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
`
`APPLEINC.,
`Petitioner,
`
`V.
`
`DSS TECHNOLOGY MANAGEMENT,INC.,
`Patent Owner.
`
`Case IPR2015-00373
`Patent 6,128,290
`
`Before JAMESON LEE, MATTHEWR. CLEMENTS,and
`CHARLES J. BOUDREAU,Administrative Patent Judges.
`
`BOUDREAU,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`

`

`IPR2015-00373
`Patent 6,128,290
`
`I. INTRODUCTION
`
`On December4, 2014, Petitioner Apple Inc. (“Apple”) filed a Petition
`(Paper 2,“Pet.”) requesting interpartes review ofclaims 6, 7, 9, and 10 of
`US. 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 (Paper7, “Prelim. Resp.”). We have
`jurisdiction under 35 U.S.C. § 314, whichprovidesthat inter partes review
`
`maynotbeinstituted “unless .
`
`.
`
`. there is a reasonable likelihood that the
`
`petitioner would prevail with respectto at least 1 of the claims challengedin
`the petition.” 35 U.S.C. § 314(a). Upon consideration ofthe Petition,
`Preliminary Response, and the proffered evidence, we conclude that Apple
`
`hasestablished 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, weinstitute inter
`
`partes review ofthose claims.
`
`A. Related Matters
`The parties inform usthat 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 interpartes review, IPR2015-00369.
`
`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
`
`°999 application”). The ’999 application was filed October 14, 1997, as a
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`IPR2015-00373
`Patent 6,128,290
`
`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 networkfor bidirectional wireless
`
`data communications between a host or server microcomputer unit and a
`plurality of peripheral units referredto as personal electronic accessories
`(PEAs). Ex. 1001, col. 1, Il. 11-14, col. 2, ll. 15-18. Among the objects of
`
`the invention is the provision of a data network that requires extremely low
`
`powerconsumption, “particularly for the peripheral units,” avoids .
`
`interference from nearby similar systems, andis of relatively simple and
`inexpensive construction. Jd. at col. 1, ll. 33-34, 39-45. Figure 1 ofthe
`°290 patent, reproducedbelow,is illustrative of the described wireless data
`
`network system.
`
`
`
`FIG. 1
`
`Figure 1 is a block diagram ofa wireless data network system linking
`
`a server microcomputer, referred to as “personaldigital 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.
`
`/d. at col. 2, ll. 42-44,
`
`col. 2, |. 66—col. 3, 1. 15.
`
`According to the ’290 patent, “the server microcomputer unit and the
`
`several peripheral units which are to be linkedare all in close physical
`
`proximity, e.g., within twenty meters, to establish, with very high accuracy,
`
`a commontime base or synchronization.” /d. at col. 1, ll. 50-54. “Using the
`
`commontime base, code sequences are generated which control the
`
`operation of the several transmitters in a low duty cycle pulsed mode of
`
`operation.” /d. at col. 1, ll. 57-59. “The server and peripheral unit
`
`transmitters are energized in low duty cycle pulses at intervals which are
`
`determined by a code sequence whichis timedin relation to the
`
`synchronizing informationinitially transmitted from the server
`microcomputer.” /d. at col. 2, Il. 35-39, “The low duty cycle pulsed
`operation both substantially reduces power consumption andfacilitates the
`
`rejection ofinterfering signals.” Jd. at col. 1, ll. 59-61. “In the intervals
`betweenslots in which a PEA is to transmit or receive,all receive and
`
`transmit circuits are powered down.” Jd. at col. 4, Il. 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 independentclaims challenged, are reproduced
`
`below. Challenged claims 7 and 10 depend from claims6 and 9,
`
`respectively.
