Trials@uspto.gov
`571-272-7822
`
`Paper No.39
`Entered: June 17, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`Vv.
`
`DSS TECHNOLOGY MANAGEMENT,INC.,
`Patent Owner.
`
`Case IPR2015-00373
`Patent 6,128,290
`
`Before JAMESON LEE, MATTHEW R. CLEMENTS, and
`CHARLESJ. BOUDREAU,Administrative Patent Judges.
`
`BOUDREAU,Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 CFR. § 42.73
`
`
`571-272-7822
`
`Paper No.39
`Entered: June 17, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`Vv.
`
`DSS TECHNOLOGY MANAGEMENT,INC.,
`Patent Owner.
`
`Case IPR2015-00373
`Patent 6,128,290
`
`Before JAMESON LEE, MATTHEW R. CLEMENTS, and
`CHARLESJ. BOUDREAU,Administrative Patent Judges.
`
`BOUDREAU,Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 CFR. § 42.73
`
`
`
`IPR2015-00373
`Patent 6,128,290
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`A. Background
`
`I. INTRODUCTION
`
`Petitioner Apple Inc. (“Apple”) filed a Petition (Paper 2, “Pet.”) to
`institute interpartes review ofclaims6, 7, 9, and 10 ofU.S. Patent No.
`6,128,290 to Carvey (Ex. 1001, “the ’290 patent”). Patent Owner DSS
`
`Technology Management, Inc. (“DSS”) filed a Preliminary Response
`(Paper7, “Prelim. Resp.”). On June 25, 2015, weinstituted an inter partes
`review ofclaims 6, 7, 9, and 10 on two ofthree grounds of unpatentability
`
`presented in the Petition (Paper 8, “Dec.”).
`
`Afterinstitution oftrial, DSS filed a Patent Owner Response
`
`(Paper 15, “PO Resp.”). DSS also filed a Notice of Filing of Statutory
`Disclaimer, notifying us of a statutory disclaimer of claims 6 and 7 of the
`’290 patent, pursuant to 37 C.F.R. § 1.321(a), that DSS hadfiled on
`
`October 5, 2015 (Paper 18). Subsequently, Apple filed a Reply to DSS’s
`
`Patent Owner Response(Paper 23, “Reply”). An oral hearing was held on
`March 15, 2016, andatranscript of the hearing is includedin the record
`
`.
`(Paper 38, “Tr.”).
`Wehave jurisdiction under 35 U.S.C. § 6(c). This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`Based on the.record before us, and for the reasonsthat follow, we
`
`determine that Apple has demonstrated, by a preponderanceof the evidence,
`that each of claims 9 and 10 of the ’290 patent is unpatentable. Further,
`
`because we treat DSS’s statutory disclaimer of claims 6 and 7 as a request
`for adverse judgmentas those claims (see 37 C.F.R. § 42.73(b); Paper 20),
`we additionally enter judgment against DSS with respect to claims 6 and 7
`
`of the ’290 patent.
`
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`Patent 6,128,290
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`B. Related Matters
`
`The ’290 patent has been 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; Paper5, 2.
`
`IPR2015-00369 also involves claims of the ’290 patent and was argued
`
`together with this proceeding at the March 15, 2016, oral argument.
`
`C.
`
`the instituted Grounds
`
`Weinstituted a trial as to claims 6, 7, 9, and 10 of the ’290 patent
`
`under 35 U.S.C. § 103(a) as unpatentable over U.S. Patent No. 5,241,542 to
`Natarajan et al. (Ex. 1003, “Natarajan”) and U.S. Patent No. 4,887,266 to
`Neveet al. (Ex. 1004, “Neve”); and also as to claims 6 and 7 under § 103
`
`over U.S. Patent No. 5,696,903 to Mahany. Dec. 11-21. As noted in
`
`Section I.A., supra, DSS subsequently disclaimed claims6 and7, leaving
`only claims 9 and 10 intrial on the single ground based on Natarajan and
`
`Neve.
