatentability
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`Apple challenges the patentability of the challenged claims on the
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`following two grounds:
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`Reference(s)
`
`Basis
`
`Claims Challenged
`
`Barber
`
`Natarajan and Neve
`
`
`
`§ 103(a)
`
`§ 103(a)
`
`1–4
`
`1–4
`
`II. DISCUSSION
`
`A. Claim Interpretation
`
`In inter partes review proceedings, claims of an unexpired patent are
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`given their broadest reasonable interpretation in light of the specification of
`
`the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); see In re
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`Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1278–82 (Fed. Cir. 2015).
`
`Under this standard, we interpret claim terms using “the broadest reasonable
`
`meaning of the words in their ordinary usage as they would be understood
`
`by one of ordinary skill in the art, taking into account whatever
`
`enlightenment by way of definitions or otherwise that may be afforded by
`
`the written description contained in the applicant’s specification.” In re
`
`Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We presume that claim terms
`
`have their ordinary and customary meaning. See In re Translogic Tech.,
`
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary
`
`meaning is the meaning that the term would have to a person of ordinary
`
`skill in the art in question.”) (internal quotation marks omitted). A patentee,
`
`however, may rebut this presumption by acting as his own lexicographer,
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`providing a definition of the term in the specification with “reasonable
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`clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480
`
`(Fed. Cir. 1994).
`
`Apple asks us to construe two phrases: “within short range of said
`
`server unit,” as recited in claim 1, and “code sequence,” as recited in claims
`
`1 and 3. Pet. 9–11. DSS responds to Apple’s proposed construction of only
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`the first of these phrases and additionally asks us to construe “energized in
`
`low duty cycle RF bursts,” also recited in claim 1. Prelim. Resp. 18–21.
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`(1) “within short range of said server unit”
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`Outside of claim 1, the phrase “short range” appears only in the
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`Abstract of the ’290 patent, where it is stated that the peripheral units are
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`located “within short range of the server unit, e.g. within 20 meters.” Apple
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`argues that “[w]hile the ’290 patent uses ‘within 20 meters’ as an example
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`(by using ‘e.g.’), this is the only indication in the ’290 patent as to what the
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`newly added term ‘short range’ means.” Pet. 9. Moreover, according to
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`Apple, “the term ‘short range’ has no commonly accepted meaning in the
`
`art,” and a person of ordinary skill in the art “would not have understood this
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`term to have a meaning outside of the guidance provided by the
`
`specification.” Id. Accordingly, Apple proposes that the broadest
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`reasonable interpretation of “within short range of said server unit” is
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`“within 20 meters of said server unit.” Id. at 9–10.
`
`DSS counters that “[t]he phrase ‘adapted to operate within a [sic]
`
`short range of [said server unit]’ is defined in the specification of the ’290
`
`Patent as a distance that does not meaningfully affect the radio frequency
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`transmission time” and proposes that the phrase instead be construed as
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`“adapted to operate within a range where the transmission transit time does
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`not meaningfully affect the accuracy of synchronization.” Prelim. Resp. 18–
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`
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`7
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`Patent 6,128,290
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`19 (citing Ex. 1001, col. 1, ll. 50–56) (third alteration in original) (boldface
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`and italics omitted). According to DSS:
`
`Petitioner’s proposed construction is based on a non-
`limiting example provided in the ’290 specification. Petitioner
`contends that short range has no common meaning in the art,
`and thus, reasons that “short range” should be construed in view
`of the specification. See Petition at pg. 9. Petitioner further
`states that “[t]he ’290 patent is clear that short range is ‘close
`physical proximity, e.g., within twenty meters.’” Petition at pg.
