UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APPLE, INC.,
`Petitioners,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`
`____________
`
`Case: IPR2015-00369
`U.S. Patent No. 6,128,290
`
`____________
`
`PATENT OWNER DSS TECHNOLOGY, INC.’S
`RESPONSE TO PETITION
`
`
`
`
`
`
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APPLE, INC.,
`Petitioners,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`
`____________
`
`Case: IPR2015-00369
`U.S. Patent No. 6,128,290
`
`____________
`
`PATENT OWNER DSS TECHNOLOGY, INC.’S
`RESPONSE TO PETITION
`
`
`
`
`
`
`
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................................. 1
`I.
`II. RELATED IPR PETITION ............................................................................... 1
`III. OVERVIEW OF THE INVENTION CLAIMED IN THE ‘290 PATENT ...... 1
`
`
`
`A. Summary of the prior art ............................................................................ 2
`
`B. Summary of the ‘290 Patent and its advancement over the prior art ......... 5
`IV. CLAIM CONSTRUCTION ............................................................................... 8
`V. PETITIONER HAS FAILED TO PROVE THAT CLAIMS 1-4 OF THE ‘290
`PATENT ARE UNPATENTABLE ................................................................. 15
`
`A. Claims 1-4 are not rendered obvious by Natarajan in view of Neve ....... 15
`
`1. Natarajan does not teach or suggest that the server transmitter is
`energized in low duty cycle RF bursts ........................................... 15
`
`a. Natarajan is silent with respect to operation of server
`transmitter during outbound data traffic periods .............. 15
`
`b. The HDLC packet structure disclosed in Natarajan is
`inconsistent with a server transmitter being energized in
`low duty cycle RF bursts. .................................................. 20
`
`c. Natarajan’s disclosure of “bursty traffic” during the
`contention period does not teach or suggest that the server
`transmitter is energized in RF bursts ................................. 22
`
`d. Petitioner failed to meet its burden of establishing that
`Natarajan in view of Neve teaches or suggests that the
`server transmitter is energized in low duty cycle RF bursts
` ........................................................................................... 24
`
`
`
`i
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`
`
`2. Combining Natarajan with Neve does not cure deficiencies of
`Natarajan and further suggests that the combination of these
`references does not teach or suggest that server transmitter is
`energized in low duty cycle RF bursts ........................................... 27
`
`a. Petitioner’s expert distinguished Neve from transmissions
`involving RF bursts ........................................................... 27
`
`b. Neve does not teach or suggest that server transmitter is
`energized in low duty cycle RF bursts .............................. 30
`
`c. Neve reinforces the conclusion that Natarajan does not
`teach or suggest the server transmitter being energized in
`low duty cycle RF bursts ................................................... 31
`
`3. The Board should not give any weight to Petitioner’s expert’s
`testimony pertaining to the issue of whether Natarajan in view of
`Neve teaches or suggests that server transmitters be energized in
`low duty cycle RF bursts ................................................................ 33
`VI. CONCLUSION ................................................................................................ 36
`
`
`
`
`
`
`
`
`ii
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`
`
` TABLE OF AUTHORITIES
`
`
`Federal Cases
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398, 418 (2007) ....................................................................... 15, 25
`
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292, 1298 (Fed. Cir. 2015) ............................................................. 9
`
`
`Mintz v. Dietz & Watson, Inc.,
`
`679 F. 3d 1372, 1379 (Fed. Cir. 2012) .......................................................... 16
`
`In re Fine,
`837 F.2d 1071, 1076 (Fed. Cir. 1988). .......................................................... 36
`
`
`
`Decisions of the Patent Trail and Appeal Board
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`CBM2013-00009, Final Written Decision at pg. 47 (Feb. 11, 2014). .......... 33
`
`
`
`Federal Statutes
`35 U.S.C. §103(a) ...................................................................................................... 1
`
`
`Federal Regulations
`37 C.F.R. § 42.100(b) ................................................................................................ 8
`
`37 C.F.R. § 42.6(e) ................................................................................................... 38
`
`
`
`
`
`iii
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`
`
`PATENT OWNER’S LIST OF EXHIBITS
`
`DSS-2001 U.S. Patent No. 5,699,357
`
`DSS-2002 Definition of “e.g.,” Black’s Law Dictionary (9th ed. 2009)
`
`DSS-2003 Myk Dormer, Low Duty Cycle?, Electronics World Magazine, Dec.
