Trials@uspto.gov
`571-272-7822
`
` Paper No. 8
` 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 IPR2015-00373
`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
`
`
`

`
`IPR2015-00373
`Patent 6,128,290
`
`
`I. INTRODUCTION
`
`On December 4, 2014, Petitioner Apple Inc. (“Apple”) filed a Petition
`
`(Paper 2, “Pet.”) requesting inter partes review of claims 6, 7, 9, and 10 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 7, “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 6, 7, 9, and 10 of the ’290 patent under 35 U.S.C.
`
`§ 103(a) on certain 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. 2;
`
`Paper 5, 2. Additionally, claims 1–4 of the ’290 patent are the subject of a
`
`concurrently filed petition for inter partes review, IPR2015-00369.
`
`B. The ’290 Patent (Ex. 1001)
`
`The ’290 patent, titled “Personal Data Network,” issued October 3,
`
`2000, from U.S. Patent Application No. 08/949,999 (Ex. 1005, 22–62, “the
`
`’999 application”). The ’999 application was filed October 14, 1997, as a
`
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`2
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`

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`IPR2015-00373
`Patent 6,128,290
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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,
`
`col. 1, ll. 6–8.
`
`The ’290 patent relates to a data network for bidirectional wireless
`
`data communications between a host or server microcomputer unit and a
`
`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
`
`power consumption, “particularly for the peripheral units,” avoids
`
`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
`
`’290 patent, reproduced below, is illustrative of the described wireless data
`
`network system.
`
`Figure 1 is a block diagram of a wireless data network system linking
`
`a server microcomputer, referred to as “personal digital assistant (PDA) 11,”
`
`
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`IPR2015-00373
`Patent 6,128,290
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`with a plurality of peripheral units, or PEAs, 21–29. Id. at col. 2, ll. 42–44,
`
`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
`
`proximity, e.g., within twenty meters, to establish, with very high accuracy,
`
`a common time base or synchronization.” Id. at col. 1, ll. 50–54. “Using the
`
`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
`
`determined by a code sequence which is timed in relation to the
`
`synchronizing information initially transmitted from the server
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`microcomputer.” Id. at col. 2, ll. 35–39. “The low duty cycle pulsed
`
`operation both substantially reduces power consumption and facilitates the
`
`rejection of interfering signals.” Id. at col. 1, ll. 59–61. “In the intervals
`
`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 Claims
`
`As noted above, Apple challenges claims 6, 7, 9, and 10 of the ’290
`
`patent. Claims 6 and 9, the independent claims challenged, are reproduced
`
`below. Challenged claims 7 and 10 depend from claims 6 and 9,
`
`respectively.
`
`
`
`4
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`

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`IPR2015-00373
`Patent 6,128,290
`
`
`6. 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 which are battery powered and portable
`and which provide either input information from the user or output
`information to the user;
`
`said server microcomputer incorporating an RF transmitter controlled
`by said oscillator 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 a local
`oscillator which can be synchronized to said server unit oscillator using
`said synchronizing information and an RF transmitter controlled by said
`local oscillator for sending input information from the user to said server
`microcomputer;
`
`said server microcomputer including a receiver controlled by said
`server unit oscillator for receiving input information transmitted from
`said peripheral units;
`
`said server and peripheral transmitters being energized in low duty
`cycle RF bursts which are timed in relation to said synchronizing
`information.
`
`9. 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 which provide either input information
`from the user or output information to the user, and which are adapted to
`operate within about 20 meters of said server unit;
`
`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
`
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`IPR2015-00373
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`
`
`oscillator, each of said peripheral units being operative in a first mode to
`receive said 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.
`
`Ex. 1001, col. 12, l. 59–col. 13, l. 16, col. 13, l. 25–col. 14, l. 10.