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`

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`IPR2015-00373
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`6. A data network system for effecting coordinated operation of a
`plurality of electronic devices, said system comprising:
`a-server microcomputerunit, said server unit including an oscillator
`for establishing a time base;
`
`a plurality of peripheral units which are battery powered and portable
`and whichprovideeither input information from the user or output
`informationto the user;
`
`said server microcomputerincorporating an RF transmitter controlled
`by said oscillator for sending commands and synchronizing information
`to said peripheral units;
`
`said peripheral units each including an RF receiverfor detecting said
`commandsand synchronizing information andincludingalso a local
`oscillator which can be synchronizedto said server unit oscillator using
`said synchronizing information and an RF transmitter controlled by said
`local oscillator for sending input information from the userto said server
`microcomputer;
`
`said server microcomputer including a receiver controlled by said
`server unitoscillator for receiving input information transmitted from
`said peripheralunits;
`said server and peripheral transmitters being energized in low duty
`cycle RF bursts which are timedin 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 microcomputerunit, 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 microcomputerincorporating an RF transmitter controlled
`by said oscillator for sending commandsand synchronizing information
`to said peripheral units, said synchronizing information being carried by
`time spaced beaconscharacteristic of the particular serverunit;
`
`said peripheral units each including an RF receiver for detecting said
`commandsand synchronizing information andincludingalso 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
`peripheralunits also including an RF transmitter operative in a third
`mode for sending input information from the userto 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, 1. 59-col. 13, 1. 16, col. 13, 1. 25—col. 14, 1. 10.
`
`D. Evidence ofRecord
`
`Apple relies on the following references, as well as the Declaration of
`
`Reference
`
`Jack D. Grimes, Ph.D. (Ex. 1008):
`
`
`
`
`
`
`
`
`Thomas J. Barber Jr., BoDYLAN™: A Low-POWER
`
`COMMUNICATION SYSTEM (MLS. thesis, Massachusetts
`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)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1002
`
`1003
`
`1004
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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:
`
`ee
`
`
`
`
`
`
`
`
`
`II. DISCUSSION
`
`|
`A. Claim Interpretation
`In interpartes review proceedings, claims ofan 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).
`Underthis standard, weinterpret claim terms using “the broadest reasonable
`meaning of the wordsin their ordinary usage as they would be understood
`by one of ordinary skill in theart, taking into account whatever
`
`enlightenment by wayof 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 ofordinary
`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 plirase “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 argumentsthat “local
`oscillator” is a term of art, that the term’s usage in portionsofthe
`Specification is consistent with its commonly understood meaning,and that
`the term’s usage in the claimsis “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 proposeany 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”
`
`DSSproposesthat the phrase “energized in low duty cycle RF bursts”
`
`be givenits plain and ordinary meaning,or alternatively, in the event of any
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`IPR2015-00373
`Patent 6,128,290
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`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 and italics omitted).
`
`Weconcludethatit is not necessary for our determination of whether
`
`to institute inter partes review ofclaims 6, 7, 9, and 10 of the ’290 patent to
`
`construe expressly the phrase “energized in low duty cycle RF bursts.” Only
`
`those terms whichare in controversy need to be construed, and only to the
`
`extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`B. Obviousness ofClaims 9 and 10 over Barber
`Apple contendsthat 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 featuresfirst 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. Jd. at 5. 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 9. DSS counters that
`
`claims 9 and 10 are fully supported by the original disclosure of the ’695
`
`application andare, 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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`IPR2015-00373
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`entitled to the ’695 application’s March 6, 1996 filing date or only to the
`
`"999 patent’s October 14, 1997 filing date.
`Asthe 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,
`
`slip op. at 9 (PTAB Jan. 9, 2015) (Paper 22) (quoting Jn re Cronyn, 890 F.2d
`
`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 membersofthe 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
`
`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 anycitation 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).
`
`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 appear to be a hearsay statementto the extentthatit
`would beoffered forits truth (see Fed. R. Evid. 801). Further, even if Apple
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`IPR2015-00373
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`could establish either that the statement is excluded from hearsayorthatan
`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
`
`does not establish when,if ever, the thesis became publicly accessible.
`
`Wemust decide whetherto institute a trial based on “the information
`
`presentedin 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 ofthe °999 application. See Cronyn, 890 F.2d at 1161; cf Inre
`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 ofthe 695 application or only that ofthe
`°999 application, we further concludethatit is not necessary for our
`
`determination of whetherto institute inter partes review of claims 9 and 10
`
`of the ’290 patent to decide that issue.
`
`C. Obviousness ofClaims 6, 7, 9, and 10 over Natarajan and Neve
`
`Apple contendsthat 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 reasonablelikelihoodthat it would prevail on this ground with
`respect to each ofclaims 6, 7, 9, and 10, for the reasons explained below.
`
`1]
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`IPR2015-00373
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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 referredto, inter alia, as battery powered
`computers, hand held or laptop computers, mobile units, andmobile
`stations) as controlled by multiaccess protocols used in wireless
`
`communication. Ex. 1003, col. 1, ll. 7-13, col. 2, 1.32, Abst. Figure 2 of
`
`Natarajan is reproduced below.