`2008, available at http://www.radiometrix.com/files/additional/Low-
`Duty-Cycle.pdf
`DSS-2004 U.S. Pat. No. 7,558,232
`
`DSS-2005 U.S. Pat. No. 7,092,762
`
`DSS-2006 U.S. Pat. No. 7,049,620
`
`DSS-2007 U.S. Pat. No. 8,837,653
`
`DSS-2008 U.S. Pat. No. 8,727,561
`
`DSS-2009 Definition of “burst,” Chambers Dictionary of Science and
`Technology (1st ed. 1999)
`DSS-2010 Tom Sheldon, Encyclopedia of Networking & telecommunications,
`549, (Lisa Wolters-Broder ed., McGraw Hill 2001)
`DSS-2011 U.S. Pat. No. 3,598,914
`
`DSS-2012 U.S. Pat. No. 6,983,031
`
`DSS-2013 Yurcik, William J., Serial and Parallel Transmission. Computer
`Sciences. 2002. Encyclopedia.com, available at
`http://www.encyclopedia.com
`DSS-2014 Asynchronous HDLC MC68360 ASYNC HDLC Protocol Microcode
`User’s Manual, 8, (Freescale Semiconductor, Inc. 1996)
`DSS-2015 Transcript of 08-27-2015 Deposition Testimony of Dr. Jack Duane
`Grimes
`
`
`
`iv
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`
`
`DSS-2016 Declaration of Mr. Robert Dezmelyk
`
`DSS-2017 Wmat Auppu, AIF Inter DSP Communication, 1, available at
`http://processors.wiki.ti.com/index.php/AIF_Inter_DSP_Communica
`tion
`
`v
`
`
`
`
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`
`
`I. INTRODUCTION
`
`
`On June 25, 2015, the Board instituted trial with respect to claims 1-4 of the
`
`U.S. Patent No. 6,128,290 (“the ‘290 Patent”) (APL 1001) owned by DSS
`
`Technology Management, Inc., (“Patent Owner”). Specifically, the Board instituted
`
`trial based on a single ground:
`
`(1) obviousness of claims 1-4 under 35 U.S.C. §103(a) based on U.S. Pat. No.
`
`(“Natarajan”) (APL 100) in view of U.S. Pat. No (“Neve”) (APL 100);
`
`Patent Owner submits this Response to the invalidity challenge listed above.
`
`For the reasons set forth below, the Board should find claims 1-4 patentable over
`
`Natarajan in view of Neve.
`
`II. RELATED IPR PETITION
`
`
`Petitioner filed another IPR petition against claims 6, 7, 9, and 10 of the ‘290
`
`Patent in case IPR2015-00373. The Board’s decision in the present case is likely to
`
`be pertinent to case IPR2015-00373.
`
`III. OVERVIEW OF THE INVENTION CLAIMED IN THE ‘290 PATENT
`
`In its summary of the ‘290 Patent, Petitioner omitted several material elements
`
`of the claimed invention. The following overview provides a brief summary of the
`
`
`
`1
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`prior art and a concise description of the data network system disclosed and claimed
`
`
`
`in the ‘290 Patent, focusing on the elements Petitioner failed to discuss.
`
`A. Summary of the prior art
`
`At the time of filing of the ‘290 Patent, wireless data networks had several
`
`major shortcomings. The accepted convention in wireless data networks was to
`
`partition a multiaccess protocol into fixed-length frames, wherein each frame is
`
`further divided into the following subframes: (1) outbound transmission period for
`
`broadcast of data from server unit to Peripheral units, (2) inbound contention-free
`
`traffic for the contention-free transfer of all transmissions from Peripheral units to
`
`the server unit, and (3) inbound contention traffic for the transfer of data traffic in a
`
`contention mode from Peripheral units to the server unit. See APL 1003, Natarajan
`
`at 4:30-38. A server unit would transmit to peripheral units during the outbound
`
`transmission period and receive transmissions from peripheral units during the time
`
`periods designated for inbound data traffic. See id.