`
`D. Evidence of Record
`
`Apple relies on the following references, as well as the Declaration of
`
`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
`
`
`
`
`
`6
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`

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`IPR2015-00373
`Patent 6,128,290
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`E. Asserted Grounds of Unpatentability
`
`Apple challenges the patentability of the challenged claims on the
`
`following three grounds:
`
`Reference(s)
`
`Basis
`
`Claims Challenged
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`9, 10
`
`6, 7, 9, 10
`
`6, 7
`
`Barber
`
`Natarajan and Neve
`
`Mahany
`
`
`
`II. DISCUSSION
`
`A. Claim Interpretation
`
`In inter partes review proceedings, claims of an unexpired patent are
`
`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
`
`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,
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`IPR2015-00373
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`however, may rebut this presumption by acting as his own lexicographer,
`
`providing a definition of the term in the specification with “reasonable
`
`clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480
`
`(Fed. Cir. 1994).
`
`Apple asks us to construe the phrase “local oscillator” recited in
`
`claims 6 and 9. Pet. 6–8. DSS asks us to construe “energized in low duty
`
`cycle RF bursts,” also recited in claims 6 and 9. Prelim. Resp. 19–20.
`
`(1) “local oscillator”
`
`Claim 6 and 9 each recite peripheral units “including an RF receiver
`
`for detecting [] commands and synchronizing information and including also
`
`a local oscillator” that can be synchronized with a server unit oscillator. In
`
`claim 6, the peripheral units also include an RF transmitter “controlled by
`
`said local oscillator.” We have considered Apple’s arguments that “local
`
`oscillator” is a term of art, that the term’s usage in portions of the
`
`Specification is consistent with its commonly understood meaning, and that
`
`the term’s usage in the claims is “at odds with” those portions of the
`
`Specification (see Pet. 6–8), but conclude that the word “local” appears to be
`
`used in claims 6 and 9 only as an adjective to designate the location of the
`
`recited oscillator. Notably, Apple does not propose any specific
`
`construction for “local oscillator” in the Petition. Nor does Apple point to
`
`any special definition set forth in the Specification for “local oscillator” that
`
`is inconsistent with or otherwise contrary to the plain meaning of “local.”
`
`We, therefore, see no need for any express construction of “local oscillator.”
`
`(2) “energized in low duty cycle RF bursts”
`
`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
`
`
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`ambiguity, that it should be construed as “a pulsed operation that
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`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 6, 7, 9, and 10 of the ’290 patent to
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`construe expressly the phrase “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 9 and 10 over Barber
`
`Apple contends that claims 9 and 10 of the ’290 patent are
`
`unpatentable under 35 U.S.C. § 103(a) as obvious over Barber, which Apple
`
`asserts was published “at least as early as April 11, 1996.” Pet. 9, 11, 13–24.
`
`According to Apple, claims 9 and 10 recite features first disclosed in the
`
`’999 application, and accordingly, are entitled only to the benefit of the ’999
`
`application’s October 14, 1997 filing date, rather than the March 6, 1996
`
`filing date of the ’695 parent application. Id. at 5. Because April 11, 1996,
`
`was more than one year prior to October 14, 1997, Apple asserts that Barber
`
`is prior art under at least 35 U.S.C. § 102(b). Id. at 9. DSS counters that
`
`claims 9 and 10 are fully supported by the original disclosure of the ’695
`
`application and are, therefore, entitled to the benefit of the March 6, 1996
`
`filing date of the ’695 application. Prelim. Resp. 5.
`
`For the reasons explained below, we are not persuaded that Apple has
`
`established a reasonable likelihood that it would prevail on this ground with
`
`respect to each of claims 9 and 10, regardless of whether claims 9 and 10 are
`
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`entitled to the ’695 application’s March 6, 1996 filing date or only to the
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`’999 patent’s October 14, 1997 filing date.