`
`II. ANALYSIS
`
`A. The ’290 Patent
`
`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 continuation-in-part of U.S. Patent Application No. 08/611,695 (Ex. 1006,
`21-61, “the ’695 application”), filed March 6, 1996, which maturedinto
`
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`Patent 6,128,290
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`U.S. Patent No. 5,699,357 (Ex. 2001, “the 357 patent”). See Ex. 1001, 1:6—
`
`8.
`
`The ’290 patentrelates 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, 1:11-14, 2:15-18. Amongthe objects of the inventionis
`the provision of a data network that requires extremely low power
`consumption, “particularly for the peripheral units,” avoids interference |
`from nearby similar systems,andis relatively simple and inexpensive to
`construct. Jd. at 1:33-34, 1:39-45. Figure 1 of the ’290 patent, reproduced
`
`below,is illustrative of the described wireless data network system.
`
`
`
`
` PERSONAL
`
`DIGITAL
`ASSISTANT
`(PDA)
`i
`
`
`
`FIG. 1
`
`Figure 1 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 2:42-44, 2:66-
`
`3:15.
`
`
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`IPR2015-00373
`Patent 6,128,290
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`Accordingto the ’290 patent, “the server microcomputer unit and the
`
`several peripheral units which areto belinkedareall in close physical
`proximity, e.g., within twenty meters, to establish, with very high accuracy,
`a commontime base or synchronization.” Id. at 1:50-54. “Using the
`commontime base, code sequences are generated whichcontrol the
`
`operation ofthe severaltransmitters in a low duty cycle pulsed mode of
`operation.” Jd. at 1:57-59. “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 information
`initially transmitted from the server microcomputer.” Jd. at 2:35-39. “The
`low duty cycle pulsed operation both substantially reduces power
`consumption andfacilitates the rejection of interfering signals.” Jd. at 1:59-
`61. “In the intervals between slots in which a PEAisto transmit or receive,
`
`all receive and transmit circuits are powered down.” Jd. at 4:6—8.
`
`B. Illustrative Claim
`
`Independent claim 9 is reproduced below. Claim 10 depends directly
`
`from claim 9.
`
`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 microcomputer incorporating an RF transmitter
`controlled by said oscillator for sending commandsand synchronizing
`information to said peripheral units, said synchronizing information
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`
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`IPR2015-00373
`Patent 6,128,290
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`being carried by time spaced beaconscharacteristic of the particular
`server unit;
`said peripheral units each including an RF receiver for detecting
`said commandsand synchronizing information andincludingalso a
`local oscillator, each of said peripheral units being operative in a first
`modeto receive said beacons independently of synchronization ofthe
`respective local oscillator when that peripheral unitis 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 modeto 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 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 with said receivers being controlled by the
`respective oscillators.
`
`~
`
`Ex. 1001, 13:25-14:10.
`
`C. Claim Construction
`
`The ’290 patent expired on March 6, 2016, twenty years from the
`filing date of the ’695 application from which the ’290 patent claims
`priority. 35 U.S.C. § 154(a)(2). We construe expired patent claims
`according to the standard applied by thedistrict courts. See In re Rambus
`Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). Specifically, we apply the principles
`set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312-17 (Fed. Cir. 2005)
`(en banc). “In determining the meaning ofthe disputed claim limitation, we
`look principally to the intrinsic evidence of record, examiningthe claim
`languageitself, the written description, and the prosecutionhistory,if in
`evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d
`
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`1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312-17). Only
`
`those terms that 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).
`The wordsof a claim are generally given their ordinary and customary
`
`meaning, and that is the meaning the term would have to a person of
`ordinary skill at the time of the invention, in the context ofthe entire patent
`includingthe specification. See Phillips, 415 F.3d at 1312-13. Claimsare
`not interpreted in a vacuum butare a part of and readin light of the
`specification. See Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113,
`1116 (Fed. Cir. 1987). Although it is improper to read a limitation from the
`specificationitu the claims (In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
`Cir. 1993)), the claimsstill must be read in view of the specification of
`which they are a part. See Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d
`
`1340, 1347 (Fed. Cir. 2004).
`If the applicant for patent desires to be its own lexicographer,the
`purported definition mustbeset forth in either the specification or
`prosecution history. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
`1366 (Fed. Cir. 2002). And sucha definition must be set forth with
`reasonable clarity, deliberateness, and precision. Jn re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994).