`
`During the outbound transmission period, the server would transmit a
`
`continuous data stream which comprises data packets addressed to peripheral units
`
`and idle words when no other transmission is needed. See, e.g., DSS 2010,
`
`Encyclopedia of Networking, at pg. 549 (“If no data is being transmitted, this same
`
`
`
`2
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`sequence is continuously transmitted so the end systems remain synchronized.”); see
`
`
`
`also APL 1004, Neve at 4:48-50 (disclosing that the server unit transmits “idle
`
`words” when no active data transmission is scheduled); DSS-2016, Dezmelyk Dec.
`
`at ¶ 38. Idle words are important to operability of such systems because idle
`
`transmissions maintain synchronization between the server unit and the Peripheral
`
`units. See DSS-2010, Encyclopedia of Networking, at pg. 549; see also DSS-2015,
`
`Grimes Cross-Exam at 43:20-22 – 44:1-7. The following is a brief explanation of
`
`the idle word transmissions and the advantages they provide:
`
`idle words are injected by the terminal whenever there are
`no data words available to be transmitted. In some
`applications, this approach is found to be desirable
`because it avoids the necessity of bringing the transmitting
`and receiving ends of
`the signaling channel
`into
`synchronization each time the stream of actual data words
`is interrupted as when there is no data to be sent. Since the
`system is in continuous operation, delays occasioned by
`the need to resynchronize may largely be avoided.
`
`DSS-2011 at 1:14-22.
`
`In such data networks, the server transmitter would transmit a continuous data
`
`stream during the outbound transmission period. See DSS-2016, Dezmelyk Dec. at
`
`¶ 28. The peripheral units would schedule to wake themselves up at designated times
`
`
`
`3
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`to receive data segments within the data stream addressed to them and power down
`
`
`
`after the data is received. See, e.g., APL 1003, Natarajan at 5:2-4. In such a system,
`
`it is only necessary to ensure that each peripheral receiver is energized at an
`
`appropriate time to receive the designated data segment within the continuous data
`
`stream. See DSS-2016, Dezmelyk Dec. at ¶ 28. This scheme is advantageous because
`
`it does not require that the server transmitter be energized at the exact time for each
`
`individual transmission—instead, the server transmitter remains energized for the
`
`duration of the outbound transmission period, and the peripheral units are timed to
`
`listen in at appropriate times. See id. If no data has to be transmitted in a particular
`
`time slot, the server transmits idle signals. See APL 1004, Neve at 4:48-50.
`
`The data networks that existed prior to the ‘290 Patent had two major
`
`drawbacks. First, a server-PEA ensemble in which the server transmitter operates in
`
`a continuous or a high duty cycle is likely to interfere with nearby foreign ensembles.
`
`See DSS-2016, Dezmelyk Dec. at ¶ 19. By transmitting idle words when no data
`
`transmission is necessary, the likelihood of collisions between the transmission of
`
`two nearby ensembles increases: the longer the duration during which the transmitter
`
`is energized, the higher the likelihood that at some point during that transmission
`
`period a signal coming from a nearby second ensemble will interfere with the signal
`
`transmitted by the first ensemble. See id. Second, in applications where the server
`
`
`
`4
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`unit is battery-operated, transmission of idle words, in addition to an active
`
`
`
`transmission of useful data packets, significantly increases power consumption
`
`making the data network unsuitable for low-power applications. See id. at ¶ 29; see
`
`also APL-1002 at pg. 11.
`
`B. Summary of the ‘290 Patent and its advancement over the prior art
`
`The ‘290 Patent discloses and claims a data network system that improves
`
`bidirectional wireless data communications between a server microcomputer unit
`
`and a plurality of peripheral units. See APL 1001, ‘290 Patent at 1:11-14. At the time
`
`of invention, two major issues hindered widespread adoption of wireless data
`
`communication systems: (1) short battery life and (2) interference from other
`
`wireless data systems operating nearby. See id. at Abstract. The ‘290 Patent
`
`advanced the state of the art by ameliorating both issues.