`
`As the Board has previously explained, to qualify as a printed
`
`publication within the meaning of § 102, “a reference ‘must have been
`
`sufficiently accessible to the public interested in the art’ before the critical
`
`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
`
`publicly accessible if it was disseminated or otherwise made available to the
`
`extent that persons interested and ordinarily skilled in the subject matter or
`
`art, exercising reasonable diligence, can locate it. Id. Having reviewed
`
`Apple’s arguments and proffered evidence, we determine that Apple has not
`
`satisfied its burden to prove that Barber qualifies as prior art.
`
`Apple merely asserts, without any citation of evidence, that Barber
`
`“was published at least as early as April 11, 1996.” Pet. 9. Apple’s expert,
`
`Dr. Grimes, likewise asserts, without citing any additional evidence, that
`
`Barber was “submitted January 30, 1996, [and] archived in Massachusetts
`
`Institute of Technology Libraries April 11, 1996” (Ex. 1008, 6).
`
`We acknowledge that the cover page of Barber includes a stamp
`
`reading “ARCHIVES MASSACHUSETTS INSTITUTE OF
`
`TECHNOLOGY APR 11 1996 LIBRARIES.” Ex. 1002, 1. That stamped
`
`date, however, would appear to be a hearsay statement to the extent that it
`
`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
`
`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.
`
`We must decide whether to institute a trial based on “the information
`
`presented in the petition” (35 U.S.C. § 314(a)). In this case, Apple has not
`
`identified sufficient evidence on the record before us to qualify Barber as
`
`prior art. Apple has submitted no evidence, for example, to establish that the
`
`thesis was indexed, cataloged, and shelved in the university library prior to
`
`the filing of the ’999 application. See Cronyn, 890 F.2d at 1161; cf. In re
`
`Hall, 781 F.2d 897 (Fed. Cir. 1986). We conclude, therefore, that Apple has
`
`not demonstrated a reasonable likelihood that it would prevail at trial in
`
`challenging claims 9 and 10 of the ’290 patent under 35 U.S.C. § 103(a)
`
`over Barber. Because our conclusion does not turn on whether claims 9 and
`
`10 are entitled to the priority date of the ’695 application or only that of the
`
`’999 application, we further conclude that it is not necessary for our
`
`determination of whether to institute inter partes review of claims 9 and 10
`
`of the ’290 patent to decide that issue.
`
`C. Obviousness of Claims 6, 7, 9, and 10 over Natarajan and Neve
`
`Apple contends that claims 6, 7, 9, and 10 of the ’290 patent are
`
`unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
`
`Natarajan and Neve. Pet. 24, 30–51. We are persuaded that Apple has
`
`established a reasonable likelihood that it would prevail on this ground with
`
`respect to each of claims 6, 7, 9, and 10, for the reasons explained below.
`
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`
`(1) Natarajan
`
`Natarajan is directed to power conservation in wireless
`
`communication, particularly battery efficient operation of wireless link
`
`adapters of mobile computers (also referred to, inter alia, as battery powered
`
`computers, hand held or laptop computers, mobile units, and mobile
`
`stations) as controlled by multiaccess protocols used in wireless
`
`communication. Ex. 1003, col. 1, ll. 7–13, col. 2, l. 32, Abst. Figure 2 of
`
`Natarajan is reproduced below.
`
`
`
`Figure 2 is a block diagram of a digital data communication system of the
`
`type in which Natarajan’s invention is implemented, illustrating the basic
`
`components of a mobile station and a base station. Id. at col. 1, l. 67–col. 2,
`
`l. 3. As depicted in Figure 2, mobile stations 10, 12, 14, and 16
`
`communicate with gateways (i.e., base stations 26, 28) connected with
`
`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:
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`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
`
`transmitting a message (or actively receiving a message).” Id. at 4:3–6.
`
`Natarajan further discloses that the scheduled multiaccess protocol divides
`
`time into “fixed-length frames, and frames are divided into slots.” Id. at
`
`col. 4, ll. 20–23. The frames are divided into subframes for transmission of
`
`data from the base station to mobile units (outbound traffic) as well as
`
`transmission of data from mobile units to the base station (inbound traffic).
