Paper No. 40
` Entered: June 17, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00369
`Patent 6,128,290
`____________
`
`
`
`Before JAMESON LEE, MATTHEW R. CLEMENTS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
` Entered: June 17, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00369
`Patent 6,128,290
`____________
`
`
`
`Before JAMESON LEE, MATTHEW R. CLEMENTS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`IPR2015-00369
`Patent 6,128,290
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`
`A. Background
`
`I. INTRODUCTION
`
`Petitioner Apple Inc. (“Apple”) filed a Petition (Paper 1, “Pet.”) to
`
`institute inter partes review of claims 1–4 of U.S. Patent No. 6,128,290 to
`
`Carvey (Ex. 1001, “the ’290 patent”). Patent Owner DSS Technology
`
`Management, Inc. (“DSS”) filed a Preliminary Response (Paper 8, “Prelim.
`
`Resp.”). On June 25, 2015, we instituted an inter partes review of claims 1–
`
`4 on one of two grounds of unpatentability presented in the Petition
`
`(Paper 9, “Dec.”).
`
`After institution of trial, DSS filed a Patent Owner Response
`
`(Paper 17, “PO Resp.”), and Apple filed a Reply thereto (Paper 24,
`
`“Reply”). An oral hearing was held on March 15, 2016, and a transcript of
`
`the hearing is included in the record (Paper 39, “Tr.”).
`
`We have 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 reasons that follow, we
`
`determine that Apple has demonstrated, by a preponderance of the evidence,
`
`that each of claims 1–4 of the ’290 patent is unpatentable.
`
`
`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. 3–4; Paper 4, 2.
`
`IPR2015-00373 also involves claims of the ’290 patent and was argued
`
`together with this proceeding at the March 15, 2016, oral argument.
`
`
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`2
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`IPR2015-00369
`Patent 6,128,290
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`
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`C. The Instituted Ground
`
`We instituted a trial as to claims 1–4 of the ’290 patent under
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`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
`
`Neve et al. (Ex. 1004, “Neve”). Dec. 13–21.
`
`
`
`A. The ’290 Patent
`
`II. ANALYSIS
`
`The ’290 patent, titled “Personal Data Network,” issued October 3,
`
`2000, from U.S. Patent Application No. 08/949,999 (Ex. 1005, 22–62,
`
`“the ’999 application”). The ’999 application was filed October 14, 1997, as
`
`a continuation-in-part 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, 1:6–
`
`8.
`
`The ’290 patent relates to a data network for bidirectional wireless
`
`data communications between a host or server microcomputer unit and a
`
`plurality of peripheral units referred to as personal electronic accessories
`
`(PEAs). Ex. 1001, 1:11–14, 2:15–18. Among the objects of the invention is
`
`the provision of a data network that requires extremely low power
`
`consumption, “particularly for the peripheral units,” avoids interference
`
`from nearby similar systems, and is relatively simple and inexpensive to
`
`construct. Id. at 1:33–34, 1:39–45. Figure 1 of the ’290 patent, reproduced
`
`below, is illustrative of the described wireless data network system.
`
`
`
`3
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`IPR2015-00369
`Patent 6,128,290
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`
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`Figure 1 is a block diagram of a 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.
`
`According to the ’290 patent, “the server microcomputer unit and the
`
`several peripheral units which are to be linked are all in close physical
`
`proximity, e.g., within twenty meters, to establish, with very high accuracy,
`
`a common time base or synchronization.” Id. at 1:50–54. “Using the
`
`common time base, code sequences are generated which control the
`
`operation of the several transmitters in a low duty cycle pulsed mode of
`
`operation.” Id. 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 which is timed in relation to the synchronizing information
`
`initially transmitted from the server microcomputer.” Id. at 2:35–39. “The
`
`low duty cycle pulsed operation both substantially reduces power
`
`consumption and facilitates the rejection of interfering signals.” Id. at 1:59–
`
`
`
`4
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`IPR2015-00369
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`61. “In the intervals between slots in which a PEA is to transmit or receive,
`
`all receive and transmit circuits are powered down.” Id. at 4:6–8.
