Trials@uspto.gov
`571-272-7822
`
`Paper No. 9
`Entered: June 25, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`V.
`
`DSS TECHNOLOGY MANAGEMENT,INC.,
`Patent Owner.
`
`Case IPR2015-00369
`Patent 6,128,290
`
`Before JAMESON LEE, MATTHEWR. CLEMENTS, and
`CHARLESJ. BOUDREAU,Administrative Patent Judges.
`BOUDREAU, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`571-272-7822
`
`Paper No. 9
`Entered: June 25, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`V.
`
`DSS TECHNOLOGY MANAGEMENT,INC.,
`Patent Owner.
`
`Case IPR2015-00369
`Patent 6,128,290
`
`Before JAMESON LEE, MATTHEWR. CLEMENTS, and
`CHARLESJ. BOUDREAU,Administrative Patent Judges.
`BOUDREAU, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2015-00369
`Patent 6,128,290
`
`I. INTRODUCTION
`
`On December4, 2014, Petitioner Apple Inc. (“Apple”) filed a Petition
`
`(Paper1, “Pet.”’) requesting inter partes review of claims 14 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 (Paper8, “Prelim. Resp.”). We havejurisdiction
`under 35 U.S.C. § 314, which provides that interpartes review may not be
`- instituted “unless. .
`. there is a reasonable likelihoodthatthe petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a). Upon consideration ofthe Petition,
`Preliminary Response, and the proffered evidence, we concludethat Apple
`has established a reasonable likelihood that it would prevail in challenging
`
`the patentability of claims 1-4 of the ’290 patent under 35 U.S.C. § 103(a)
`on one of the grounds presented. Accordingly, weinstitute inter partes
`
`review of those claims.
`
`A. Related Matters
`
`Theparties inform us that the ’290 patentis the subject of twodistrict
`court actions:' DSS Technology Management, Inc. v. Apple, Inc, No. 5:14-
`cv-05330-LHK (N.D. Cal.), and DSS Technology Management, Inc. v.
`Lenovo (United States), Inc., No. 6:14-cv-00525-JDL (E.D. Tex.). Pet. 3-4;
`Paper 4, 2. Additionally, claims 6, 7, 9, and 10 of the ’290 patent are the
`subject of a concurrently filed petition for inter partes review, IPR2015-
`
`00373.
`
`_B. The ’290 Patent (Ex. 1001)
`The ’290 patent, titled “Personal Data Network,” issued October3,
`2000, from U.S. Patent Application No. 08/949,999 (Ex. 1005, 22-62,“the
`
`
`
`
`
`IPR2015-00369
`Patent 6,128,290
`
`°999 application”). The 999 application wasfiled October 14, 1997, as a
`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 bidirectionalwireless
`data communications betweena host or server microcomputerunit and a
`
`plurality of peripheral units referred to as personal electronic accessories
`
`(PEAs). Ex. 1001, col. 1, Il. 11-14, col. 2, ll. 15-18. Amongthe 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,andis of relatively simple and
`
`inexpensive construction. /d. at col. 1, ll. 33-34, 39-45. Figure 1 of the
`
`*290 patent, reproducedbelow,is illustrative of the described wireless data
`
`network system.
`
`SENSOR33.
`AF UNKS 38
`
`PEA
`MODEM
`
`ACTUATOR
`
`*oT30
`
`3()
`
`FIG. 1
`
`
`
`IPR2015-00369
`Patent 6,128,290
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`Figure | is a block diagram ofa wireless data network system linking
`
`a server microcomputer,referred to as “personal digital assistant (PDA) 11,”
`
`with a plurality of peripheral units, or PEAs, 21—29. Id. at col. 2, ll. 42-44,
`
`col. 2, 1. 66—col. 3, 1. 15.