`
`Id. at col. 4, ll. 27–38. According to Natarajan, at least one slot is assigned
`
`to each mobile computer designated to communicate with the base station.
`
`Id. at col. 10, ll. 26–29. The battery power of the wireless link adapter for a
`
`given mobile computer is turned on to full power during the at least one
`
`assigned slot, and the battery power of the wireless link adapter is
`
`substantially reduced during the remaining time slots. Id. at col. 10, ll. 29–
`
`37.
`
`With respect to outbound traffic, Natarajan discloses that the base
`
`station broadcasts a header that includes a list of mobile users that will be
`
`receiving data packets from the base station in the current frame, the order in
`
`which the mobile users will receive the data packets, and the bandwidth
`
`allocated to each user. Id. at col. 4, ll. 45–53. According to Natarajan, a
`
`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
`
`compute exactly when it should be ready to receive packets from the base
`
`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.
`
`For inbound traffic, Natarajan similarly discloses that the base station
`
`broadcasts a header that includes an ordered list of users that will be allowed
`
`to transmit packets to the base station in the current frame and the bandwidth
`
`allocated to each. Id. at col. 5, ll. 9–19. Using the information regarding the
`
`number of packets that each user can transmit, each mobile unit can compute
`
`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
`
`its transmitter and receiver “OFF” until the designated time, and then turn
`
`“ON” and transmit for a fixed period of time whose duration depends on the
`
`number of slots allocated to it. Id. at col. 5, ll. 23–29.
`
`(2) Neve
`
`Neve is directed to a communication system able to provide multiple
`
`path communication between a plurality of stations operating on a single
`
`channel. Ex. 1004, Abst. Neve discloses that one station, which is
`
`physically similar to the others but operates a different stored program, may
`
`be designated the “master” station and provides synchronization signals for
`
`all of the other stations (referred to as “slave stations”) and controls access
`
`of the stations to the single radio channel. Id. at 4:10–15.
`
`According to Neve, the stations are synchronized and a cyclically
`
`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
`
`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
`
`another station, such indication preferably being by transmitting its own pre-
`
`assigned address code. Id. The remaining time slots are used for
`
`transmitting address information and data. Id.
`
`Neve discloses that when data transfer is not taking place, the
`
`described devices can enter a lower power consumption state. Id. at col. 2,
`
`ll. 13–16. The system is designed automatically to re-enter the data transfer
`
`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
`
`receiver circuit indicative of the need to receive data. Id. at col. 2, ll. 19–24.
`
`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.
`
`Id. at col. 2, ll. 39–41. More particularly, the receiver circuit includes a low
`
`power timing circuit that operates to energize the rest of the receiver circuit
`
`only for the time slot in which its address may occur and for the
`
`synchronization time slot, thereby enabling it to maintain synchronization
`
`with low power consumption. Id. at col. 4, ll. 43–48. Neve similarly
`
`discloses that the interface circuit is arranged to energize the transmitter
`
`circuit only when transmission is required. Id. at col. 2, ll. 45–47.
`
`(3) Analysis
`
`Apple contends that Natarajan discloses all limitations of claims 6, 7,
`
`9, and 10, with the exception of explicit disclosure of the server unit sending
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`“synchronizing information” to the mobile units, as recited in claims 6 and
`
`9, and “said synchronizing information being carried by time spaced
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`beacons,” as recited in claim 9. Pet. 30–51. Apple further contends that
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`Neve discloses those elements not disclosed explicitly by Natarajan. Id.
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`Upon review of the Petition, we are persuaded that Apple has shown a
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`reasonable likelihood that it would prevail in establishing the unpatentability
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`of claims 6, 7, 9, and 10 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. DSS contends that “Natarajan
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`. . . says nothing about the server transmitter turning itself OFF and
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`scheduling to wake up at an appropriate time to transmit data to a designated
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`mobile unit” and that “Natarajan neither teaches nor suggests that the
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`operation of the server unit provides any power savings.” Id. at 23.