`
`The ‘290 Patent discloses and claims a wireless data system, in which both
`
`the server and peripheral transmitters are energized in low duty cycle RF bursts. See
`
`id. at claim 1. This feature of the claimed invention achieves two important
`
`objectives: (1) it reduces power usage for both the server and the peripheral units
`
`because the server transmitter is only energized when the server must transmit data;
`
`and (2) it reduces the likelihood of interference between nearby wireless ensembles
`
`
`
`5
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`because the server transmits signals only during scheduled communications with a
`
`
`
`peripheral unit. See id. at 1:59-61. The specification of the ‘290 Patent explains that
`
`“[i]f during a particular bit period, two RF bursts are being simultaneously received,
`
`one from a transmitter in the home ensemble and the other from a foreign ensemble,
`
`the receiver will ‘capture’ only the data received from the stronger of two
`
`transmitters.” Id. at 6:36-40. Accordingly, by claiming a system in which both the
`
`server and peripheral transmitters operate in low duty cycle RF bursts, the ‘290
`
`Patent significantly reduces the number of transmissions outgoing from the server
`
`unit, thereby decreasing the likelihood that a nearby foreign ensemble will receive
`
`an unintended data signal. Id. at 1:59-61.
`
`In sharp contrast to the data network systems described in Section III.A.,
`
`supra, the ‘290 Patent claims a system in which the server transmitter does not
`
`transmit a continuous data stream, but, instead, is energized in low duty cycle RF
`
`bursts only when active data transmissions between the server unit and a peripheral
`
`units are scheduled to occur. See id. at 1:59-61; see also DSS-2015, Grimes Cross-
`
`Exam at 44:9-11 (“[T]he patent only talks about transmissions that are done for the
`
`purpose of conveying useful data to the receiving entity.”). The data network system
`
`disclosed in the ‘290 Patent employs a complex synchronization scheme to achieve
`
`a functioning system in which both the server and peripheral transmitters are
`
`
`
`6
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`energized in low duty cycle RF bursts. See APL 1001, ‘290 Patent at 10:5-11:8; see
`
`
`
`also DSS-2016, Dezmelyk Dec. at ¶ 20. The ‘290 Patent discloses a synchronization
`
`scheme in which the peripheral units are equipped with voltage controlled crystal
`
`oscillators, whose frequencies are aligned with the frequency of the server’s
`
`oscillator to establish precise synchronization between the server unit and the
`
`peripheral unit. See APL 1001, ‘290 Patent at 10:35-61. The synchronization scheme
`
`disclosed in the ‘290 Patent makes it possible for both the server and peripheral
`
`transmitters to be energized only when an active data transmission must occur and
`
`remain powered down at all other times, thereby achieving “low power consumption
`
`and avoidance of interference between nearby similar systems.” See id. at Abstract;
`
`see also DSS-2016, Dezmelyk Dec. at ¶ 21. This advancement over the prior art is
`
`captured in the following limitation of claim 1: “said server and peripheral
`
`transmitters being energized in low duty cycle RF bursts.”
`
`The ‘290 Patent explicitly states that its objectives include “provision of such
`
`a data network which requires extremely low power consumption” and “avoids
`
`interference from nearby similar systems.” APL 1001, ‘290 Patent at 1:39-44. The
`
`‘290 Patent achieves these objectives by creating a data network system in which,
`
`inter alia, both “server and peripheral transmitters [are] energized in low duty cycle
`
`RF bursts,” wherein“[t]he low duty cycle pulsed operation both substantially
`
`
`
`7
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`reduces power consumption and facilitates the rejection of interfering signals.” Id.
`
`
`
`at claim 1 (emphasis added) and at 1:59-61.
`
`IV. CLAIM CONSTRUCTION
`
`The Board generally interprets the claims of an unexpired patent according to
`
`the broadest reasonable interpretation (“BRI”) standard. See 37 C.F.R. § 42.100(b).
`
`In Microsoft Corp. v Proxyconn, Inc., the Federal Circuit provided the following
`
`guidance pertaining to proper application of the BRI standard to claim terms in the
`
`context of an IPR:
`
`[T]he protocol of giving claims their broadest reasonable
`interpretation does not include giving claims a legally
`incorrect interpretation. Rather, claims should always be
`read in light of the specification and teachings in the
`underlying patent. The PTO should also consult the
`patent’s prosecution history in proceedings in which the
`patent has been brought back to the agency for a second
`review. Even under the broadest reasonable interpretation,
`the Board’s construction cannot be divorced from the
`specification and the record evidence, and must be
`consistent with the one that those skilled in the art would
`reach. A construction that is unreasonably broad and
`which does not reasonably reflect the plain language and
`disclosure will not pass muster.
`
`
`
`8
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`
`
`Microsoft Corp. v Proxyconn, Inc., 789 F.3d 1292, 1298
`(Fed. Cir. 2015) (internal quotations omitted) (emphasis
`added).