`29 (citing [Ex.] 1001, ’290 patent at 1:50–56). Petitioner fails
`to disclose the complete passage relating to “close physical
`proximity” on which it relies in defining “short range” as
`“within twenty meters.” The complete passage is as follows:
`
`The data network of the present invention utilizes
`the fact that the server microcomputer unit and the
`several peripheral units which are linked are all in
`close physical proximity, e.g., within
`twenty
`meters, to establish, with very high accuracy, a
`common time base or synchronization. The short
`distances involved [sic] means that accuracy of the
`synchronization is not appreciably affected by
`transit time delays.
`
`See [Ex.] 1001, ’290 Patent, at 1:50–56 (emphasis
`added).
`. . . .
`
`The term “e.g.” means “for example.” [Ex.] 2002. The
`
`use of the terms “for example” specifically signifies the broader
`scope than encompassed by the example. Any distance, so long
`as “the accuracy of the synchronization is not appreciably
`affected by transit time delays” is within the operable range of
`the invention. Lacking clear disclaimer, the phrase “within a
`short range” should be given the broader definition, which
`complies with the BRI standard, provided by the inventor and
`proposed here by the Patent Owner.
`
`Id. at 19–20.
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`
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`8
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`We are unable to locate the purported quotation from page 29 of the
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`Petition cited by DSS. Regardless, the passage identified by Apple from the
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`Abstract of the ’290 patent, which actually uses the phrase “within short
`
`range,” is more directly probative of the construction of “within short range
`
`of said server unit” than is the passage quoted by DSS from column 1, lines
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`50–56, of the ’290 patent, which instead relates to the phrase “close physical
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`proximity.” Claim 1 does not recite “close physical proximity.” Given,
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`however, that the ’290 patent also associates the phrase “close physical
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`proximity” to an exemplary range of “within twenty meters” (Ex. 1001, col.
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`1, ll. 50–53), similar to the phrase “within short range” (Ex. 1001, Abstract),
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`there is at least an appearance that “within short range” and “close physical
`
`proximity” are used interchangeably. The association of “close physical
`
`proximity” to “within twenty meters” also supports construing “within short
`
`range” as meaning “within twenty meters.”
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`As stated above, the phrases “within 20 meters” and “within twenty
`
`meters” are preceded in both the Abstract and column 1 of the ’290 patent
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`with “e.g.” (see Ex. 1001, Abst., col. 1, l. 53). We accordingly look
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`elsewhere in the Specification for additional indication of what “within short
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`range” means. Any description related to the benefit achieved by the
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`“within short range” feature is apposite. In that regard, the Specification, at
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`column 1, lines 54–56, states: “The short distances involved means that
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`accuracy of synchronization is not appreciably affected by transit time
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`delays.” On this record, we construe “within short range” to mean “within a
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`range in which the accuracy of synchronization is not appreciably affected
`
`by transit time delays, including at least the range of within 20 meters.”
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`9
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`(2) “code sequence” and “energized in low duty cycle RF bursts”
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`Apple contends that “[a] ‘code sequence’ is not a term of art and
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`therefore must be construed in view of the ’290 patent specification.” Pet.
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`10. Citing three instances of the phrase “code sequence” in the Specification
`
`of the ’290 patent, Apple proposes that the broadest reasonable interpretation
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`of that phrase in view of the Specification is “a series of values, where each
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`value in the series represents a time slot where a unit’s transmitter is
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`energized or a time slot where a unit’s transmitter is depowered.” Id. at 10–
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`11 (citing Ex. 1001, col. 1, ll. 57–59, col. 2, ll. 35–39, col. 3, ll. 43–44).
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`DSS neither responds to Apple’s proposal nor offers any alternative
`
`interpretation.
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`DSS proposes that the phrase “energized in low duty cycle RF bursts”
`
`be given its plain and ordinary meaning, or alternatively, in the event of any
`
`ambiguity, that it should be construed as “a pulsed operation that
`
`substantially reduces power consumption and facilitates the rejection of
`
`interfering signals.” Prelim. Resp. 20 (boldface and italics omitted).