`Apple asked usin its Petition to construe “localoscillator,” as recited
`in claims 6 and 9 (Pet. 6-8); and DSS asked us in its Preliminary Response
`to construe “energized in low duty cycle RF bursts,” also recited in claims 6
`and 9 (Prelim. Resp. 19-20). DSS proposed,in particular, that the phrase
`“energized in low duty cycle RF bursts” be givenits plain and ordinary
`
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`IPR2015-00373
`Patent 6,128,290
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`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.”
`
`Id. (boldface anditalics omitted).
`
`In our Decision on Institution, we concluded that it was not necessary
`
`for our determination of whetherto institute inter partes review ofthe
`
`challenged claims to construe expressly either “local oscillator” or
`“energized in low duty cycle RF bursts.” Dec. 8-9. Because the ’290 patent
`had not yet expired at the time of our Decision onInstitution, we interpreted
`the claims under the broadest reasonable interpretation standard. Dec. 6-7;
`
`see 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed Techs., LLC,
`778 F.3d 1271, 1278-81 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo
`
`Speed Techs. LLC v. Lee, 136 S. Ct. 890 (mem.) (2016).
`Neither party now challenges our determination in the Decision on
`Institution that “local oscillator” does not require express construction.
`
`Based on DSS’s Patent Owner Response, Apple’s Reply, andthe arguments
`presented at oral argument, however, the construction of the phrase
`“energized in low duty cycle RF bursts”is a central issue in this proceeding.
`“energized in low duty cycle RFbursts”
`Outside ofthe claims, the ’290patentrecites the phrase “low duty
`
`cycle” four times, as emphasized below:
`The data network disclosed herein utilizes low duty cycle pulsed
`radio frequency energy to effect bidirectional wireless data
`communication between a server microcomputer unit and a
`plurality of peripheral units .... By establishing a tightly
`synchronized commontime base between the units and by the
`use of sparse codes, timed in relation to the commontimebase,
`
`
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`IPR2015-00373
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`low power consumption and avoidanceofinterference between
`nearby similar systemsis obtained.
`
`Ex. 1001, Abst.
`
`Using the common time base, code sequences are generated
`which control the operation of the several transmitters in a low
`duty cycle pulsed modeof operation. The low duty cycle pulsed
`operation both substantially reduces power consumption and
`facilitates the rejection of interfering signals.
`
`Id. at 1:57-61.
`
`The server and peripheral unit 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 microcomputer.
`
`Id. at 2:35-39.
`
`In its Patent Owner Response, DSS contendsthat a person of ordinary
`
`skill in the art would have understood the “duty cycle” of the server
`
`transmitter as “the ratio of actual duration during which the server
`
`transmitter is energizedto the total duration designated for outbound
`
`transmissions.” Jd. at 11 (emphasis omitted). DSS contends that
`
`understanding is consistent with deposition testimony provided by Apple’s
`expert, Dr. Jack Duane Grimes(/d. at 11 (citing Ex. 2015 (“Grimes Depo.
`‘l'r.”), 41:7-9 (“The low-duty cycle refers to the ratio of the time spent
`transmitting versus the time spent nontransmitting.”), 31:10-12 (“Low-duty
`cycle tells you that most of the time there’s nothing being sent. And when
`there is something being sent, that’s what’s called a burst.”), 46:12-15
`(“[T]he key thingis that the burst is small—thetime it takes is small relative
`to the overall time that the transmitter could have been transmitting.”’))).
`
`Citing both Dr. Grimes’s deposition testimony and the declaration of its own
`expert, Robert Dezmelyk, DSS further contendsthat “the duty cycle ofthe
`
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`IPR2015-00373
`Patent 6,128,290
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`server transmitter must be calculated overthe total duration designated
`
`for the outboundtransmissions,” and that “[t]ime slots designated for the
`
`inbounddatatraffic are not taken into account becausethe server transmitter
`
`could not have been transmitting during these timeslots.” Jd. at 11-12
`(citing Ex. 2015, 60:19-22; Ex. 2016 (“Dezmelyk Decl.”) {J 23, 27). DSS
`concludes, “[u]nder the broadest reasonable interpretation, a [person of
`ordinary skill in the art] would have understoodthata server transmitter is
`energized in a low duty cycle whenthe server transmitter is energized for
`less than ten percent (10%)of the total duration designated for outbound
`transmissions.” Jd. at 12.
