UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`
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`APPLE, INC.,
`Petitioners,
`
`v.
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`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`
`____________
`
`Case: IPR2015-00373
`U.S. Patent No. 6,128,290
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`____________
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`PATENT OWNER DSS TECHNOLOGY MANAGEMENT, INC.’S
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. §42.107
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`Patent No. 6,128,290
`IPR2015-00373
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`TABLE OF CONTENTS
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`INTRODUCTION ................................................................................................................. 1
`I.
`II. STATEMENT OF RELIEF REQUESTED ........................................................................... 2
`III. RELATED IPR PETITION ................................................................................................... 2
`IV. OVERVIEW OF THE INVENTION CLAIMED IN THE ‘290 PATENT .......................... 2
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`  
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`A. Summary of the ‘290 Patent ......................................................................................... 2
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`B. Priority date of the ’290 Patent ..................................................................................... 5
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`1.
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`The ‘695 Application satisfies the requirements of Section 112(a) for all
`limitations of claim 9 of the ‘290 Patent ......................................................... 10
`V. CLAIM CONSTRUCTION ................................................................................................. 19
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`Energized in low duty cycle RF bursts ....................................................................... 19
`1.
`VI. PETITIONER HAS FAILED TO PROVE THAT THERE IS A REASONABLE
`LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE ‘290 PATENT IS
`UNPATENTABLE .............................................................................................................. 20
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`A. Ground 1: Barber does not qualify as prior art against the ‘290 Patent ...................... 20
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`B. Ground 2: There is no reasonable likelihood that claims 6, 7, 9, and 10 are obvious
`based on Natarajan in view of Neve ........................................................................... 20
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`1. Natarajan does not disclose that the server transmitter is energized in low duty
`cycle RF bursts ................................................................................................ 21
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`2. Neve teaches away from the server transmitter being energized in low duty
`cycle RF bursts ................................................................................................ 24
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`C. Ground 3: Petitioner fails to show that claims 6 and 7 are obvious over Mahany ..... 25
`VII. CONCLUSION .................................................................................................................... 26
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` TABLE OF AUTHORITIES
`
`
`Federal Cases
`Commonwealth Sci. & Indus. Res. Organisation v. Buffalo Tech. (USA), Inc.,
`
`542 F.3d 1363, 1380 (Fed. Cir. 2008)............................................................................... 11
`
`In re Fine,
`
`837 F.2d 1071, 1076 (Fed. Cir. 1988)......................................................................... 24, 25
`
`In re Wright,
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`999 F.2d 1557, 1561 ( Fed. Cir. 1993).............................................................................. 14
`
`KSR Int'l Co. v. Teleflex Inc.,
`
`550 U.S. 398, 418 (2007) ...................................................................................... 20, 21, 24
`
`Mintz v. Dietz & Watson, Inc.,
`
`679 F. 3d 1372, 1379 (Fed. Cir. 2012).............................................................................. 21
`
`Northern Telecom, Inc. v. Datapoint Corp.,
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`908 F.2d 931, 941 ( Fed. Cir. 1990).................................................................................. 14
`
`Ralston Purina Co. v. Far-Mar-Co., Inc.,
`
`772 F.2d 1570, 1575 (Fed. Cir. 1985)............................................................................... 11
`
`Tech. Licensing Corp. v. Videotek, Inc.,
`
`545 F.3d 1316, 1331 (Fed. Cir. 2008)............................................................................... 11
`
`Transco Prods., Inc. v. Performance Contracting, Inc.,
`
`38 F.3d 551, 556 (Fed. Cir. 1994)....................................................................................... 6
`
`W.L. Gore & Associates, Inc. v. Garlock, Inc.,
`
`721 F.2d 1540 (Fed. Cir. 1983)) ....................................................................................... 23
`
`Waldemar Link GmbH & Co. v. Osteonics Corp.,
`
`32 F.3d 556, 558 (Fed. Cir. 1994)....................................................................................... 6
`
`
`Decisions of the Patent Trail and Appeal Board
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`Ex parte Martin Reiffin,
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`2007 WL 2814119 (B.P.A.I. Sep. 25, 2007)....................................................................... 6
`
`Federal Statutes
`35 U.S.C. § 103 ............................................................................................................................... 2
`
`35 U.S.C. § 120 ............................................................................................................................... 7
`
`35 U.S.C. § 314(a) .......................................................................................................................... 2
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`35 U.S.C. § 324(a) .......................................................................................................................... 2
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`35 U.S.C. 112(a) ....................................................................................................................... 7, 14
`
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`  
`
`Federal Regulations
`37 C.F.R. § 42.100(b) ................................................................................................................... 19
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`37 C.F.R. § 42.108(c)...................................................................................................................... 1
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`37 C.F.R. § 42.20(c)...................................................................................................................... 20
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`37 C.F.R. § 42.207(a)...................................................................................................................... 1
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`37 C.F.R. § 42.208(c)...................................................................................................................... 1
`
`37 C.F.R. §42.20(c)....................................................................................................................... 20
`
`
`Manual of Patent Examining Other Authorities 
`MPEP § 2142 ................................................................................................................................ 24
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`PATENT OWNER’S LIST OF EXHIBITS
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`DSS-2001 U.S. Patent No. 5,699,357
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`DSS-2002 Definition of “e.g.,” Black’s Law Dictionary (9th ed. 2009).