`
`We conclude that it is not necessary for our determination of whether
`
`to institute inter partes review of claims 1–4 of the ’290 patent to construe
`
`expressly the phrases “code sequence” and “energized in low duty cycle RF
`
`bursts.” Only those terms which are in controversy need to be construed,
`
`and only to the extent necessary to resolve the controversy. Vivid Techs.,
`
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`B. Obviousness of Claims 1–4 over Barber
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`Apple contends that claims 1–4 of the ’290 patent are unpatentable
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`under 35 U.S.C. § 103(a) as obvious over Barber, which Apple asserts was
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`published “at least as early as April 11, 1996.” Pet. 12, 15, 18–33.
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`10
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`According to Apple, claims 1–4 recite features first disclosed in the ’999
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`application, and accordingly, are entitled only to the benefit of the ’999
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`application’s October 14, 1997 filing date, rather than the March 6, 1996
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`filing date of the ’695 parent application. Id. at 7. Because April 11, 1996,
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`was more than one year prior to October 14, 1997, Apple asserts that Barber
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`is prior art under at least 35 U.S.C. § 102(b). Id. at 12. DSS counters that
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`claims 1–4 are fully supported by the original disclosure of the ’695
`
`application and are, therefore, entitled to the benefit of the March 6, 1996
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`filing date of the ’695 application. Prelim. Resp. 5.
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`For the reasons explained below, we are not persuaded that Apple has
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`established a reasonable likelihood that it would prevail on this ground with
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`respect to each of claims 1–4, regardless of whether claims 1–4 are entitled
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`to the ’695 application’s March 6, 1996 filing date or only to the ’999
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`patent’s October 14, 1997 filing date.
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`As the Board has previously explained, to qualify as a printed
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`publication within the meaning of § 102, “a reference ‘must have been
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`sufficiently accessible to the public interested in the art’ before the critical
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`date.” Actavis, Inc. v. Research Corp. Techs., Inc., Case IPR2014-01126,
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`slip op. at 9 (PTAB Jan. 9, 2015) (Paper 22) (quoting In re Cronyn, 890 F.2d
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`1158, 1160 (Fed. Cir. 1989). Whether a reference is publicly accessible is
`
`determined on a case-by-case basis, based on the “facts and circumstances
`
`surrounding the reference’s disclosure to members of the public.” In re
`
`Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). A reference is considered
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`publicly accessible if it was disseminated or otherwise made available to the
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`extent that persons interested and ordinarily skilled in the subject matter or
`
`art, exercising reasonable diligence, can locate it. Id. Having reviewed
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`11
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`Apple’s arguments and proffered evidence, we determine that Apple has not
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`satisfied its burden to prove that Barber qualifies as prior art.
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`Apple merely asserts, without any citation of evidence, that Barber
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`“was published at least as early as April 11, 1996.” Pet. 12. Apple’s expert,
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`Dr. Grimes, likewise asserts, without citing any additional evidence, that
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`Barber was “submitted January 30, 1996, [and] archived in Massachusetts
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`Institute of Technology Libraries April 11, 1996” (Ex. 1008, 6).
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`We acknowledge that the cover page of Barber includes a stamp
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`reading “ARCHIVES MASSACHUSETTS INSTITUTE OF
`
`TECHNOLOGY APR 11 1996 LIBRARIES.” Ex. 1002, 1. That stamped
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`date, however, would appear to be a hearsay statement to the extent that it
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`would be offered for its truth (see Fed. R. Evid. 801). Further, even if Apple
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`could establish either that the statement is excluded from hearsay or that an
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`exception to the rule against hearsay should apply, such that we would admit
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`the stamped date as evidence of when the thesis was archived, the stamp
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`does not establish when, if ever, the thesis became publicly accessible.