`
`According to the ’290 patent, “the server microcomputerunit 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 commontime baseor synchronization.” Jd. at col. 1, ll. 50-54. “Using the
`
`commontime base, code sequencesare generated which control the
`
`operation of the several transmitters in a low duty cycle pulsed mode of
`
`operation.” Id. at col. 1, Il. 57-59. “The server and peripheral unit
`
`transmitters are energized in low duty cycle pulsesat intervals which are
`determined by a code sequence whichis timedin relation to the
`synchronizing informationinitially transmitted from the server
`
`microcomputer.” Jd. at col. 2, ll. 35-39. “The low duty cycle pulsed
`
`operation both substantially reduces power consumptionandfacilitates the
`
`rejection ofinterfering signals.” Jd. at col. 1, ll. 59-61. “In the intervals
`
`between slots in which a PEAis to transmit or receive, all receive and
`
`transmit circuits are powered down.” Jd. at col. 4, Il. 6-8.
`
`C. Illustrative Claim
`Asnoted above, Apple challenges claims 1-4 of the ’290 patent.
`Claim 1, the sole independentclaim challenged,is reproduced below.
`Challenged claims 2—4 dependdirectly or indirectly from claim 1.
`1. A data network system for effecting coordinated operation of a
`plurality of electronic devices, said system comprising:
`a server microcomputerunit;
`
`
`
`IPR2015-00369
`Patent 6,128,290
`
`a plurality of peripheral units which are battery powered and portable,
`which provideeither input information from the user or output
`information to the user, and which are adapted to operate within short
`range of said server unit;
`
`said server microcomputer incorporating an RF transmitter for
`sending commandsand synchronizing information to said peripheral
`units;
`said peripheral units each including an RF receiverfor detecting said
`commandsand synchronizing information and including also an RF
`transmitter for sending input information from the userto said server
`microcomputer;
`
`said server microcomputerincluding a receiver for receiving input
`information transmitted from said peripheral units;
`said server and peripheral transmitters being energized in low duty
`cycle RF bursts at intervals determined by a code sequence whichis
`timedin relation to said synchronizing information.
`
`Ex. 1001, col. 11, 1. 61-col. 12, 1. 18.
`
`D. Evidence ofRecord
`
`Apple relies on the following references, as well as the Declaration of
`Jack D. Grimes, Ph.D. (Ex. 1008):
`
`Thomas J. BarberJr., BoDYLAN™: A Low-POWER
`COMMUNICATION SYSTEM (M.S. thesis, Massachusetts
`
`1002
`
`Institute of Technology) (“Barber”) Natarajan (U.S. Patent No. 5,241,542; issued Aug. 31, 1993)
`
`Neve (U.S. Patent No. 4,887,266; issued Dec. 12, 1989)
`
`1003
`
`1004
`
`
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`IPR2015-00369
`Patent 6,128,290
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`E. Asserted Grounds of Unpatentability
`
`Apple challenges the patentability of the challenged claims on the
`
`following two grounds:
`
`
`
`
`
`Reference(s) .|Basis|Claims Challenged
`
`
`
`
`Hf. DISCUSSION
`
`A. Claim Interpretation
`In interpartes review proceedings, claims ofan unexpired patent are
`given their broadest reasonable interpretation in light ofthe specification of
`the patent in which they appear. 37 C-F.R. § 42.100(b); OfficePatentTrial
`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).
`
`°
`
`Underthis standard, we interpret claim terms using “the broadest reasonable -
`meaning ofthe wordsin their ordinary usage as they would be understood
`by one ofordinary 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
`meaningis the meaningthat the term would have to a personofordinary
`skill in the art in question.”’) (internal quotation marks omitted). A patentee,
`however, may rebut this presumption by acting as his ownlexicographer,
`providing a definition of the term in the specification with “reasonable
`
`
`
`
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`IPR2015-00369
`Patent 6,128,290
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`clarity, deliberateness,and precision.”In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994).
`
`Apple asks us to construe two phrases: “within short range of said
`serverunit,” as recited in claim 1, and “code sequence,”as recited in claims
`
`1 and 3. Pet. 9-11. DSS responds to Apple’s proposed construction of only
`
`the first of these phrases and additionally asks us to construe “energized in
`low duty cycle RF bursts,”also recited in claim 1. Prelim. Resp. 18-21.