`
`
`
`B. Illustrative Claim
`
`Claim 1, the sole independent claim among the challenged claims, is
`
`reproduced below. Challenged claims 2–4 depend directly 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 microcomputer unit;
`
`a plurality of peripheral units which are battery powered and portable,
`which provide either 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 commands and synchronizing information to said peripheral
`units;
`
`said peripheral units each including an RF receiver for detecting said
`commands and synchronizing information and including also an RF
`transmitter for sending input information from the user to said server
`microcomputer;
`
`said server microcomputer including a receiver for receiving input
`information transmitted from said peripheral units;
`
`said server and peripheral transmitters being energized in low duty
`cycle RF bursts at intervals determined by a code sequence which is
`timed in relation to said synchronizing information.
`
`Ex. 1001, 11:61–12:18.
`
`
`
`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
`
`
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`5
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`IPR2015-00369
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`priority. 35 U.S.C. § 154(a)(2). We construe expired patent claims
`
`according to the standard applied by the district 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 of the disputed claim limitation, we
`
`look principally to the intrinsic evidence of record, examining the claim
`
`language itself, the written description, and the prosecution history, if in
`
`evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d
`
`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 words of 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 of the entire patent
`
`including the specification. See Phillips, 415 F.3d at 1312–13. Claims are
`
`not interpreted in a vacuum but are a part of and read in 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
`
`specification into the claims (In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
`
`Cir. 1993)), the claims still 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 must be set forth in either the specification or
`
`prosecution history. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
`
`
`
`6
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`IPR2015-00369
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`1366 (Fed. Cir. 2002). And such a definition must be set forth with
`
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994).
`
`Apple asked us in its Petition to construe two phrases: “within short
`
`range of said server unit,” as recited in claim 1, and “code sequence,” as
`
`recited in claims 1 and 3. Pet. 9–11. DSS responded to Apple’s proposed
`
`construction of only the first of these phrases in its Preliminary Response,
`
`and additionally asked us to construe “energized in low duty cycle RF
`
`bursts,” also recited in claim 1. Prelim. Resp. 18–21. DSS proposed, in
`
`particular, that the phrase “energized in low duty cycle RF bursts” be given
`
`its 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 and facilitates the rejection of
`
`interfering signals.” Id. at 20 (boldface and italics omitted).
`
`In our Decision on Institution, we construed the phrase “within short
`
`range” to mean “within a range in which the accuracy of synchronization is
`
`not appreciably affected by transit time delays, including at least the range of
`
`within 20 meters,” but concluded that it was 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.” Dec. 7–10. Because the
`
`’290 patent had not yet expired at the time of our Decision on Institution, 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.,
`
`
`
`7
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`IPR2015-00369
`Patent 6,128,290
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`LLC, 778 F.3d 1271, 1278–81 (Fed. Cir. 2015), cert. granted sub nom.
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`Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (mem.) (2016).
`
`Notwithstanding that we now apply the Phillips standard, our
`
`construction now for “within short range” is the same as our construction in
`
`the Decision on Institution. Neither party now challenges that construction
`
`or our determination in the Decision on Institution that “code sequence”
`
`does not require express construction. Based on DSS’s Patent Owner
`
`Response, Apple’s Reply, and the 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 RF bursts”
`
`Outside of the claims, the ’290 patent recites 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 common time base between the units and by the
`use of sparse codes, timed in relation to the common time base,
`low power consumption and avoidance of interference between
`nearby similar systems is 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 mode of 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
`
`
`
`8
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`IPR2015-00369
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`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 contends that 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 energized to the total duration designated for outbound
`
`transmissions.” Id. at 10 (emphasis omitted). DSS contends that
`
`understanding is consistent with deposition testimony provided by Apple’s
`
`expert, Dr. Jack Duane Grimes (Id. at 10–11 (citing Ex. 2015 (“Grimes
`
`Depo. Tr.”), 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 thing is that the burst is small—the time 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 contends that “the duty cycle of the
`
`server transmitter must be calculated over the total duration designated
`
`for the outbound transmissions,” and that “[t]ime slots designated for the
`
`inbound data traffic are not taken into account because the server transmitter
`
`could not have been transmitting during these time slots.” Id. at 11 (citing
`
`Ex. 2015, 60:19–22; Ex. 2016 (“Dezmelyk Decl.”) ¶¶ 23, 27). DSS
`
`concludes, “[u]nder the broadest reasonable interpretation, a [person of
`
`ordinary skill in the art] would have understood that a server transmitter is
`
`energized in a low duty cycle when the server transmitter is energized for
`
`
`
`9
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`IPR2015-00369
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`less than ten percent (10%) of the total duration designated for outbound
`
`transmissions.” Id.1
`
`DSS contends the “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 as consisting of eight RF
`
`bursts spread out over 252 slots. PO Resp. 11–12 (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. at 12. DSS also cites five patents (Exs. 2004–
`
`2008) that it contends to be the first five “relevant” results “obtained on
`
`Google Patents through the query: ‘low duty cycle e.g.’ & network &
`
`percent” (id. at 12–13, 12 n.1, Table 1).2 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).