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`We must decide whether to institute a trial based on “the information
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`presented in the petition” (35 U.S.C. § 314(a)). In this case, Apple has not
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`identified sufficient evidence on the record before us to qualify Barber as
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`prior art. Apple has submitted no evidence, for example, to establish that the
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`thesis was indexed, cataloged, and shelved in the university library prior to
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`the filing of the ’999 application. See Cronyn, 890 F.2d at 1161; cf. In re
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`Hall, 781 F.2d 897 (Fed. Cir. 1986). We conclude, therefore, that Apple has
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`not demonstrated a reasonable likelihood that it would prevail at trial in
`
`challenging claims 1–4 of the ’290 patent under 35 U.S.C. § 103(a) over
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`Barber. Because our conclusion does not turn on whether claims 1–4 are
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`entitled to the priority date of the ’695 application or only that of the ’999
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`application, we further conclude that it is not necessary for our
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`determination of whether to institute inter partes review of claims 1–4 of the
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`’290 patent to decide that issue.
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`C. Obviousness of Claims 1–4 over Natarajan and Neve
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`Apple contends that claims 1–4 of the ’290 patent are unpatentable
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`under 35 U.S.C. § 103(a) as obvious over the combination of Natarajan and
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`Neve. Pet. 33, 42–59. We are persuaded that Apple has established a
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`reasonable likelihood that it would prevail on this ground with respect to
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`each of claims 1–4, for the reasons explained below.
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`(1) Natarajan
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`Natarajan is directed to power conservation in wireless
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`communication, particularly battery efficient operation of wireless link
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`adapters of mobile computers (also referred to, inter alia, as battery powered
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`computers, hand held or laptop computers, mobile units, and mobile
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`stations) as controlled by multiaccess protocols used in wireless
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`communication. Ex. 1003, col. 1, ll. 7–13, col. 2, l. 32, Abst. Figure 2 of
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`Natarajan is reproduced below.
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`13
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`Figure 2 is a block diagram of a digital data communication system of the
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`type in which Natarajan’s invention is implemented, illustrating the basic
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`components of a mobile station and a base station. Id. at col. 1, l. 67–col. 2,
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`l. 3. As depicted in Figure 2, mobile stations 10, 12, 14, and 16
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`communicate with gateways (i.e., base stations 26, 28) connected with
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`server 18, via wireless transceivers adapters 36, 44. Id. at col. 2, ll. 32–39,
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`51–52, 58–59, 65–67. According to Natarajan:
`
`The scheduled access multiaccess protocol is implemented to
`effectively conserve battery power by suitable control of the
`state of the controller, the transmitter and receiver units at the
`wireless link adapter by scheduling when the adapter is in a
`normal running mode, or a standby mode in which power is
`conserved.
`
`Id., Abst; see also id. at col. 3, l. 66–col. 4, l. 1.
`
`Natarajan discloses that “[a] desirable solution is one in which the
`
`transmitter (or receiver) consumes power only when it is actively
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`transmitting a message (or actively receiving a message).” Id. at 4:3–6.
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`14
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`Natarajan further discloses that the scheduled multiaccess protocol divides
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`time into “fixed-length frames, and frames are divided into slots.” Id. at
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`col. 4, ll. 20–23. The frames are divided into subframes for transmission of
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`data from the base station to mobile units (outbound traffic) as well as
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`transmission of data from mobile units to the base station (inbound traffic).
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`Id. at col. 4, ll. 27–38. According to Natarajan, at least one slot is assigned
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`to each mobile computer designated to communicate with the base station.
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`Id. at col. 10, ll. 26–29. The battery power of the wireless link adapter for a
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`given mobile computer is turned on to full power during the at least one
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`assigned slot, and the battery power of the wireless link adapter is
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`substantially reduced during the remaining time slots. Id. at col. 10, ll. 29–
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`37.