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`I. INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.207(a), the patent owner, DSS Technology Management, Inc.,
`
`(“Patent Owner”), hereby submits the following Preliminary Response in response to the Petition
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`for Inter Partes Review (“IPR”) of U.S. Patent No. 6,128,290 (“the ‘290 Patent”) (APL-1001).
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`The ‘290 Patent, entitled “Personal Data Network,” issued on October 3, 2000 and has a
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`priority date of March 6, 1996. The ‘290 Patent contains eleven (11) claims, of which claims 1, 5,
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`6, 9, and 15 are independent. Petitioner challenges validity of claims 6, 7, 9, and 10. Petitioner
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`advances the following invalidity challenges:
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`(1) obviousness of claims 9 and 10 under 35 U.S.C. §103 based on a Master’s Thesis
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`entitled “BodyLANTM: A Low-Power Communications System” by Thomas J. Barber
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`Jr. (“Barber”) (APL-1002);
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`(2) obviousness of claims 6, 7, 9, and 10 under 35 U.S.C. §103 based on U.S. Patent No.
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`5,241,542 to Natarajan et al. (“Natarajan”) (APL-1003) in view of U.S. Patent No.
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`4,887,266 to Neve et al. (“Neve”) (APL-1004); and
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`(3) obviousness of claims 6, 7, 9, and 10 under 35 U.S.C. §103 based on U.S. Patent No.
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`5,696,903 to Mahany (“Mahany”) (APL-1010).
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`To institute an IPR review, Petitioner must satisfy its burden of establishing that there is a
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`reasonable likelihood that at least one of the challenged claims of the ‘290 Patent is unpatentable.
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`See 37 C.F.R. § 42.108(c). “The Director may not authorize an inter partes review to be instituted
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`unless the Director determines that the information presented in the petition filed under section
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`311 and any response filed under section 313 shows that there is a reasonable likelihood that the
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`petitioner would prevail with respect to at least one of the claims challenged in the petition.” 35
`1
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`U.S.C. § 314(a). Here, Petitioner failed to meet its burden, and therefore, the Patent Trial and
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`Appeal Board (“the Board”) should deny the Petition in its entirety and decline to institute trial
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`against claims 6, 7, 9, and 10 of the ‘290 Patent.
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`II. STATEMENT OF RELIEF REQUESTED
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`
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`Patent Owner respectfully requests the Board to deny the Petition for an IPR of claims 6,
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`7, 9, and 10 of the ‘290 Patent because Petitioner has failed to prove that there is a reasonable
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`likelihood that the challenged claims are unpatentable under 35 U.S.C. § 103.
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`III. RELATED IPR PETITION
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`Petitioner filed another IPR petition against claims 1-4 of the ‘290 Patent in case IPR2015-
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`00369. The Board’s decision in the present case is likely to be highly pertinent to the invalidity
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`challenges advanced by Petitioner in case IPR2015-00369.
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`IV. OVERVIEW OF THE INVENTION CLAIMED IN THE ‘290 PATENT
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`In its summary of the ‘290 Patent, Petitioner omitted several material elements of the
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`claimed invention. The following overview provides a brief description of the data network system
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`disclosed and claimed in the ‘290 Patent, focusing on the elements Petitioner failed to discuss.
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`A. Summary of the ‘290 Patent
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`The ‘290 Patent discloses and claims a data network system that improves bidirectional
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`wireless data communications between a server microcomputer unit and a plurality of peripheral
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`units. See APL 1001, ‘290 Patent at 1:11-14. At the time of invention, two major issues hindered
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`widespread adoption of wireless data communication systems: (1) short battery life and (2)
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`interference from other wireless data systems operating nearby. See id. at Abstract. The ‘290 Patent
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`advanced the state of the art by ameliorating both problems.