`(1) “within short range ofsaid server unit”
`Outside of claim 1, the phrase “short range” appears only in the
`
`|
`
`Abstract of the ’290 patent, where it is stated that the peripheral units are
`located “within short range ofthe server unit, e.g. within 20 meters.” Apple
`argues that “[w]hile the ’290 patent uses ‘within 20 meters’ as an example
`
`(by using ‘e.g.’), this is the only indication in the ’290 patent as to what the
`
`newly added term ‘short range’ means.” Pet. 9. Moreover, according to
`Apple, “the term ‘short range’ has no commonly accepted meaningin the
`
`art,” and a person ofordinary skill in the art “would not have understoodthis
`
`term to have a meaning outside of the guidance provided bythe
`specification.” Id. Accordingly, Apple proposesthat the broadest
`
`reasonable interpretation of “within short range ofsaid server unit”is
`
`“within 20 meters of said server unit.” Jd. at 9-10.
`
`DSScountersthat “[t]he phrase ‘adapted to operate withina[sic]
`
`short range of[said server unit]’ is defined in the specification of the ’290
`Patentas a distance that does not meaningfully affect the radio frequency
`transmission time” and proposes that the phrase instead be construed as |
`“adapted to operate within a range wherethe transmission transit time does
`
`not meaningfully affect the accuracy of synchronization.” Prelim. Resp. 18—
`
`
`
`
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`IPR2015-00369
`Patent 6,128,290
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`19 (citing Ex. 1001, col. 1, 11. 50-56) (third alteration in original) (boldface
`
`and italics omitted). According to DSS:
`
`Petitioner’s proposed construction is based on a non-
`limiting example provided in the ’290 specification. Petitioner
`contends that short range has no common meaningintheart,
`and thus, reasonsthat “short range” should be construed in view
`of the specification. See Petition at pg. 9. Petitioner further
`states that “[t]he ’290 patent is clear that short range is ‘close
`physical proximity, e.g., within twenty meters.’” Petition at pg.
`29 (citing [Ex.] 1001, ’290 patent at 1:50-56). Petitioner fails
`to disclose the complete passage relating to “close physical
`proximity” on which it relies in defining “short range” as
`“within twenty meters.” The complete passageis as follows:
`
`The data network of the present invention utilizes
`the fact that the server microcomputer unit and the
`several peripheral units which are linked are all in
`close physical proximity,
`e.g., within twenty
`meters, to_establish, with very high accuracy, a
`common time base or synchronization. The short
`distances involved [sic] means that accuracy of the
`synchronization is not appreciably affected by
`transit time delays.
`
`See [Ex.] 1001,
`added).
`
`°290 Patent, at 1:50—56 (emphasis
`
`The term “e.g.” means “for example.” [Ex.] 2002. The
`use of the terms “for example”specifically signifies the broader
`scope than encompassed by the example. Any distance, so long
`as “the accuracy of the synchronization is not appreciably
`affected by transit time delays” is within the operable range of
`the invention. Lacking clear disclaimer, the phrase “within a
`short range” should be given the broader definition, which
`complies with the BRI standard, provided by the inventor and
`proposed here by the Patent Owner.
`Id. at 19-20.
`
`
`
`IPR2015-00369
`Patent 6,128,290
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`Weare unable to locate the purported quotation from page 29 of the
`
`Petition cited by DSS. Regardless, the passage identified by Apple from the
`Abstract of the ’290 patent, which actually uses the phrase “within short
`range,” is more directly probative ofthe construction of “within short range
`of said server unit” than is the passage quoted by DSS from column 1, lines
`50-56, of the ’290 patent, which instead relates to the phrase “close physical
`
`proximity.” Claim 1 does notrecite “close physical proximity.” Given,
`
`however,that the ’290 patent also associates the phrase “close physical
`
`proximity” to an exemplary range of “within twenty meters” (Ex. 1001, col.
`
`1, Il. 50-53), similar to the phrase “within short range” (Ex. 1001, Abstract),
`there is atleast an appearancethat “‘within short range” and “close physical
`proximity” are used interchangeably. The associationof“close physical
`proximity”to “within twenty meters” also supports construing “within short
`
`range” as meaning “within twenty meters.”