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`With respect to outbound traffic, Natarajan discloses that the base
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`station broadcasts a header that includes a list of mobile users that will be
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`receiving data packets from the base station in the current frame, the order in
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`which the mobile users will receive the data packets, and the bandwidth
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`allocated to each user. Id. at col. 4, ll. 45–53. According to Natarajan, a
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`mobile unit that is not included in the header from the base station can turn
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`its receiver “OFF” for the duration of the current subframe. Id. at col. 4,
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`ll. 64–67. Additionally, the adapter of each receiving mobile unit can
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`compute exactly when it should be ready to receive packets from the base
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`station by adding up the slots allocated to all receiving units that precede it,
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`power “ON” during that time slot to receive its data, and go back to sleep for
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`the remainder of the subframe. Id. at col. 4, l. 67–col. 5, l. 6.
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`For inbound traffic, Natarajan similarly discloses that the base station
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`broadcasts a header that includes an ordered list of users that will be allowed
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`to transmit packets to the base station in the current frame and the bandwidth
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`allocated to each. Id. at col. 5, ll. 9–19. Using the information regarding the
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`number of packets that each user can transmit, each mobile unit can compute
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`exactly when it should begin its transmission. Id. at col. 5, ll. 20–22. Once
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`each mobile station computes its exact time for transmission, it can shut both
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`its transmitter and receiver “OFF” until the designated time, and then turn
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`“ON” and transmit for a fixed period of time whose duration depends on the
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`number of slots allocated to it. Id. at col. 5, ll. 23–29.
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`(2) Neve
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`Neve is directed to a communication system able to provide multiple
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`path communication between a plurality of stations operating on a single
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`channel. Ex. 1004, Abst. Neve discloses that one station, which is
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`physically similar to the others but operates a different stored program, may
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`be designated the “master” station and provides synchronization signals for
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`all of the other stations (referred to as “slave stations”) and controls access
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`of the stations to the single radio channel. Id. at 4:10–15.
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`According to Neve, the stations are synchronized and a cyclically
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`repeating series of time slots is defined. Id. at Abst. One time slot in each
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`cycle is reserved for the transmission of synchronization information by the
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`master station for reception by the slave stations and for maintaining
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`synchronization therein. Id. Another time slot is reserved for any slave
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`station to transmit a message indicating that it needs to communicate to
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`another station, such indication preferably being by transmitting its own pre-
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`assigned address code. Id. The remaining time slots are used for
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`transmitting address information and data. Id.
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`Neve discloses that when data transfer is not taking place, the
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`described devices can enter a lower power consumption state. Id. at col. 2,
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`ll. 13–16. The system is designed automatically to re-enter the data transfer
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`condition when either a signal is received from the device indicative of the
`
`need to transmit data or a predetermined code signal is received by the
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`receiver circuit indicative of the need to receive data. Id. at col. 2, ll. 19–24.
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`Neve discloses that the receiver has very low power consumption because
`
`only the internal timing circuitry is energized continuously, whereas the rest
`
`of the receiving circuit is energized only when its assigned time slot occurs.
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`Id. at col. 2, ll. 39–41. More particularly, the receiver circuit includes a low
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`power timing circuit that operates to energize the rest of the receiver circuit
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`only for the time slot in which its address may occur and for the
`
`synchronization time slot, thereby enabling it to maintain synchronization
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`with low power consumption. Id. at col. 4, ll. 43–48. Neve similarly
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`discloses that the interface circuit is arranged to energize the transmitter
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`circuit only when transmission is required. Id. at col. 2, ll. 45–47.
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`(3) Analysis
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`Apple contends that Natarajan discloses all limitations of claims 1–4,
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`with the exception of explicit disclosure of the server unit sending
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`“synchronizing information” to the mobile units, as recited in claim 1, and
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`“synchronizing beacons,” as recited in claim 4. Pet. 42–59. Apple further
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`contends that Neve discloses those elements not disclosed explicitly by
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`Natarajan. Id. Upon review of the Petition, we are persuaded that Apple has
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`shown a reasonable likelihood that it would prevail in establishing the
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`unpatentability of claims 1–4 on this ground.
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`DSS makes two principal arguments regarding Natarajan and Neve in
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`the Preliminary Response. First, DSS argues that Natarajan does not
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`disclose that the server transmitter is energized in low duty cycle RF bursts.