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`The ‘290 Patent discloses and claims a wireless data system, in which both the server and
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`peripheral transmitters are energized in low duty cycle RF bursts. See id. at claims 6 and 9. This
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`feature of the claimed invention achieves two important objectives: (1) it reduces power usage for
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`both the server and the peripheral units because the server transmitter is only energized when the
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`server must transmit data; and (2) it reduces likelihood of interference between nearby wireless
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`ensembles because the server transmits signals only during scheduled communications with a
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`peripheral unit. See id. at 1:59-61. The specification of the ‘290 Patent explains that “[i]f during a
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`particular bit period, two RF bursts are being simultaneously received, one from a transmitter in
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`the home ensemble and the other from a foreign ensemble, the receiver will ‘capture’ only the data
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`received from the stronger of two transmitters.” Id. at 6:36-40. Accordingly, by claiming a system
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`in which both the server and peripheral transmitters operate in low duty cycle RF bursts, the ‘290
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`Patent significantly reduces the number of transmissions outgoing from the server unit, thereby
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`decreasing the likelihood that nearby peripheral units belonging to a foreign ensemble will receive
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`an unintended data signal from the server. Id. at 1:59-61.
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`At the time of filing of the ‘290 Patent, the accepted convention in wireless data systems
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`technology was for a server transmitter to continuously transmit data, regardless of whether any
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`peripheral units were receiving that data. See, e.g., APL 1004, Neve at 4:48-50 (disclosing that the
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`server unit transmits “idle words” when no active data transmission is scheduled). While the server
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`transmitter is outputting a continuous data stream, the peripheral units schedule to wake
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`themselves up at designated times to receive or transmit data and remain powered down at all other
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`times. See, e.g., APL 1003, Natarajan at 5:2-4. In such a system, it is only necessary to ensure that
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`the peripheral receivers are energized at an appropriate time to receive the designated data segment
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`within the continuous data stream. This scheme is advantageous because it does not require the
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`server transmitter to be separately energized for each individual transmission to a peripheral unit—
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`instead, the server must only be energized once to initiate the continuous transmission of the data
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`stream, and the peripheral units are timed to listen in at appropriate times. If no data has to be
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`transmitted, the server remains energized and transmits idle signals. See APL 1004, Neve at 4:48-
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`50.
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`In sharp contrast, the ‘290 Patent discloses a system in which the server transmitter does
`
`not send a continuous data stream, but instead is energized in RF bursts only when active data
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`transmission between the server unit and a peripheral unit is scheduled to occur. See id. at 1:59-
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`61. The data network system disclosed in the ‘290 Patent employs a complex synchronization
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`scheme to achieve a functioning system in which both the server and peripheral transmitters are
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`energized in low duty cycle RF bursts. See id. at 10:5-11:8. The server unit must initiate a separate
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`transmission to each unit at the exact time as the peripheral unit’s receiver is tuning in to listen.
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`This scheme introduces complexities to the data network system because the server must be very
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`closely synchronized with the peripheral units. For this reason, the ‘290 Patent discloses a complex
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`synchronization scheme in which the peripheral units are equipped with voltage controlled crystal
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`oscillators, whose frequency must be aligned with the frequency of the server’s oscillator to
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`establish precise synchronization between the server unit and the peripheral unit. See id. at 10:35-
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`61. The ‘290 Patent introduces these complexities into a wireless data system to allow both the
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`server and peripheral transmitters to be energized only when an active data transmission must
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`occur and remain powered down at all other times.
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`In conclusion, the ‘290 Patent explicitly states that its objectives include “provision of such
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`a data network which requires extremely low power consumption” and “avoids interference from
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`nearby similar systems.” Id. at 1:39-44. The ‘290 Patent achieves these objectives by creating a
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`data network system in which, inter alia, both “server and peripheral transmitters [are] energized
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`in low duty cycle RF bursts.” Id. at claims 6 and 9 (emphasis added); see also id. at 1:59-61 (“The
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`low duty cycle pulsed operation both substantially reduces power consumption and facilitates the
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`rejection of interfering signals.”).