`
`DSS contendsthe “less than ten percent” range is consistent with the
`
`Specification of the ’290 patent, including an example in which “a
`maximum of three RF bursts can occur” for outbound transmissions in
`
`sections that each include sixty-four slots, and another example in which
`transmitted synchronization beacons are described asconsisting of eight RF
`bursts spread out over 252 slots. PO Resp. 12-13 (citing Ex. 1001, 7:22—
`33). According to DSS,the first example results in the server transmitter
`being energized for 4.688% (i.e., 3/64) of the transmission period, while in
`the second example,the server transmitter is energized in a duty cycle of
`3.175% (i.e., 8/252). Id. DSS alsocites five patents (Exs. 2004-2008) that
`it contendsto bethefirst five “relevant” results “obtained on Google Patents
`
`through the query: ‘low duty cycle e.g.’ & network & percent” (id. at 13,
`
`! DSS and Apple both confirmed during the oral hearing that their respective
`claim construction proposals for “low duty cycle” would be no different
`under the Phillips standard, as opposed to the broadest reasonable
`interpretation standard. Tr. 28:23-29:1, 39:7-11.
`|
`
`10
`
`
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`IPR2015-00373
`Patent 6,128,290
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`13 n.1, Table 1).? Those patents include exemplary “low duty cycle” ranges
`from “e.g., 0.5 percent” (Ex. 2006, 8:3) to “e.g., at an about 10 percent...
`
`duty cycle” (Ex. 2008, 10:5-6).
`Asto the phrase “RF bursts,” DSS contendsthat “a [person of
`ordinary skill in the art] would have understood the phrase ‘RF bursts’ to
`mean ‘a short period ofintense activity on an otherwise quiet data
`
`channel.’” PO Resp.14 (citing definition of “burst” from CHAMBERS
`
`DICTIONARYOFSCI. & TECH. 155 (1999) (Ex. 2009)). DSS asserts that this
`
`construction is consistent with Dr. Grimes’s deposition testimony that “the
`
`key thing is that the burst is small—thetimeit takes is small relative to the
`overall time that the transmitter could have been transmitting” and with the
`
`’290 patent’s illustration of 2 psec burst slots. Jd. at 14-15 (citing Ex. 2015,
`
`34:2-8, 46:12-15; Ex. 1001, Fig. 6).
`
`In its Reply, Apple respondsthat a “low duty cycle” of a transmitter
`should simply be interpreted as the transmitter being designed to be on only
`to satisfy the data communication needs over the communication cycle of
`the system. Reply 23. According to Apple, “DSS’s proposed claim
`construction that ‘low duty cycle’ is less than 10% is arbitrary and unduly
`
`narrow.” Jd. at 21 (emphasis omitted). Apple contendsthat “(t]he
`‘examples’ that DSS cites in Table 1 are cherry-picked results from a search
`premised on finding examples by including ‘e.g.’ in the search string,” that
`“none of these references are contemporaneouswith the ’290 patent’s filing
`
`date,” and that one of those examples even “contradicts the proposed
`
`construction of‘less than ten percent,’ providing a ‘low duty cycle, e.g., at
`
`2 DSS does not explain its criteria for determining “relevance.”
`
`1]
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`IPR2015-00373
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`an about 10 percent (10%) duty cycle.’” Jd. at 21-22 (quoting Ex. 2008,
`10:5-6). Apple also contendsthat the deposition testimony of DSS’s expert
`undermines DSS’s proposed construction, as “Mr. Dezmelyk admits that the
`term ‘low duty cycle’ itself does not require an upper bound at 10%.” Jd.
`(citing Ex. 1011 (““Dezmelyk Depo.Tr.”), 78:26).