`
`MOBILE STATION
`
`Figure 2 is a block diagram ofa 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, 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. /d. at col. 2, ll. 32-39,
`
`51-52, 58-59, 65-67. According to Natarajan:
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`IPR2015-00373
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`The scheduled access multiaccess protocol is implemented to
`_effectively conserve battery powerbysuitable control of the
`‘state of the controller, the transmitter and receiverunits at the
`wireless link adapter by scheduling when the adapter is ina
`normal running mode,or a standby modein which poweris
`conserved.
`
`Id., Abst; see also id. at col. 3, 1. 66—col. 4, 1. 1.
`Natarajan discloses that “[a] desirable solution is one in which the |
`transmitter (or receiver) consumes power only whenit is actively
`
`transmitting a message(or actively receiving a message).” Id. at 4:3-6.
`
`Natarajan further disclosesthat the scheduled multiaccess protocol divides
`time into “fixed-length frames, and framesare dividedinto slots.” /d. 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, ll. 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 powerof the 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 includes a list of mobile users that will be
`
`‘receiving data packets from the base station in the current frame, the orderin
`
`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 station can turn
`
`13
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`IPR2015-00373
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`/d. at col. 4,
`its receiver “OFF”for the duration of the current subframe.
`ll. 64-67. Additionally, the adapter of each receiving mobile unit can
`
`compute exactly whenit should beready to receive packets from the base
`station by adding uptheslots allocated to all receiving units that precedeit,
`
`power“ON”during that time slot to receive its data, and go back to sleep for
`
`the remainder of the subframe.
`
`/d.at col. 4, 1. 67—col. 5, 1. 6.
`
`For inboundtraffic, Natarajan similarly discloses that the base station
`broadcasts a headerthat 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
`
`numberof packets that each user can transmit, each mobile unit can compute
`
`exactly whenit should begin its transmission.
`
`/d. at col. 5, ll. 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 of time whose duration depends on the
`
`numberofslots allocated to it. Jd. at col. 5, Il. 23-29.
`
`(2) Neve
`
`Neveis 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, 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
`
`of the stations to the single radio channel. Jd. at 4:10—-15.
`According to Neve,the stations are synchronized anda cyclically
`
`repeating series of time slots is defined. Jd. at Abst. One timeslot in each
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`IPR2015-00373
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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
`
`synchronization therein. /d. Anothertimeslot is reserved for any slave
`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. Jd. The remaining timeslots are used for
`transmitting address information and data. Id.
`|
`Neve discloses that when data transferis not taking place, the
`
`described devices can enter a lower power consumptionstate. /d. at col. 2,
`li. 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
`
`receivercircuit indicative of the need to receive data. Id. 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 therest
`ofthe receiving circuit is energized only when its 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 and for the
`synchronization time slot, thereby enabling it to maintain synchronization
`with low power consumption. Jd. at col. 4, Il. 43-48. Neve similarly
`
`discloses that the interface circuit is arranged to energize the transmitter
`circuit only whentransmission is required. Id. at col. 2, Il. 45-47.
`(3) Analysis
`Apple contends that Natarajan disclosesall limitations of claims6, 7,
`9, and 10, with the exception of explicit disclosure of the server unit sending
`
`15
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`IPR2015-00373
`Patent 6,128,290
`“synchronizing information” to the mobile units, as recited in claims 6 and
`9, and “said synchronizing information being carried by time spaced
`
`beacons,”as recited in claim 9. Pet. 30-51. Apple further contends that
`
`Neve discloses those elements not disclosed explicitly by Natarajan. Id.
`
`Uponreviewofthe Petition, we are persuaded that Apple has shown a
`reasonable likelihood that it would prevail in establishing the unpatentability
`
`of claims 6, 7, 9, and 10 on this ground.
`
`DSS makestwoprincipal arguments regarding Natarajan and Nevein
`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 inlow duty cycle RF bursts.” Jd. DSS contendsthat “Natarajan
`
`... Says nothing about the server transmitter turning itself OFF and
`scheduling to wake upat an appropriate time to transmit data to a designated
`
`mobile unit” and that “Natarajan neither teaches nor suggests that the
`
`operation ofthe server unit provides any powersavings.” Jd. at 23.