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`B. Priority date of the ’290 Patent
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`The ’290 Patent issued from Application No. 08/949,999 (“the ’999 application”) (APL
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`1005) filed on October 14, 1997. The ‘290 Patent claims the benefit of priority from the U.S.
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`Application No. 08/611,695 (“the ’695 Application”) (APL 1006) on a basis of being continuation-
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`in-part thereof. The ‘695 Application was filed on March 6, 1996 and issued into the U.S. Patent
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`No. 5,699,357 (“the ‘357 Patent) (DSS-2001). Challenged claims 6, 7, 9, and 10 are fully supported
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`by the original disclosure of the ‘695 Application for the reasons provided below, and therefore,
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`are entitled to the priority date of the ‘695 Application.
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`Petitioner alleges that claims 9 and 10 recite new matter not disclosed in the ‘695
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`Application. See Petition at pg. 5. This is not true. Petitioner fails to recognize that the ‘695
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`Application discloses and claims a data network system having the exact same structure as the
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`system claimed in the ’290 Patent, and therefore, all functional capabilities of the system claimed
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`in the ‘290 Patent are disclosed in the ‘695 Application. Moreover, the operational range of the
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`claimed data network system is constrained by the requirement that the distance between the
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`peripheral units and the server unit is “not appreciably affected by transit time delays,” rather than
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`an exemplary operational range. See APL 1006, ‘695 Application at lines 14-17. The following
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`analysis establishes that claims 9 and 10 of the ‘290 Patent are entitled to the benefit of the filing
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`date of the ‘695 Application, which is March 6, 1996.
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`The law of the United States provides that “[a]n application for patent for an invention
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`disclosed in the manner provided by the first paragraph of section 112 of this title in an application
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`previously filed in the United States . . . shall have the same effect, as to such invention, as though
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`filed on the date of the prior application . . . .” 35 U.S.C. § 120 (emphasis added). The terms
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`“continuation” and “continuation-in-part” are “merely terms used for administrative convenience.”
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`Transco Prods., Inc. v. Performance Contracting, Inc., 38 F.3d 551, 556 (Fed. Cir. 1994).
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`Regardless of what term is used to designate a continuing application, the continuing application
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`is entitled to the benefit of the filing date of an earlier application as to common subject matter.
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`See id.; see also Ex Parte Martin G. Reiffin, 2007 WL 2814119 (B.P.A.I. Sep. 25, 2007) (“As far
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`as the right under the statute is concerned the name used is immaterial, the names being merely
`
`expressions developed for convenience. The statute is so worded that … the second application is
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`entitled to the benefit of the filing date of the first as to the common subject matter.”) (emphasis
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`added). Although “[a] CIP application can be entitled to different priority dates for different
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`claims[,] . . . matter disclosed in the parent application is entitled to the benefit of the filing date
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`of the parent application.” Waldemar Link GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 558
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`(Fed. Cir. 1994).
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`35 U.S.C. § 120 provides that a determination of whether a particular claim of a child
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`application is entitled to the priority date of its parent hinges on whether the requirements set forth
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`in the first paragraph of 35 U.S.C. § 112 are satisfied. The first paragraph of Section 112 requires
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`the following:
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`The specification shall contain a written description of the
`invention, and of the manner and process of making and using it,
`in such full, clear, concise, and exact terms as to enable any person
`skilled in the art to which it pertains, or with which it is most nearly
`connected, to make and use the same . . . .
`35 § U.S.C. 112(a) (emphasis added).
`
`The claim chart provided below establishes that every limitation of claim 9 of the ‘290
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`
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`Patent is fully supported by the original disclosure of the ‘695 Application under the requirements
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`of 35 U.S.C. § 112(a), and, therefore, claim 9 is entitled to the March 6, 1996 priority date of the
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`‘695 Application. To facilitate clarity and ease of citation, the claim chart cites to the specification
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`of the ‘357 Patent, which is identical to original specification of the ‘695 Application.