`Asstated above, the phrases “within 20 meters”and “within twenty
`
`meters” are preceded in both the Abstract and column 1 of the ’290 patent
`
`with “e.g.” (see Ex. 1001, Abst., col. 1, 1.53). We accordingly look
`elsewhere in the Specification for additional indication of what “within short
`
`range” means. Any description related to the benefit achieved by the
`
`“within short range” feature is apposite. In that regard, the Specification,at
`column 1, lines 54—56, states: “The short distances involved means that
`accuracy of synchronization is not appreciably affected by transit time
`delays.” On this record, we construe “within short range” to mean “within a
`
`range in whichthe accuracy of synchronization is not appreciably affected
`
`by transit time delays, including at least the range of within 20 meters.”
`
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`IPR2015-00369
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`(2) “code sequence” and “energized in low duty cycle RF bursts”
`
`Apple contendsthat “[a] ‘code sequence’ is not a term of art and
`
`therefore must be construed in view of the ’290 patent specification.” Pet.
`
`10. Citing three instances of the phrase “code sequence”in the Specification
`of the ’290 patent, Apple proposes that the broadest reasonable interpretation
`of that phrase in view ofthe Specification is “a series of values, where each
`value in the series represents a time slot where a unit’s transmitter is
`energized or a time slot wherea unit’s transmitter is depowered.” Jd. at 10—
`
`11 (citing Ex. 1001, col. 1, Il. 57-59, col. 2, Il. 35-39, col. 3, Il. 43-44).
`
`DSS neither responds to Apple’s proposal noroffers any alternative
`
`interpretation.
`
`~
`
`DSS proposesthat the phrase “energized in low duty cycle RF bursts”
`be givenits plain and ordinary meaning,or alternatively, in the event of any
`
`ambiguity, that it should be construed as “a pulsed operation that
`
`substantially reduces power consumption andfacilitates the rejection of
`interfering signals.” Prelim. Resp. 20 (boldface anditalics omitted).
`Weconcludethat it is not necessary for our determination of whether
`
`to institute inter partes review of claims 1-4 of the ’290 patent to construe
`
`expressly the phrases “code sequence”and “energized in low duty cycle RF
`bursts.” Only those terms which are in controversy need to be construed,
`
`and only to the extent necessary to resolve the controversy. Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir, 1999).
`B. Obviousness ofClaims 1—4 over Barber
`Apple contends that claims 1-4 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. 12, 15, 18-33..
`
`10
`
`
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`IPR2015-00369
`Patent 6,128,290
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`According to Apple, claims 1—4 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.
`
`/d. at 7. Because April 11, 1996,
`
`was more than one yearprior to October 14, 1997, Apple asserts that Barber
`
`is prior art underat least 35 U.S.C. § 102(b). Jd. at 12. DSS counters that
`
`claims 1-4 are fully supported bythe original disclosure of the ’695
`| application and are, therefore, entitled to the benefit ofthe March 6, 1996
`filing date ofthe °695 application. Prelim. Resp. 5.
`Forthe reasons explained below, weare not persuaded that Apple has
`
`established a reasonable likelihood that it would prevail on this ground with
`
`respect to each of claims 1-4, regardless of whether claims 1-4 are entitled
`to the °695 application’s March6, 1996filing date or only to the 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 thecritical
`date.” Actavis, Inc. v. Research Corp. Techs., Inc., Case IPR2014-01126,
`slip op. at 9 (PTAB Jan.9, 2015) (Paper 22) (quoting In re Cronyn, 890 F.2d
`1158, 1160 (Fed. Cir. 1989). Whethera 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 madeavailable to the
`
`extent that persons interested and ordinarily skilled in the subject matter or
`
`art, exercising reasonable diligence, can locate it. Jd. Having reviewed
`
`1]
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`
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`IPR2015-00369
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`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 publishedat least as early as April 11, 1996.” Pet. 12. 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).
`
`Weacknowledgethat the cover page of Barber includes a stamp
`reading “ARCHIVES MASSACHUSETTSINSTITUTE OF
`
`TECHNOLOGYAPR 11 1996 LIBRARIES.” Ex. 1002, 1. That stamped
`
`date, however, would appearto be a hearsay statementto the extentthatit
`
`would be offered for its truth (see Fed. R. Evid. 801). Further, even if Apple
`
`could establish eitherthat the statement is excluded from hearsay or that an
`exception to the rule against hearsay should apply, such that we would admit
`
`‘the stamped date as evidence of whenthethesis was archived, the stamp
`
`does not establish when,if ever, the thesis became publicly accessible.