`
`Based on the record before us, we are persuadedthat the disclosure of
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`Natarajan pertaining to a scheduled multi-access protocol in which timeis
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`divided into fixed-length frames, along with Natarajan’s description of
`frames being divided into slots and multiple subframes,is sufficientto
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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. Claims6, 7, 9, and 10 do notrecite 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
`or that the operation of the server unit must provide any “powersavings”;
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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
`example, that “a scheduled multi-access protocolis used in whichtimeis
`dividedinto fixed-length frames”andthat “‘frame[s] [are] divided into
`multiple subframes,” includingdifferent periods for broadcast of packets
`from base station to mobile units (outboundtraffic) and for transferoftraffic
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`from mobile units to base station (inboundtraffic) (see, e.g., Ex. 1003, col.
`4, ll. 20-22, 28-38), we are persuadedfor purposesofthis Decisionthat
`Natarajan conveysthat 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.
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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 whenit is not actively transmitting any data to the peripheral
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`units” and “[f]orthis 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 Nevestating “[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 “[aJn idle wordis transmitted ifno other transmissionis
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`needed.” Id. (quoting Neve 4:48—50, 7:17—19 (emphasis added by DSS)).
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`Based onthe record before us, we are not persuaded that Neve teaches
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`awayfrom the server transmitter being energized in low duty cycle RF
`bursts. When the sentences quoted by DSSareread in the contextofthe full
`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 “onestation
`99 66
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`designated the masterstation,”
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`“allows stations to remain in an inactive
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`condition when they are not communicating.” Ex. 1004, col. 3, Il. 9-20.
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`Nevealso 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 wordis transmitted. [fit 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 performedas previously described or
`the master station takes part in a communication operation or
`the master station monitors the channel ifthe 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).
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`Because, on this record, Apple has identified sufficient evidenceto
`support its contention that the combination of Natarajan and Neve would
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`have rendered obviousthe 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 prevailat 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 ofClaims 6 and 7 over Mahany
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`Apple contendsthat claims 6 and 7 of the ’290 patent are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Mahany. Pet. 51-60. We are
`|
`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.
`
`(1) Mahany
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`Mahanyis 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, Mahanydiscloses 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
`utilized by the portable computer device” where communicationis
`“controlled by a reservation access communication protocol.” Jd. The
`devices have a “voltage controlled oscillator (VCO)”that is “stabilized by
`connecting it in a phase locked loop to a narrowbandreference, such as a
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`crystal reference oscillator.” Jd. at col. 55, ll. 11-17. The crystal reference
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`oscillator outputs a signal of a fixed or reference frequency Freer, andif the
`output of the VCO begins to drift out of phase ofthe reference frequency, a
`“phase detector” provides a corrective output to adjust the center frequency
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`of the VCO backinto phase.
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`/d. at col. 55, Il. 17-33. Mahany also describes
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`“AccessIntervals,” each having a “SYNC header” generated by a base
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`device and “[a] timing character for synchronization of device local clocks
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`to the NET clock contained within the Control Point device,” that are used to
`synchronize communications betweenthe mobile computing devices and
`peripheral devices. Jd. at col. 15, Il. 55-67, col. 40, Hl. 26~28.
`
`(2) Analysis
`Apple presents its positions on why Mahanyrenders obviouseach of
`claims 6 and 7, at pages 52-60 ofthe Petition. Focusing specifically on the
`words “said server and peripheral transmitters are energized in low duty
`cycle”recited in claim 6, DSS contends that Apple’s challenge based on
`Mahanydoesnotsatisfy the legal standard for obviousness established in
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`KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). Prelim. Resp.
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`25. DSS argues that Apple provides no reasoning in support its conclusion
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`that Mahany disclosesthe recited limitation. Instead, according to DSS,
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`Apple:
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`quotes a single sentence of Mahany: “/a/ sleeping device with
`no transmission requirements may sleep for eight 20 ms access
`intervals, and wake only for the SYNC and Reservation Poll...
`to monitor pending messagesbeforereturningto the sleepstate,
`for a duty cycle of less than 5%” [and] does not articulate any
`reasoning as to why this sentence, which discloses a single
`sleeping device, establishes that Mahany teaches that both the
`server and peripheral transmitters are energized in low duty
`cycles.
`Id (citing Pet. 59 (quoting Ex. 1010,col. 35, Il. 48-52)) (emphases added by
`DSS). DSS concludes Apple’s chall