`Apple also points out that claim 8 ofthe 357 patent(i.e., the parent of
`the ’290 patent), which was cited by Mr. Dezmelyk during his deposition as
`further support for the “10% limit,” recites “said low duty cycle pulses
`comprise chips within the respective code sequences such that a transmitter
`is enerrgized[sic] less than 10% ofthe time during an allocated timeslot.”
`Reply 22-23. According to Apple, “[b]ecause claim 8 dependsultimately
`from independentclaim 6,it is narrower than the independent claim,
`meaning that the ’357 patent contemplates a ‘low duty cycle’ greater than
`
`10%.” Id. at 23.
`
`In the oral hearing, DSSretreated from insisting that “low duty cycle”
`should be limited to a duty cycle of “less than ten percent.” While
`maintaining that “[I]ow duty cycle is a term ofart” and that “[i]n the context
`of wireless communications, 10 percent is a reasonable number,” DSS
`
`conceded,“there is no hard value for the numbers.” Tr. 48:6—7, 48:22,
`
`49:16-17. DSS asserted: “Anything below 10 percent is low duty cycle.
`Anything over 10 percent would be considered high duty cycle and—orat
`least it would not be considered a low duty cycle in the context of wireless
`communications technology.” Jd. at 50:22-25. DSS additionally suggested
`that a person of ordinary skill in the art would understandthat, if there were
`more data than could be transmitted in three of sixty-four slots, the
`
`transmission of the data would be held by the transmitter for future frames,
`
`12
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`and that “low duty cycle” operation requires “kicking off mobile units” and
`
`introducing “additional complexity and additional inefficiency,” merely so
`that a server transmitter can be depowered for the majority of a duty cycle
`
`regardless of whether there is more data waiting to be transmitted (see id. at
`
`61:13-62:2, 71:9-72:5).
`
`Asaninitial matter, we understand an “RF burst” to be “a short period
`
`of intense RF transmission activity on an otherwise quiet data channel,”
`consistent with DSS’s proposal (see PO Resp. 14). That understandingis
`supported by the ’290 patent and other evidence of record (see Ex. 1001,
`Fig. 1; Ex. 2009; Ex. 2015, 34:2-8, 46:12-15), and Apple doesnot provide
`
`any contrary argument.
`Nonethcless, we are unpersuaded by DSS’s arguments concerning the
`properinterpretation of“low duty cycle.” First, we agree with Apple that
`the term “duty cycle” shouldbe calculated based onthetotal time it takes a
`system to go through a cycle of communication (see Reply 23-24), andis
`not limited to “the total duration designated for outbound transmissions,” as
`asserted by DSS (see PO Resp. 11) (emphasis omitted). This interpretation
`is consistent with the Specification. See Ex. 1001, 11:46—-51 (“Further, the
`utilization of low duty cycle pulse mode transmission particularly with the
`employment of uncorrelated codes ina TDMA context, leads to very low
`power consumption sincethe transmitters and receivers in each PEA are
`powered for only a small percentageofthe total time.”). We also agree with
`Apple that“the data requirements for the master station to broadcastto the
`peripherals change[], and the data requirements for the peripherals to
`transmit back to the master station change over time.” Tr. 9:4-8.
`
`Accordingly, we understand the “duty cycle” of a transmitter to be the
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`13
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`average ratio of the durations during which the transmitter is energized to
`
`the duration of communication cycles over the course of network operation.
`
`Wealso agree with Apple that “low duty cycle” should not belimited
`to a duty cycle of less than 10% or to any other hard limit (Reply 20-22),
`and instead conclude,onthis record,that “energized in low duty cycle RF
`
`bursts” simply meansthat a transmitter is not energized continuously over
`the course of network operation, but is depowered during at least two time
`periods of each communication cycle: first, in time slots in which the unit
`that includes the transmitter is assigned to receive data; and second, in time
`
`slots, if any, when theunit is assigned to transmit data but has no data to
`
`transmit.
`
`As DSSconcededatthe oral hearing, there is “no hard value”recited
`in the ’290 patent or elsewhere on the record (Tr. 49:16—17), and weare not
`persuaded onthis record that we should infer from the examples in the ’290
`patent that Applicant intended therebyto limit the meaning of “low duty
`cycle” to transmitting in just three of sixty-four or eight of 252 timeslots
`reserved for transmission, or anything on that order (see PO Resp. 12-13).