`
`As to the phrase “RF bursts,” DSS contends that “a [person of
`
`ordinary skill in the art] would have understood the phrase ‘RF bursts’ to
`
`mean ‘a short period of intense activity on an otherwise quiet data
`
`channel.’” PO Resp. 13 (citing definition of “burst” from CHAMBERS
`
`DICTIONARY OF SCI. & TECH. 155 (1999) (Ex. 2009)). DSS asserts that this
`
`
`1 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.
`
`2 DSS does not explain its criteria for determining “relevance.”
`
`
`
`10
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`IPR2015-00369
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`construction is consistent with Dr. Grimes’s deposition testimony that “the
`
`key thing is that the burst is small—the time it takes is small relative to the
`
`overall time that the transmitter could have been transmitting” and with the
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`’290 patent’s illustration of 2 µsec burst slots. Id. at 13–14 (citing Ex. 2015,
`
`34:2–8, 46:12–15; Ex. 1001, Fig. 6).
`
`In its Reply, Apple responds that 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 22. According to Apple, “DSS’s proposed claim
`
`construction that ‘low duty cycle’ is less than 10% is arbitrary and unduly
`
`narrow.” Id. at 20 (emphasis omitted). Apple contends that “[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 contemporaneous with 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
`
`an about 10 percent (10%) duty cycle.” Id. at 21 (quoting Ex. 2008, 10:5–
`
`6). Apple also contends that 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%.”
`
`Id. (citing Ex. 1011 (“Dezmelyk Depo. Tr.”), 78:2–6).
`
`Apple also points out that claim 8 of the ’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% of the time during an allocated time slot.”
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`
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`11
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`Reply 22. According to Apple, “[b]ecause claim 8 depends ultimately from
`
`independent claim 6, it is narrower than the independent claim, meaning
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`that the ’357 patent contemplates a ‘low duty cycle’ greater than 10%.” Id.
`
`In the oral hearing, DSS retreated from insisting that “low duty cycle”
`
`should be limited to a duty cycle of “less than ten percent.” While
`
`maintaining that “[l]ow duty cycle is a term of art” 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—or at
`
`least it would not be considered a low duty cycle in the context of wireless
`
`communications technology.” Id. at 50:22–25. DSS additionally suggested
`
`that a person of ordinary skill in the art would understand that, 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,
`
`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).
`
`As an initial 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. 13). That understanding is
`
`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 does not provide
`
`any contrary argument.
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`12
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`Nonetheless, we are unpersuaded by DSS’s arguments concerning the
`
`proper interpretation of “low duty cycle.” First, we agree with Apple that
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`the term “duty cycle” should be calculated based on the total time it takes a
`
`system to go through a cycle of communication (see Reply 22–23), and is
`
`not limited to “the total duration designated for outbound transmissions,” as
`
`asserted by DSS (see PO Resp. 10) (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 in a TDMA context, leads to very low
`
`power consumption since the transmitters and receivers in each PEA are
`
`powered for only a small percentage of the total time.”). We also agree with
`
`Apple that “the data requirements for the master station to broadcast to 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
`
`average ratio of the durations during which the transmitter is energized to
`
`the duration of communication cycles over the course of network operation.
`
`We also agree with Apple that “low duty cycle” should not be limited
`
`to a duty cycle of less than 10% or to any other hard limit (Reply 20–22),
`
`and instead conclude, on this record, that “energized in low duty cycle RF
`
`bursts” simply means that 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
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`slots, if any, when the unit is assigned to transmit data but has no data to
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`transmit.