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`Claim 9 of the ‘290 Patent (APL 1001)
`A data network system for effecting
`coordinated operation of a plurality of
`electronic devices, said system comprising:
`a server microcomputer unit,
`said server unit including an
`oscillator for establishing a time base;
`a plurality of peripheral units
`
`The ‘357 Patent (DSS-2001)
`“A data network system for effecting
`coordinated operation of a plurality of
`electronic devices” (11:63-64)
`“a server microcomputer” (2:66)
`“said server unit including an oscillator for
`establishing a time base;” (13:49-51)
`“a plurality of peripheral units” (3:13-14)
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` which provide either input information
`from the user or output information to the
`user,
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`and which are adapted to operate within
`about 20 meters of said server unit;
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`said server microcomputer incorporating an
`RF transmitter for sending commands and
`synchronizing information to said peripheral
`units;
`said server microcomputer incorporating an
`RF transmitter controlled by said oscillator
`for sending commands and synchronizing
`information to said peripheral units,
`said synchronizing information being carried
`by time spaced beacons characteristic of the
`particular server unit;
`said peripheral units each including an RF
`receiver for detecting said commands and
`synchronizing information and including also
`a local oscillator,
`each of said peripheral units being
`operative in a first mode to receive said
`
`“which provide input information from the
`user or output information to the user” (2:20-
`21)
`“the server microcomputer unit and the
`several peripheral units which are to be linked
`are all in close physical proximity . . . to
`establish, with very high accuracy, a common
`time base or synchronization. The short
`distances involved means [sic] that accuracy
`of synchronization is not appreciably affected
`by transit time delays.” (1:45-51) (Non-
`limiting example removed)
`“The server microcomputer incorporates an
`RF transmitter for sending commands and
`synchronizing information to the peripheral
`units.” (2:22-24)
`“The server microcomputer includes a
`receiver for receiving that information
`transmitted from the peripheral units.” (2:28-
`30)
`“said synchronizing information being carried
`by time spaced beacons characteristic of the
`particular server unit” (14:30-32)
`said peripheral units each including an RF
`receiver for detecting said commands and
`synchronizing information and including also
`a local oscillator,” (14:33-35)
`“each of said peripheral units being operative
`in a first mode to receive said beacons
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`beacons independently of synchronization of
`the respective local oscillator when that
`peripheral unit is in close proximity to said
`server unit and to determine from the server
`unit its characteristics,
`each of said peripheral units being
`operative in a second mode to synchronize the
`respective local oscillator with the server unit
`oscillator,
`each of said peripheral units also including
`an RF transmitter operative in a third mode
`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 with said receivers being controlled
`by the respective oscillators.
`
`independently of synchronization of the
`respective local oscillator when that
`peripheral unit is in close proximity to said
`server unit and to determine from the server
`unit its characteristics,” (14:35-40)
`“each of said peripheral units being operative
`in a second mode to synchronize the
`respective local oscillator with the server unit
`oscillator,” (14:40-43)
`“each of said peripheral units also including
`an RF transmitter operative in a third mode
`for sending input information from the user to
`said server microcomputer,” (14:43-46)
`“said server microcomputer including a
`receiver for receiving input information
`transmitted from said peripheral units;”
`(14:47-49)
`“said server and peripheral transmitters being
`energized in low duty cycle RF bursts at
`intervals with said receivers being controlled
`by the respective oscillators.” (14:50-52)
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`1. The ‘695 Application satisfies the requirements of Section 112(a) for all
`limitations of claim 9 of the ‘290 Patent
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`Petitioner alleges that claim 9 of the ’290 patent contains new matter not disclosed in the
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`‘695 Application. See Petition at pg. 5. Specifically, Petitioner contends that the language “within
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`about twenty meters” constitutes new matter outside of the scope of the original disclosure of the
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`‘695 Application and, based on this contention, asserts that the limitation “peripheral units . . .
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`which are adapted to operate within about 20 meters of said server unit” is not supported by the
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`‘695 Application. See id. Relying solely on the fact that a non-limiting example of “e.g. within
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`twenty meters” was not verbatim recited in the original specification of the ‘695 Application,
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`Petitioner concludes that operable range of “within about 20 meters” constitutes new matter to the
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`‘695 Application and, therefore, claims 9 and 10 of the ‘290 Patent are not entitled to the priority
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`date of the ‘695 Application. See id.
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`Petitioner, however, provides no analysis as to why the limitation “peripheral units . . .
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`adapted to operate within about 20 meters of said server unit” is not disclosed in the ‘695
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`Application in a manner sufficient to satisfy the requirements of the first paragraph of 35 U.S.C. §
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`112. Petitioner focuses solely on designation of the ‘290 Patent as a continuation-in-part and fails
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`to address the express provisions of 35 U.S.C. § 120.
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`Contrary to Petitioner’s allegations, the analysis provided below establishes that the ‘695
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`Application discloses the limitation “peripheral units . . . adapted to operate within about 20 meters
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`of said server unit” in a manner compliant with 35 U.S.C. § 112(a), thereby entitling claim 9 to the
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`benefit of the priority date of the ‘695 Application.