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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 claims 6 and 9. Claims 6, 7, 9, and 10 do not recite any
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`requirements that the server transmitter must turn itself OFF and schedule to
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`wake up at an appropriate time to transmit data to a designated mobile unit
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`or that the operation of the server unit must provide any “power savings”;
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`nor is such required by the plain and ordinary meaning of the claim phrase
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`“energized in low duty cycle RF bursts.” Regardless, by disclosing, for
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`example, that “a scheduled multi-access protocol is used in which time is
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`divided into fixed-length frames” and that “frame[s] [are] divided into
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`multiple subframes,” including different periods for broadcast of packets
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`from base station to mobile units (outbound traffic) and for transfer of traffic
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`from mobile units to base station (inbound traffic) (see, e.g., Ex. 1003, col.
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`4, ll. 20–22, 28–38), we are persuaded for purposes of this Decision that
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`Natarajan conveys that both the receivers and the transmitters in the base
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`station, as well as in the mobile units, are energized only in low duty cycle
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`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 claims 6 and 9.” Id.
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`In support of that contention, DSS cites portions of Neve stating “[i]f no data
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`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. (quoting Neve 4:48–50, 7:17–19 (emphasis added by 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, only certain of which involve transmission:
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`After the master station is powered up it scans its table of time
`slot allocations. . . . If the time slot is a synchronisation time
`slot the synchronisation word is transmitted. If it is an interrupt
`time slot the master station receives. If a valid address is
`received this is entered into the table of active slave stations
`requiring communication. During the other time slots either a
`housekeeping operation is performed as previously described or
`the master station takes part in a communication operation or
`the master station monitors the channel if the time slot has been
`allocated to communication between two slave stations. If the
`time slot is unassigned the idle word is transmitted.
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`Ex. 1004, col. 7, ll. 27–42 (emphases added).
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`Because, on this record, Apple has identified sufficient evidence to
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`support its contention that the combination of Natarajan and Neve would
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`have rendered obvious the subject matter of claims 6, 7, 9, and 10 of the
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`’290 patent, we conclude that Apple has established a reasonable likelihood
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`that it would prevail at trial in challenging those claims under 35 U.S.C.
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`§ 103(a) over the combination of Natarajan and Neve.
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`D. Obviousness of Claims 6 and 7 over Mahany
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`Apple contends that claims 6 and 7 of the ’290 patent are unpatentable
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`under 35 U.S.C. § 103(a) as obvious over Mahany. Pet. 51–60. We are
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`persuaded that Apple has established a reasonable likelihood that it would
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`prevail on this ground with respect to each of claims 6 and 7, for the reasons
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`explained below.
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`(1) Mahany
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`Mahany is directed to a “hierarchical communication system . . . in
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`which two wireless local area networks exhibiting substantially different
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`characteristics are employed to link inherently portable or mobile computer
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`devices.” Ex. 1010, Abst. As explained by Apple, Mahany discloses that
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`one of the local area networks “allows for radio communication between a
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`portable computer device and peripheral devices with built-in transceivers
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`utilized by the portable computer device” where communication is
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`“controlled by a reservation access communication protocol.” Id. The
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`devices have a “voltage controlled oscillator (VCO)” that is “stabilized by
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`connecting it in a phase locked loop to a narrowband reference, such as a
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`crystal reference oscillator.” Id. at col. 55, ll. 11–17. The crystal reference
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`oscillator outputs a signal of a fixed or reference frequency FREF, and if the
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`output of the VCO begins to drift out of phase of the reference frequency, a
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`“phase detector” provides a corrective output to adjust the center frequency
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`of the VCO back into phase. Id. at col. 55, ll. 17–33. Mahany also describes
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`“Access Intervals,” each having a “SYNC header” generated by a base
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`device and “[a] timing character for synchronization of device local