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`13
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`As DSS conceded at the oral hearing, there is “no hard value” recited
`
`in the ’290 patent or elsewhere on the record (Tr. 49:16–17), and we are not
`
`persuaded on this record that we should infer from the examples in the
`
`’290 patent that Applicant intended thereby to limit the meaning of “low
`
`duty cycle” to transmitting in just three of sixty-four or eight of 252 time
`
`slots reserved for transmission, or anything on that order (see PO Resp. 12).
`
`We also find that DSS’s suggestions regarding “kicking off” of mobile units
`
`and introduction of “complexity and “inefficiency” (see Tr. 61:13–62:2,
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`71:9–72:5) are inappropriate because they are new arguments raised 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 May 6, 2016) (Paper 50) (declining to consider arguments raised for
`
`the first time at oral argument).
`
`We also are not persuaded by DSS’s sampling in its Patent Owner
`
`Response of five unrelated patents (i.e., Exs. 2004–2008) that, by virtue of
`
`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 between the filing
`
`date of the application for the ’290 patent and the filing dates of the
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`applications that issued as Exhibits 2004–2008 (see Tr. 50:5–7), the fact that
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`none of those references predates the ’290 patent casts doubt upon the
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`weight to which that evidence is entitled in showing how a person of
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`ordinary skill in the art would have understood low duty cycle in the context
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`of the ’290 patent (see Reply 21).
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`In view of the foregoing, on the record before us, we conclude that the
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`phrase “energized in low duty cycle RF bursts” means “energized, in short
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`periods of intense RF transmission activity on an otherwise quiet data
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`channel, only to the extent required to satisfy the data transmission needs
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`over the course of a communication cycle.”
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`D. Obviousness of Claims 1–4 over Natarajan and Neve
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`Apple contends that claims 1–4 of the ’290 patent are unpatentable
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`under 35 U.S.C. § 103(a) as obvious over the combination of Natarajan and
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`Neve.
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`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
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`between the claimed subject matter and the prior art are “such that the
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`subject matter as a whole would have been obvious at the time the invention
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`was made to a person having ordinary skill in the art to which said subject
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`matter pertains.” We resolve the question of obviousness on the basis of
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`underlying factual determinations, including: (1) the scope and content of
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`the prior art; (2) any differences between the claimed subject matter and the
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`prior art; (3) the level of skill in the art; and (4) objective evidence of
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`nonobviousness, i.e., secondary considerations.3 See Graham v. John Deere
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`Co., 383 U.S. 1, 17–18 (1966).
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`In an obviousness analysis, some reason must be shown as to why a
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`person of ordinary skill would have combined or modified the prior art to
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`achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs.,
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`512 F.3d 1363, 1374 (Fed. Cir. 2008). A reason to combine or modify the
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`prior art may be found explicitly or implicitly in market forces, design
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`3 The record does not contain any evidence of secondary considerations.
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`incentives, the “interrelated teachings of multiple patents,” “any need or
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`problem known in the field of endeavor at the time of invention and
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`addressed by the patent,” or the background knowledge, creativity, and
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`common sense of the person of ordinary skill. Perfect Web Techs., Inc. v.
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`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)).
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`1. Scope and Content of the Prior Art
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`a.
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`Overview of Natarajan
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`Natarajan is directed to power conservation in wireless
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`communication, particularly battery efficient operation of wireless link
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`adapters of mobile computers (also referred to, inter alia, as battery powered
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`computers, hand held or laptop computers, mobile units, and mobile
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`stations) as controlled by multiaccess protocols used in wireless
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`communication. Ex. 1003, Abst., 1:7–13, 2:32. Figure 2 of Natarajan is
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`reproduced below.
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`Figure 2 is a block diagram of a digital data communication system of the
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`type in which Natarajan’s invention is implemented, illustrating the basic
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`components of a mobile station and a base station. Id. at 1:67–2:3. As
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`depicted in Figure 2, mobile stations 10, 12, 14, and 16 communicate with
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`gateways (i.e., base stations 26, 28) connected with server 18, via wireless
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`transceivers adapters 36, 44. Id. at 2:32–39, 2:51–52, 2:58–59, 2:65–67.
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`According to Natarajan:
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`The scheduled access multiaccess protocol is implemented to
`effectively conserve battery power by suitable control of the
`state of the controller, the transmitter and receiver units at the
`wireless link adapter by scheduling when the adapter is in a
`normal running mode, or a standby mode in which power is
`conserved.