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`a. The ‘695 Application provides written description for every
`limitation of claim 9 of the ‘290 Patent
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`“To satisfy the written description requirement, the disclosure of the earlier filed
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`application must describe the later claimed invention ‘in sufficient detail that one skilled in the art
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`can clearly conclude that the inventor invented the claimed invention as of the filing date sought.’”
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`Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1331 (Fed. Cir. 2008) (quoting Lockwood
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`v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). Although the earlier application is not
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`required to “describe the claimed subject matter in precisely the same terms as found in the claims
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`at issue,” the earlier application must “‘convey with reasonable clarity to those skilled in the art
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`that, as of the filing date sought, [the inventor] was in possession of the invention.’” Tech.
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`Licensing Corp., 545 F.3d. at 1331-32 (internal quotations omitted). Furthermore, the specification
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`may adequately describe a claimed invention without describing every species encompassed in
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`the claim. See Ralston Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)
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`(emphasis added).
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`In Commonwealth Sci. & Indus. Res. Organisation v. Buffalo Tech. (USA), Inc., the Federal
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`Circuit addressed the issue of whether the specification expressly disclosing an exemplary
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`operational range could adequately support a broader claimed range. See Commonwealth Sci. &
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`Indus. Res. Organisation v. Buffalo Tech. (USA), Inc., 542 F.3d 1363, 1380 (Fed. Cir. 2008). The
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`Federal Circuit answered in the affirmative holding that exemplary operational ranges disclosed
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`as useful embodiments of an invention are not limitations to the invention as a whole. See id.
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`(holding that although the claimed frequency range of a wireless transmitter extended beyond the
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`exemplary range expressly disclosed in the original specification, the specification nevertheless
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`supported the broader claimed range because “there is no reason why a POSA would expect the
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`claimed technique to operate differently” outside the expressly disclosed range).
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`Patent No. 6,128,290
`IPR2015-00373
`______________________________________________________________________________
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`As Petitioner recognized, the specification of the ‘695 Application is nearly identical to the
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`  
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`specification of the ‘290 Patent. See Petition at pg. 7. The only difference between the ‘290 Patent
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`and the ‘695 Application is that the ‘290 Patent discloses a different use of the invention. The ‘290
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`Patent changed a total of two sentences of the ‘695 Application: (1) in the Abstract, the exemplary
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`use of the invention was changed from “peripheral units each of which is intended to be carried on
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`the person of the microcomputer user” to “peripheral units located within short range of the server
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`unit, e.g. within 20 meters;” and (2) an example of “close physical proximity” was changed from
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`“e.g. under two meters separation” to “e.g. within twenty meters.” APL 1001, ‘290 Patent at
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`Abstract and 1:53. Otherwise, the specifications and drawings of the ‘290 Patent and the ‘695
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`Application are identical.
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`The ‘290 Patent does not alter the structure of the data network system disclosed in the
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`‘695 Application and does not introduce any new components thereto. The network systems of the
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`‘290 Patent and the ‘695 Application are structurally identical and, therefore, have the same
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`capabilities, including the range at which the peripheral units are operational. Accordingly, the
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`following disclosure in the ‘695 Application fully supports the “peripheral units . . . adapted to
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`operate within about 20 meters of the server unit” limitation of claim 9:
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`the server microcomputer unit and the several peripheral units which
`are to be linked are all in close physical proximity, e.g. under two
`meters separation, to establish, with very high accuracy, a common
`time base or synchronization. The short distances involved means
`[sic] that accuracy of synchronization is not appreciably affected by
`transit time delays. (1:45-51)
`Under Commonwealth Sci. & Indus. Res. Organisation v. Buffalo Tech. (USA), Inc., the
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`language “e.g. under two meters separation” is an exemplary operational range, rather than a
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`IPR2015-00373
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`limiting constraint of the invention. The limit on how far the peripheral units can be positioned
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`  
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`from the server unit is not established by the “under two meters separation” example, but rather
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`by the technical requirement that the “accuracy of synchronization is not appreciably affected by
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`transit time delays.” Part IV.B.1., infra, shows that “under two meters separation” and “within
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`twenty meters” are merely non-limiting examples, and that the theoretical operational range of the
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`disclosed data network system can be readily calculated based on its structural limitations, which
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`remain unchanged between the ‘695 Application and the ‘290 Patent.
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`Petitioner provided no explanation as