`
`We must decide whetherto 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 usto qualify Barber as
`
`._ prior art. Apple has submitted no evidence, for example, to establish that the
`
`thesis was indexed, cataloged, and shelvedin the university library prior to
`the filing of the 999 application. See Cronyn, 890 F.2d at 1161; cf Inre
`Hail, 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 1-4 of the ’290 patent under 35 U.S.C. § 103(a) over
`
`Barber. Because our conclusion does not turn on whether claims 1—4 are
`
`
`
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`IPR2015-00369
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`entitled to the priority date of the ’695 application or only that of the 7999
`
`application, we further concludethatit is not necessary for our
`
`determination of whether to institute inter partes review of claims 1-4 ofthe
`
`°290 patent to decidethat issue.
`
`C. Obviousness ofClaims 1—4 over Natarajan and Neve
`
`Apple contendsthat claims 1-4 of the ’290 patent are unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over the combination ofNatarajan and
`Neve. Pet. 33, 42-59. Weare persuaded that Apple has established a
`
`reasonable likelihood that it would prevail on this ground with respect to
`
`each of claims 1-4, for the reasons explained below.
`(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, Il. 7-13, col. 2, 1.32, Abst. Figure 2 of
`Natarajan is reproduced below.
`
`
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`IPR2015-00369
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`MOBILE STATION
`
`10,32,14,0R16
`
`SOFTWARE
`
`TRANSCEIVER -
`2
`
`FIG. 2
`
`BASE STATION
`
`26
`
`
`44
`
`33
`
`TRANSCEIVER —_.
`ADAPTERS
`
`~
`
`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 basestation. /d. at col. 1, 1. 67—col. 2,
`
`1.3. 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,
`51-52, 58-59, 65-67. According to Natarajan:
`
`The scheduled access multiaccess protocol is implemented to
`effectively conserve battery power by suitable control of the
`state of the controller, the transmitter and receiver units at the
`wireless link adapter by scheduling whenthe adapteris in a
`normal running mode,or a standby modein which poweris
`conserved.
`
`Id., Abst; see also id. at col. 3, 1. 66—col. 4, |. 1.
`
`Natarajan discloses that “[a] desirable solution is one in which the
`transmitter (or receiver) consumes poweronly whenitis actively
`
`transmitting a message(or actively receiving a message).” Id. at 4:3-6.
`
`14
`
`
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`IPR2015-00369
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`Natarajan further discloses that the scheduled multiaccess protocol divides
`
`time into “fixed-length frames, and frames are dividedinto slots.” Jd. at
`
`col. 4, ll. 20-23. The frames are divided into subframes for transmission of
`data from the base station to mobile units (outboundtraffic) as well as
`transmission of data from mobile units to the base station (inboundtraffic).
`
`Id. at col. 4, Il. 27-38. According to Natarajan, at least one slot is assigned
`
`to each mobile computer designated to communicate with the basestation.
`Id. at col. 10, ll. 26-29. The battery power ofthe wireless link adapter for a
`
`given mobile computeris turned on to full power during the at least one
`assigned slot, and the battery powerof the wireless link adapteris
`substantially reduced during the remaining timeslots. Jd. at col. 10, Il. 29—
`
`37.
`
`With respect to outboundtraffic, Natarajan discloses that the base
`
`station broadcasts a headerthat includesa list of mobile users that will be
`receiving data packets from the basestation in the current frame, the order in
`which the mobile users will receive the data packets, and the bandwidth
`
`allocated to each user. /d. at col. 4, ll. 45-53. According to Natarajan, a
`
`mobile unit that is not included in the header from the base stationcan turn
`
`its receiver “OFF” for the duration of the current subframe. /d. at col. 4,
`
`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 uptheslots allocatedto all receiving units that precede it,
`power“ON”during that time slot to receive its data, and go backto sleep for
`
`the remainderof the subframe. /d. at col. 4, 1. 67-col. 5, |. 6.