`
`
`
`1. Claim construction the Board applied in the Institution Decision
`
`In the Institution Decision, the Board held 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.’” Institution Decision at pg. 10. The Board also found that “Claims
`
`1–4 do not recite any requirement that the server transmitter must be “powered OFF”
`
`during the time slots when no active transmission between the server and peripheral
`
`units occurs; nor is such required by the plain and ordinary meaning of the claim
`
`phrase ‘energized in low duty cycle RF bursts.’” Institution Decision at pg. 18-19.
`
`This finding is inconsistent with the record before the Board because this finding
`
`contradicts construction proposed by Patent Owner, Petitioner’s statements, and
`
`testimonies of both parties’ experts.
`
`Although Petitioner did not provide an explicit construction for “low duty
`
`cycle RF bursts,” both Petitioner and Petitioner’s expert stated the following: “the
`
`transmitter (or receiver) consumes power only when it is actively transmitting a
`
`message (or actively receiving a message). This constitutes low duty cycle RF
`
`
`
`9
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`bursts.”)” See Petition at pg. 54 and APL 1008 at ¶115 (internal quotations omitted)
`
`
`
`(emphasis added). Mr. Dezmelyk, the expert for Patent Owner, also testified that the
`
`server transmitter remaining energized when it is not actively transmitting data to
`
`the peripheral units is inconsistent with a low duty cycle operation. See DSS-2016,
`
`Dezmelyk Dec. at ¶ 35. Therefore, although claims 1-4 do not explicitly require that
`
`the server transmitter be energized only when it is actively transmitting a message
`
`and powered down when there is no data to transmit, this requirement is imposed by
`
`the “energized in low duty cycle RF bursts limitation.” See Petition at pg. 54; see
`
`also APL 1008 at ¶115; DSS-2016, Dezmelyk Dec. at ¶ 36.
`
`
`
`2. Low duty cycle
`
`“Low duty cycle” is a term of art in wireless communication data networks.
`
`Under broadest reasonable interpretation, a POSITA would have understood “duty
`
`cycle” of the server transmitter as “the ratio of actual duration during which the
`
`server transmitter is energized to the total duration designated for outbound
`
`transmissions.”
`
`This construction is consistent with the one provided by Petitioner’s expert:
`
`“[t]he low-duty cycle refers to the ratio of the time spent transmitting versus the
`
`time spent nontransmitting.” DSS-2015, Grimes Cross-Exam at 41:7-9. “Low-duty
`
`
`
`10
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`cycle tells you that most of the time there's nothing being sent. And when there is
`
`
`
`something being sent, that's what's called a burst.” Id. at 31:10-12. “[T]he key thing
`
`is that the burst is small -- the time it takes is small relative to the overall time that
`
`the transmitter could have been transmitting.” Id. at 46:12-15 (emphasis added);
`
`see also DSS-2016, Dezmelyk Dec. at ¶ 27. Accordingly, the duty cycle of the
`
`server transmitter must be calculated over the total duration designated for the
`
`outbound transmissions. See DSS-2016, Dezmelyk Dec. at ¶ 23. Time slots
`
`designated for the inbound data traffic are not taken into account because the server
`
`transmitter could not have been transmitting during these time slots. See DSS-
`
`2015, Grimes Cross-Exam at 60:19-22 (“[W]hen the units are receiving
`
`information, their respective transmitters can't be operating. If they were, they
`
`would not be able to receive information.”); see also DSS-2016, Dezmelyk Dec.
`
`at ¶ 23.
`
`Under the broadest reasonable interpretation, a POSITA would have
`
`understood that a server transmitter is energized in a low duty cycle when the
`
`server transmitter is energized for less than ten percent (10%) of the total duration
`
`designated for outbound transmissions. See DSS-2016, Dezmelyk Dec. at ¶ 24.
`
`This range is consistent with the specification of the ‘290 Patent. See id. For
`
`example, for the outbound transmissions involving Optically Orthogonal Codes,
`
`
`
`11
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`
`
`the ‘290 patent discloses that “a maximum of three RF bursts can occur in each
`
`section,” wherein each section comprises sixty-four (64) slots. See APL 1001, ‘290
`
`Patent at 7:23-33, see also DSS-2016, Dezmelyk Dec. at ¶ 26. This scheme results
`
`in the server transmitter being energized for 4.688% of the transmission period,
`
`which falls well within the low-duty cycle range of 10%. See APL-1001 at 7:22-
`
`32. Another example of outbound transmission disclosed in the ‘290 Patent
`
`involves transmission of synchronization beacons (SBs): “[e]ach SB consists of
`
`eight RF bursts spread out over 252 slots.” Since each burst equals to one slot, the
`
`server transmitter is energized in the duty cycle of 3.175%, which also falls within
`
`the low duty cycle range of 10%.