`
`Wealso find that DSS’s suggestions regarding “kicking off’ of mobile units
`
`and introduction of “complexity” and “inefficiency” (see Tr. 61:13—-62:2,
`71:9-72:5) are inappropriate because they are new argumentsraised for the
`first time at oral argument. Thus, those new arguments are not considered.
`See Apple Inc. v. e-Watch, Inc., Case IPR2015-00412, slip op. at 40-41
`(PTAB May6, 2016) (Paper 50) (declining to consider arguments raised for
`the first time at oral argument).
`Wealso are not persuaded by DSS’s sampling in its Patent Owner
`Responseoffive unrelated patents (i.e., Exs. 2004-2008) that, by virtue of
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`14
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`their use of the abbreviation “e.g.,” explicitly provide only examples of low
`
`duty cycles (see Ex. 2002 (Black’s Law Dictionary, definition of “e.g.”’)).
`
`PO Resp. 12-13. Indeed, although there may not be any evidence of record
`
`that the definition of “duty cycle” changed in the years betweenthe filing
`
`date of the application for the ’290 patent and thefiling dates of the
`
`applicationsthat issued as Exhibits 2004-2008 (see Tr. 50:5—7), the fact that
`
`noneofthose references predates the ’290 patent casts doubt upon the
`
`weight to which that evidenceis entitled in showing how a person of
`
`ordinary skill in the art would have understood low duty cycle in the context
`
`of the ’290 patent (see Reply 22).
`
`In view of the foregoing, on the record before us, we concludethat the
`
`phrase “energized in low duty cycle RF bursts” means “energized, in short
`periods of intense RF transmission activity on an otherwise quiet data
`channel, only to the extent required to satisfy the data transmission needs
`
`over the course of a communication cycle.”
`
`D. Obviousness ofClaims 9 and 10 over Natarajan and Neve
`
`Apple contends that claims 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.
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`
`between the claimed subject matter and the priorart are “such that the
`
`subject matter as a whole would have been obviousat the time the invention
`was madeto a person having ordinary skill in the art to which said subject
`
`matter pertains.” We resolve the question of obviousnessonthe basis of
`underlying factual determinations, including: (1) the scope and content of
`
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`IPR2015-00373
`Patent 6,128,290
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`the priorart; (2) any differences between the claimed subject matter and the
`priorart; (3) the level ofskill in the art; and (4) objective evidence of
`nonobviousness,i.e., secondary considerations.? See Graham v. John Deere
`
`Co., 383 U.S. 1, 17-18 (1966).
`
`In an obviousnessanalysis, some reason must be shownas to why a
`
`person of ordinary skill would have combined or modified the prior art to
`achieve the patented invention. See Innogenetics, NV. v. Abbott Labs., 512
`
`F.3d 1363, 1374 (Fed. Cir. 2008). A reason to combine or modify the prior
`
`art may be found explicitly or implicitly in market forces, design incentives,
`99 66
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`the “interrelated teachings of multiple patents,”
`
`“any need or problem known
`
`in the field of endeavorat the time of invention and addressed by the
`
`patent,” or the background knowledge, creativity, and commonsenseofthe
`personofordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d
`1324, 1329 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`
`398, 418-21 (2007)).
`
`1. Scope and Content ofthe Prior Art
`
`a.
`
`Overview ofNatarajan
`
`Natarajan is directed to power conservation in wireless
`communication,particularly battery efficient operation of wireless link
`adapters of mobile computers(alsoreferred to, inter alia, as battery powered
`computers, harid held or laptop computers, mobile units, and mobile
`stations) as controlled by multiaccess protocols used in wireless
`
`communication. Ex. 1003, Abst., 1:7-13, 2:32. Figure 2 of Natarajanis
`
`reproduced below.
`
`3 The record does not contain any evidence of secondary considerations.