`
`For inboundtraffic, Natarajan similarly discloses that the base station
`broadcasts a header that includes an ordered list of users that will be allowed
`
`
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`IPR2015-00369
`Patent 6,128,290
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`to transmit packets to the basestation in the current frame and the bandwidth
`
`allocated to each.
`
`/d. at col. 5, Il. 9-19. Using the information regarding the
`
`numberof packets that each user can transmit, each mobile unit can compute
`
`exactly whenit should begin its transmission.
`
`/d. at col. 5, Il. 20-22. Once
`
`each mobile station computesits 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 oftime whose duration dependson the
`numberofslots allocated to it. Jd. at.col. 5, ll. 23-29.
`
`(2) Neve
`-
`Neveis direéted toa communication system able to provide multiple
`path communication betweena plurality of stations operating on a single
`
`channel. Ex. 1004, Abst. Neve discloses that one station, whichis
`
`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
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`of the stations to the single radio channel.
`
`/d. at 4:10—-15.
`
`According to Neve,the stations are synchronized and a cyclically
`
`repeating series of time slots is defined. Jd. at Abst. One timeslot in each"
`
`cycle is reserved for the transmission of synchronization information by the
`
`master station for reception by the slave stations and for maintaining
`
`synchronization therein. Jd. Another timeslot is reserved for any slave
`
`station to transmit a message indicating that it needs to communicate to
`
`anotherstation, such indication preferably being by transmitting its own pre-
`
`assigned address code. Jd. The remaining time slots are used for
`transmitting address information and data. Id.
`
`16
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`
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`IPR2015-00369
`Patent 6,128,290
`
`Nevediscloses that when datatransfer is not taking place, the
`
`described devices can enter a lower power consumptionstate. /d. at col. 2,
`Il. 13-16. The system is designed automatically to re-enter the data transfer
`condition wheneither a signal is received from the device indicative of the
`
`need to transmit data or a predetermined codesignal is received by the
`
`receiver Circuit indicative of the need to receive data. Jd. at col. 2,Il. 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 whenits assigned timeslot occurs.
`Id. at col. 2, ll. 39-41. More particularly, the receiver circuit includes a low
`
`‘powertiming circuit that operates to energize the rest of the receiver circuit
`
`only for the time slot in which its address may occur andfor the
`
`synchronization timeslot, thereby enabling it to maintain synchronization
`
`with low power consumption. Jd. at col. 4, I]. 43-48. Neve similarly
`
`discloses that the interface circuit is arranged to energize the transmitter
`
`circuit only when transmission is required. Jd. at col. 2, ll. 45-47:
`
`(3) Analysis
`Apple contends that Natarajan disclosesall limitations of claims 1-4,
`with the exception of explicit disclosure of the server unit sending
`
`“synchronizing information” to the mobile units, as recited in claim 1, and
`
`“synchronizing beacons,” as recited in claim 4. Pet. 42-59. Apple further
`
`contends that Neve discloses those elements not disclosed explicitly by
`
`Natarajan. Jd. Upon review of the Petition, we are persuaded that Apple has
`
`shown a reasonablelikelihood that it would prevail in establishing the
`
`unpatentability of claims 1-4 on this ground.
`
`17
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`IPR2015-00369
`Patent 6,128,290
`
`DSS makestwoprincipal arguments regarding Natarajan and Neve in
`
`the Preliminary Response. First, DSS argues that Natarajan does not
`
`disclose that the server transmitter is energized in low duty cycle RF bursts.
`
`Prelim. Resp. 21. According to DSS, Apple “profusely quotes disclosures of
`
`Natarajan and Neveteaching that the transmitters of the peripheral units
`
`(i.e. mobile units, portable units, slave stations) are energized only when
`
`they are actively transmitting data,” but “does not provide any objective
`
`evidence that could reasonably lead to a conclusion that these references also
`
`disclose that the transmitter of the server unit (i.e. base, hub, master) is
`| energized in low duty cycle RF bursts.” Jd. at 22. DSS doesnot dispute
`that, during time slots in which Natarajan’s mobile units are designated to
`
`receive a message, the basestation’s (1.e., the server unit’s) transmitter is
`energized to transmit data to the mobile units. Jd. at 23 (quoting Pet. 54).