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`Prelim. Resp. 21. According to DSS, Apple “profusely quotes disclosures of
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`Natarajan and Neve teaching that the transmitters of the peripheral units
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`(i.e. mobile units, portable units, slave stations) are energized only when
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`they are actively transmitting data,” but “does not provide any objective
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`evidence that could reasonably lead to a conclusion that these references also
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`disclose that the transmitter of the server unit (i.e. base, hub, master) is
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`energized in low duty cycle RF bursts.” Id. at 22. DSS does not dispute
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`that, during time slots in which Natarajan’s mobile units are designated to
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`receive a message, the base station’s (i.e., the server unit’s) transmitter is
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`energized to transmit data to the mobile units. Id. at 23 (quoting Pet. 54).
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`DSS contends, however, that the server transmitter’s being energized during
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`the time slots at which the mobile units are scheduled to receive data “does
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`not logically lead to a conclusion that the server transmitter is powered OFF
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`during the remaining time slots when no active transmission between the
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`server and peripheral units occurs” (id.).
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`Based on the record before us, we are persuaded that the disclosure of
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`Natarajan pertaining to a scheduled multi-access protocol in which time is
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`divided into fixed-length frames, along with Natarajan’s description of
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`frames being divided into slots and multiple subframes, is sufficient to
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`demonstrate a reasonable likelihood that Natarajan discloses “said server and
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`peripheral transmitters being energized in low duty cycle RF bursts,” as
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`recited in claim 1. Claims 1–4 do not recite any requirement that the server
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`transmitter must be “powered OFF” during the time slots when no active
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`transmission between the server and peripheral units occurs; nor is such
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`required by the plain and ordinary meaning of the claim phrase “energized in
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`low duty cycle RF bursts.” Regardless, by disclosing, for example, that “a
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`scheduled multi-access protocol is used in which time is divided into fixed-
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`length frames” and that “frame[s] [are] divided into multiple subframes,”
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`including different periods for broadcast of packets from base station to
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`mobile units (outbound traffic) and for transfer of traffic from mobile units
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`to base station (inbound traffic) (see, e.g., Ex. 1003, col. 4, ll. 20–22, 28–
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`38), we are persuaded for purposes of this Decision that Natarajan conveys
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`that both the receivers and the transmitters in the base station, as well as in
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`the mobile units, are energized only in low duty cycle RF bursts.
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`Second, DSS argues that Neve teaches away from the server
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`transmitter being energized in low duty cycle RF bursts. Prelim. Resp. 24.
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`According to DSS, “Neve explicitly discloses that the server unit remains
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`energized even when it is not actively transmitting any data to the peripheral
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`units” and “[f]or this reason, Neve not only lacks disclosure of ‘said server
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`and peripheral transmitter [sic] being energized in low duty cycle RF
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`bursts,’ but in fact, teaches away from this limitation of claim 1.” Id. at 24–
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`25. In support of that contention, DSS cites portions of Neve stating “[i]f no
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`data is currently required to be transmitted, the master station transmits idle
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`words” and “[a]n idle word is transmitted if no other transmission is
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`needed.” Id. at 24 (quoting Neve 4:48–50, 7:17–19 (emphasis added by
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`DSS)).
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`Based on the record before us, we are not persuaded that Neve teaches
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`away from the server transmitter being energized in low duty cycle RF
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`bursts. When the sentences quoted by DSS are read in the context of the full
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`disclosure of Neve, those sentences do not suggest continuous transmission
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`from the master station, but instead transmission of idle words in the event
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`that there is no data required to be transmitted in the time slots specifically
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`allocated for transmission by the server. Neve explicitly discloses that the
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`described synchronous communication system, which includes “one station
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`designated the master station,” “allows stations to remain in an inactive
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`condition when they are not communicating.” Ex. 1004, col. 3, ll. 9–20.
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`Neve also discloses that the master station performs different functions
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`during different time slots,
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