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`Id. at Abst.; see also id. at 3:66–4:1.
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`Natarajan discloses that “[a] desirable solution is one in which the
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`transmitter (or receiver) consumes power only when it is actively
`
`transmitting a message (or actively receiving a message).” Id. at 4:3–6.
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`Natarajan further discloses that the scheduled multiaccess protocol divides
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`time into “fixed-length frames, and frames are divided into slots.” Id. at
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`4:20–23. The frames are divided into subframes for transmission of data
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`from the base station to mobile units (outbound traffic) as well as
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`transmission of data from mobile units to the base station (inbound traffic).
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`Id. at 4:27–38. According to Natarajan, at least one slot is assigned to each
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`mobile computer designated to communicate with the base station. Id. at
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`10:26–29. The battery power of the wireless link adapter for a given mobile
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`computer is turned on to full power during the at least one assigned slot, and
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`the battery power of the wireless link adapter is substantially reduced during
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`the remaining time slots. Id. at 10:29–37.
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`With respect to outbound traffic, Natarajan discloses that the base
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`station broadcasts a header that includes a list of mobile users that will be
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`receiving data packets from the base station in the current frame, the order in
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`which the mobile users will receive the data packets, and the bandwidth
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`allocated to each user. Id. at 4:45–53. According to Natarajan, a mobile
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`unit that is not included in the header from the base station can turn its
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`receiver “OFF” for the duration of the current subframe. Id. at 4:64–67.
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`Additionally, the adapter of each receiving mobile unit can compute exactly
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`when it should be ready to receive packets from the base station by adding
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`up the slots allocated to all receiving units that precede it, power “ON”
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`during that time slot to receive its data, and go back to sleep for the
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`remainder of the subframe. Id. at 4:67–5:6.
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`For inbound traffic, Natarajan similarly discloses that the base station
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`broadcasts a header that includes an ordered list of users that will be allowed
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`to transmit packets to the base station in the current frame and the bandwidth
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`allocated to each. Id. at 5:9–19. Using the information regarding the
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`number of packets that each user can transmit, each mobile unit can compute
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`exactly when it should begin its transmission. Id. at 5:20–22. Once each
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`mobile station computes its exact time for transmission, it can shut both its
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`transmitter and receiver “OFF” until the designated time, and then turn
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`“ON” and transmit for a fixed period of time whose duration depends on the
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`number of slots allocated to it. Id. at 5:23–29.
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`b.
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`Overview of Neve
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`Neve is directed to a communication system able to provide multiple
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`path communication between a plurality of stations operating on a single
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`channel. Ex. 1004, Abst. Neve discloses that one station, which is
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`physically similar to the others but operates a different stored program, may
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`be designated the “master” station and provides synchronization signals for
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`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. Id. at 4:10–15.
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`According to Neve, the stations are synchronized and a cyclically
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`repeating series of time slots is defined. Id. at Abst. One time slot in each
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`cycle is reserved for the transmission of synchronization information by the
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`master station for reception by the slave stations and for maintaining
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`synchronization therein. Id. Another time slot is reserved for any slave
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`station to transmit a message indicating that it needs to communicate to
`
`another station, such indication preferably being by transmitting its own pre-
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`assigned address code. Id. The remaining time slots are used for
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`transmitting address information and data. Id.
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`Neve discloses that when data transfer is not taking place, the
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`described devices can enter a lower power consumption state. Id. at 2:13–
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`16. The system is designed automatically to re-enter the data transfer
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`condition when either a signal is received from the device indicative of the
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`need to transmit data or a predetermined code signal is received by the
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`receiver circuit indicative of the need to receive data. Id. at 2:19–24. Neve
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`discloses that the receiver has very low power consumption because only the
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`internal timing circuitry is energized continuously, whereas the rest of the
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`receiving circuit is energized only when its assigned time slot occurs. Id. at
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`2:39–41. More particularly, the receiver circuit includes a low power timing
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`circuit that operates to energize the rest of the receiver circuit only for the
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`time slot in which its address may occur and for the synchronization time
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`slot, thereby enabling it to maintain synchronization with low power
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`consumption. Id. at 4:43–48. Neve similarly discloses that the interface
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`circuit is arranged to energize the transmitter
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