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`16
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`IPR2015-00373
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`MOBILE STATION
`
`10,12,14,0R16
`
`srgsrg
`
`TRANSCEIVER
`
`FIG.2
`°
`
`TRANSCEIVER —____—>
`ADAPTERS
`
`BASE STATION
`
`46
`
`30
`
`36re SOFTWARE
`26,28
`
`
`
`LAN
`7
`
`ADAPTERS
`
`
`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 andabasestation. Jd. at 1:67—2:3. 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 2:32-39, 2:51-52, 2:58-59, 2:65-67.
`
`According to Natarajan:
`
`The scheduled access multiaccess protocol is implemented to
`effectively conserve battery powerbysuitable controlof 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 mode in which poweris
`conserved.
`
`Id. at Abst.; see also id. at 3:66-4:1.
`
`Natarajan discloses that “[a] desirable solution is one in which the
`transmitter (or receiver) consumes poweronly whenit is actively
`
`transmitting a message(or actively receiving a message).” Id. at 4:36.
`
`17
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`IPR2015-00373
`Patent 6,128,290
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`Natarajan further discloses that the scheduled multiaccess protocoldivides
`time into “fixed-length frames, and framesare divided into slots.” Jd. at
`
`4:20-23. The framesare divided into subframesfor 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 4:27-38. According to Natarajan, at least one slot is assigned to each
`
`mobile computer designated to communicate with the base station. Jd. at
`10:26-29. The battery powerofthe wireless link adapter for a given mobile
`computeris turnedonto full power during the at least one assignedslot, and
`the battery powerofthe wireless link adapter is substantially reduced during
`
`the remaining timeslots. Jd. at 10:29-37.
`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 orderin
`which the mobile users will receive the data packets, and the bandwidth
`
`allocated to each user. Jd. at 4:45-53. According to Natarajan, a mobile
`
`unit that is not included in the header from the base station can turn its
`
`receiver “OFF”for the duration of the current subframe. Jd. at 4:64-67.
`
`Additionally, the adapter of each receiving mobile unit can compute exactly
`whenit should be ready to receive packets from the base station by adding
`
`up the slots allocatedto all receiving units that precede it, power “ON”
`during that time slot to receive its data, and go back to sleep for the
`
`remainderof the subframe. Id. at 4:67—5:6.
`
`For inboundtraffic, Natarajan similarly discloses that the base station
`
`broadcasts a headerthat includes an orderedlist of users that will be allowed
`
`to transmit packets to the basestation in the current frame and the bandwidth
`
`18
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`
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`IPR2015-00373
`Patent 6,128,290
`allocated to each. Jd. at 5:9-19. ‘Using the information regarding the
`numberof packets that each user can transmit, each mobile unit can compute
`
`exactly whenit should begin its transmission. Jd. at 5:20-22. 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 5:23-29.
`
`b.
`
`Overview ofNeve
`
`Neveis directed to a 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, 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 otherstations (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 and a cyclically
`repeatingseries oftime slots is defined. Jd. at Abst. Onetimeslot 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. Anothertime slot 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 timeslots are used for
`
`transmitting address information anddata. Id.
`
`Neve discloses that when data transfer is not taking place, the
`
`described devices can enter a lower power consumptionstate. Jd. at 2:13—
`
`19
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`IPR2015-00373
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`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 code signal is received by the
`
`receivercircuit indicative of the need to receive data. Id. at 2:19-24. Neve
`
`discloses that the receiver has very low power consumption becauseonly the
`
`internal timing circuitry is energized continuously, whereasthe rest of the
`receivingcircuit is energized only whenits assigned time slot occurs. Id. at
`2:39-41. Moreparticularly, 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 occurandfor the synchronization time
`
`slot, thereby enabling it to maintain synchronization with low power
`consumption. Jd. at 4:43-48. Nevesimilarly discloses that the interface
`circuit is arranged to energize the transmitter circuit only when transmission
`
`is required. Jd. at 2:45—-47.
`
`2. Level ofOrdinary Skill in the Art
`Wedetermine that no express finding with regardto the level of
`ordinary skill in the art is necessary in this proceeding,as the level of
`
`|
`
`ordinary skill in the art is reflected by the prior art of record. See Okajimav.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); Jn re GPAC Inc., 57 F.3d
`
`1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (C
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