`
`Furthermore, Table 1 provided below, contains results of a survey of
`
`exemplary ranges for “low duty cycle” as this term is used in the art, which is
`
`evidence of how a POSITA would interpret the terms “low duty cycle.”1
`
`Table 1. Exemplary ranges of “low duty cycle” in third party patents
`Exhibit
`Patent No.
`Duty cycle (%)
`Citation
`DSS-2004 U.S. 7,558,232
`“low duty cycle, e.g. 2%”
`4:13-16
`“high duty cycle, e.g. 25%”
`“low duty cycle, e.g., 4% or
`less”
`“low duty cycle, e.g., 0.5
`percent”
`
`DSS-2005 U.S. 7,092,762
`
`DSS-2006 U.S. 7,049,620
`
`2:21-22
`
`8:3
`
`
`1 Search Methodology: Table 1 provides the first five (5) relevant results obtained on Google
`Patents through the query: “low duty cycle e.g.” & network & percent.
`12
`
`
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`DSS-2007 U.S. 8,837,653
`
`DSS-2008 U.S. 8,727,561
`
`
`
`3. RF bursts
`
`
`
`“low duty cycle (e.g., a duty
`cycle of less than 10 percent, 1
`one percent, 0.1 percent or 0.02
`percent)”
`“low duty cycle, e.g., at an
`about 10 percent (10%) duty
`cycle”
`
`10:52-
`53
`
`10:5-6
`
`
`
`
`
`“RF bursts” is a term of art in the field of wireless data networks. Under the
`
`broadest reasonable interpretation, a POSITA would have understood the phrase
`
`“RF bursts” to mean “a short period of intense activity on an otherwise quiet data
`
`channel.” See DSS-2009.
`
`
`
`This construction is consistent with the one provided by Petitioner’s expert:
`
`“the key thing is that the burst is small -- the time it takes is small relative to the
`
`overall time that the transmitter could have been transmitting.” See DSS-2015,
`
`Grimes Cross-Exam at 46:12-15 (emphasis added). Furthermore, this construction
`
`is also consistent with the specification of the ‘290 Patent. For example, FIG. 6
`
`shows that three (3) RF bursts are transmitted during an outbound transmission
`
`sector having 64 time slots, wherein each RF burst slot is 2 µs.2 See APL-1001 at
`
`
`2 It should be noted that prosecution history of the ‘290 Patent illustrates the
`original informal drawings stated that RF burst slot = 2 µsec, when the drawings
`were formalized, “µsec” was changed to “MSEC.” See APL 1005 at pg. 76.
`13
`
`
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`
`
`Fig. 6; see also DSS-2015, Grimes Cross-Exam at 34:2-8 (“[T]here's a Figure 6 in
`
`the specification that shows how these bursts occur and gives you kind of a spatial
`
`image of the -- of these bursts. And you can see from looking at the picture that
`
`most of the time nothing is being transmitted, nothing is being received.”).
`
`
`
`In the exemplary embodiment depicted in Fig. 6, the duration of a single RF
`
`
`
`burst accounts for (cid:2869)(cid:2874)(cid:2872)(cid:3400)100%(cid:3404)1.563% of the outbound transmission section,
`Fig. 6 can be calculated as (cid:2871)(cid:2874)(cid:2872)(cid:3400)100%(cid:3404)4.688%, which also satisfies the low duty
`
`thereby satisfying the construction of the term “RF burst” provided herein. See
`
`DSS-2016, Dezmelyk Dec. at ¶ 26. The duty cycle of the embodiment depicted in
`
`
`
`14
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`cycle requiremnt. See id. at ¶ 24. Therefore, the constructions for “low duty cycle”
`
`
`
`and “RF bursts” provided herein are supported by the specification of the ‘290
`
`Patent. See id. at ¶ 24-26.