`DSScontends, however, that the server transmitter’s being energized during
`the time slots at which the mobile units are scheduledto receive data “does
`
`not logically lead to a conclusion that the server transmitter is powered OFF
`during the remaining time slots when noactive transmission betweenthe
`server and peripheral units occurs”(id. ).
`Based on the record before us, weare persuadedthat the disclosure of
`Natarajan pertaining to a scheduled multi-access protocol in whichtimeis
`
`divided into fixed-length frames, along with Natarajan’s description of
`
`frames being dividedinto slots and multiple subframes, is sufficient to
`
`demonstrate a reasonablelikelihood that Natarajan discloses “said server and
`
`peripheral transmitters being energized in low duty cycle RF bursts,” as
`
`recited in claim 1. Claims 1-4 do notrecite any requirement that the server
`transmitter must be “powered OFF”during the time slots when noactive
`
`18
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`IPR2015-00369
`Patent 6,128,290
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`transmission betweenthe server and peripheral units occurs; nor is such
`
`required bythe plain and ordinary meaning ofthe claim phrase “energized in
`
`low duty cycle RF bursts.” Regardless, by disclosing, for example, that “a
`scheduled multi-access protocolis used in whichtimeis divided into fixed-
`length frames” andthat “frame[s] {are] divided into multiple subframes,”
`including different periods for broadcast ofpackets from base station to
`mobile units (outboundtraffic) and for transfer of traffic from mobile units
`
`to base station (inboundtraffic) (see, e.g., Ex. 1003, col. 4, Il. 20-22, 28-
`
`38), we are persuaded for purposesofthis Decision that Natarajan conveys
`
`that both the receivers and the transmitters in the base station, as well as in
`
`the mobile units, are energized only in low duty cycle RF bursts.
`
`Second, DSSargues that Neve teaches away from the server
`
`transmitter being energized in low duty cycle RF bursts. Prelim. Resp. 24.
`
`According to DSS, “Neve explicitly discloses that the server unit remains
`
`energized even whenitis not actively transmitting any data to the peripheral
`units” and “flor this reason, Neve notonly lacks disclosure of‘said server
`and peripheral transmitter [sic] being energized in low duty cycle RF
`bursts,” but in fact, teaches awayfrom this limitation of claim 1.” Jd. at 24—
`25. In support of that contention, DSScites portions ofNevestating “[i]f no
`data is currently required to be transmitted, the masterstation transmits idle
`words”and “[a]n idle word is transmitted ifno other transmission is
`
`needed.” Id. at 24 (quoting Neve 4:48—50, 7:17—19 (emphasis added by
`
`DSS)).
`
`Based on the record before us, we are not persuaded that Neve teaches
`away from the servertransmitter being energized in low duty cycle RF
`bursts. When the sentences quoted by DSS are read in the context of the full
`
`19
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`IPR2015-00369
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`-
`
`disclosure of Neve, those sentences do not suggest continuous transmission
`
`from the masterstation, but instead transmission of idle words in the event
`that there is no data required to be transmitted in the timeslots specifically
`allocated for transmission by the server. Neve explicitly discloses that the
`
`described synchronous communication system, which includes “onestation
`93 66
`
`designated the masterstation,”
`
`“‘allows stations to remain in an inactive
`
`condition when they are not communicating.” Ex. 1004,col. 3, Il. 9-20.
`
`Nevealso discloses that the master station performs different functions
`
`during different time slots, only certain of which involve transmission:
`
`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 wordis 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 channelif the time slot has been
`allocated to communication between twoslavestations. If the
`time slot is unassigned the idle wordis transmitted.
`
`Ex. 1004, col. 7, Il. 27-42 (emphases added).
`
`Because, on this record, Apple has identified sufficient evidence to
`
`support its contention that the combination of Natarajan and Neve would
`
`have rendered obvious the subject matter of claims 1-4 of the ’290 patent,
`
`we conclude that Apple has established a reasonable likelihood that it would
`
`prevail at trial in challenging those claims under 35 U.S.C.§ 103(a) over the
`
`combination of Natarajan and Neve.
`
`20
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`IPR2015-00369
`Patent 6,128,290
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`UI. CONCLUSION
`
`Weconclude that Apple has shown a reasonab
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