`
`
`
`V. PETITIONER HAS FAILED TO PROVE THAT CLAIMS 1-4 OF THE
`‘290 PATENT ARE UNPATENTABLE
`
`A. Claims 1-4 are not rendered obvious by Natarajan in view of Neve
`
`The Board instituted this trial on the ground that there is a reasonable
`
`likelihood that claims 1-4 of the ‘290 Patent are rendered obvious by Natarajan in
`
`view of Neve. For the reasons that follow, the Board should uphold validity of all
`
`challenged claims.
`
`1. Natarajan does not teach or suggest that the server transmitter
`is energized in low duty cycle RF bursts
`
`
`a. Natarajan is silent with respect to operation of server
`transmitter during outbound data traffic periods
`
`
`It is well established in the United States patent law that challenges on
`
`obviousness grounds cannot be sustained by mere conclusory statements. See KSR
`
`Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
`
`977, 988 (Fed. Cir. 2006)). Instead, “there must be some articulated reasoning with
`
`
`
`15
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`some rational underpinning to support the legal conclusion of obviousness.” Id. As
`
`
`
`the Federal Circuit eloquently stated: “[o]bviousness requires a court to walk a
`
`tightrope blindfolded (to avoid hindsight) – an enterprise best pursued with the safety
`
`net of objective evidence.” See Mintz v. Dietz & Watson, Inc., 679 F. 3d 1372, 1379
`
`(Fed. Cir. 2012).
`
`Natarajan does not contain any disclosure of the server transmitter being
`
`energized in low duty cycle. See DSS-2016, Dezmelyk Dec. at ¶ 31. Although
`
`Natarajan teaches a system for reducing power consumption in mobile units,
`
`Natarajan is silent regarding the operation of the base unit’s transmitter. See id. It is
`
`well understood in the art that although the base unit and mobile units may be
`
`structured similarly, the base and mobile units operate under different schemes. See,
`
`e.g., APL 1004, Neve, at 4:10-12 (“One station, which is physically similar to the
`
`others but operates a different stored program, may be designated the master station
`
`and provides synchronisation signals for all of the other stations (referred to
`
`hereinafter as “slave” stations) and controls access of the stations to the single radio
`
`channel.”). Accordingly, a POSITA would not have concluded that base transmitters
`
`operate the same way as the mobile units. See DSS-2016, Dezmelyk Dec. at ¶ 31.
`
`Indeed, Natarajan discloses that its objective is to provide energy savings for the
`
`mobile units, but does not teach or suggest that there are any energy savings
`
`
`
`16
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`associated with operation of the base unit’s transmitter. See APL 1003 at 3:59-61
`
`
`
`and 10:14-37, See DSS-2016, Dezmelyk Dec. at ¶ 32. For this reason, the base unit’s
`
`transmitter could operate continuously during the time slots designated for outbound
`
`traffic without undermining the objectives of Natarajan. See id. at ¶ 38.
`
`Natarajan discloses a multi-access protocol in which time is divided into
`
`fixed-length frames that are further subdivided in three (3) subframes:
`
`Period A for broadcast of packets from base station to
`mobile units (outbound traffic), with a header AH for
`period A. Period B for the contention-free transfer of all
`traffic from mobile units to base station (inbound traffic),
`with a header BH for period B. Period C for the transfer of
`all bursty data traffic in a contention mode from mobile
`units to base station (inbound traffic), with a header CH.
`APL 1004, Natarajan at 4:30-38.
`An example of a frame is provided in FIG. 4 of Natarajan, which is reproduced
`
`below:
`
`FIG. 4 depicts a single frame of the multi-access protocol, which begins with
`
`a header G of fixed length FH. See id. at 4:27-28. Natarajan discloses that outbound
`
`
`
`
`
`17
`
`
`
`Patent No. 6,128,290
`IPR2015-00369
`______________________________________________________________________________
`
`transmission from the base unit to the mobile units takes place during time Period
`
`
`
`A. See id. at 4:30-32. Period B is designated for inbound data traffic from mobile
`
`units to the base unit. See id. at 4:33-35. During Period C, mobile units transmit data
`
`to the base unit in a contention mode, and, responsive to a mobile unit’s transmission,
`
`the base unit transmits an outbound ACK/NAK message. See id. at 9:30-34.
`
`Accordingly, the base transmitter must be energized during header durations AH and
`
`BH, during outbound transmissi
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
