Appeals from the United States Patent and Trademark Office,
Patent Trial and Appeal Board in Nos. IPR2015-00369,
William Buether, Buether Joe & Carpenter LLC, Dallas, TX,
argued for appellant. Also represented by Brian Andrew
Carpenter; Andriy Lytvyn, Smith & Hopen, PA, Oldsmar, FL.
Wright, Sterne Kessler Goldstein & Fox, PLLC, Washington,
DC, argued for appellee. Also represented by David K.S.
Cornwell, Jason A. Fitzsimmons.
Newman, O'Malley, and Reyna, Circuit Judges.
O'Malley, Circuit Judge
response to two petitions for inter partes review
filed by Appellee Apple Inc. ("Apple"), the Patent
Trial and Appeal Board ("Board") issued a pair of
final written decisions finding claims 1-4 and 9-10 of U.S.
Patent No. 6, 128, 290 ("the '290 patent"),
owned by Appellant DSS Technology Management, Inc.
("DSS"), unpatentable as obvious. Apple Inc. v.
DSS Tech. Mgmt., Inc., No. IPR2015-00369, 2016 WL
3382361 (P.T.A.B. June 17, 2016) (Apple I);
Apple Inc. v. DSS Tech. Mgmt., Inc., No.
IPR2015-00373, 2016 WL 3382464 (P.T.A.B. June 17, 2016)
(Apple II). Because we find that the Board did not
provide a sufficient explanation for its conclusions, and
because we cannot glean any such explanation from the record,
'290 patent, which issued in 2000 and is assigned to DSS,
is directed to a wireless communication network for a single
host device and multiple peripheral devices. The '290
patent discloses a data network for bidirectional wireless
data communications between a host or server
microcomputer-described in the specification as a personal
digital assistant or "PDA"-and a plurality of
peripheral devices that the specification refers to as
personal electronic accessories or "PEAs." '290
patent, col. 1, ll. 11-20, col. 2, ll. 15-18. According to
the '290 patent, this data network provides "highly
reliable" communication, "requires extremely low
power consumption, particularly for the peripheral units,
" "avoids interference from nearby similar systems,
" and "is of relatively simple and inexpensive
construction." Id. at col. 1, ll. 33- 47.
Figure 1 of the '290 patent illustrates an embodiment of
this wireless data network:
at Fig. 1. This figure depicts a server microcomputer, shown
as PDA 11, and a plurality of peripheral units 21 to 29.
Id. at col. 2, 11. 42-44, col. 2, 1. 66-col. 3, 1.
'290 patent teaches that the transmitters within the host
or server microcomputer and the peripheral units in the data
network operate in a "low duty cycle pulsed mode of
operation." Id. at col. 1, ll. 57-59. In such a
mode of operation, each peripheral unit is allocated a subset
of available time slots in which it receives or transmits
data from or to the server microcomputer in radio frequency
(i.e., wireless) bursts. Id. at col. 3, 1. 57-col.
4, 1. 6. These time slots are determined in relation to
synchronizing information initially transmitted from the
server microcomputer. Id. at col. 2, ll. 35-39. In
the time slots when a peripheral unit is neither receiving
nor transmitting, its reception and transmission circuitry
may be powered down. Id. at col. 4, ll. 6-8.
"The low duty cycle pulsed operation both substantially
reduces power consumption and facilitates the rejection of
interfering signals." Id. at col. 1, ll. 59-61.
'290 patent contains 11 apparatus claims, six of
which-claims 1-4 and 9-10-are relevant to this appeal.
Because the parties dispute only a single claim limitation
recited in independent claim 1, they agree that claim 1 is
representative. Claim 1 recites:
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 [radio frequency]
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.
'290 patent, col. 11, l. 62-col. 12, l. 18 (emphasis
only disputed limitation of claim 1 pertains to the "low
duty cycle RF bursts" referenced above. Claim 1 requires
both the server microcomputer and each of the peripheral
units to comprise transmitters. According to the claim, the
server microcomputer's transmitter is used "for
sending commands and synchronizing information to said
peripheral units, " while the peripheral unit's
transmitters are used "for sending input information
from the user to said server microcomputer."
Id. at col. 12, ll. 4-11. The transmitters on both
the server microcomputer and the peripheral units must be
"energized in low duty cycle RF bursts."
Id. at col. 12, ll. 15-18. This limitation was the
focus of the IPR proceedings below, and it is at the center
of the single dispute on appeal.
Relevant Prior Art
Board relied on two pieces of prior art in the IPR
proceedings: U.S. Patent No. 5, 241, 542 to Natarajan et al.
("Natarajan"), and U.S. Patent No. 4, 887, 266 to
Neve et al. ("Neve"). In its final written
decisions, the Board found that the combination of Natarajan
and Neve rendered obvious all of the challenged claims of the
'290 patent. Apple I, 2016 WL 3382361, at *1,
*19; Apple II, 2016 WL 3382464, at *1, *19. Of the
two prior art references, only Natarajan is relevant to this
Board described it, "Natarajan is directed to power
conservation in wireless communication, particularly battery
efficient operation of wireless link adapters of mobile
computers (also referred to, inter alia, as battery
powered computers, hand held or laptop computers, mobile
units, and mobile stations) as controlled by multiaccess
protocols used in wireless communication." Apple
I, 2016 WL 3382361, at *8. Figure 2 of Natarajan depicts
Natarajan, Fig. 2. This block diagram shows mobile stations
10, 12, 14, and 16, which communicate via wireless
transceivers within transceiver adapters 44 and 36 with base
stations 26 and 28, which are in turn connected to server 18.
Id. at col. 2, ll. 32-39, 51-52, 58-59, 65-67.
to Natarajan, "the main idea for minimizing battery
power consumed by wireless link adapters at the mobile
units" depends on the "scheduled access multiaccess
protocol" through which the mobile units communicate
with the base station. Id. at col. 3, l. 59-col. 4,
l. 6, col. 4, ll. 20-23. These protocols "can be
implemented to effectively conserve battery power by suitable
control of the state of transmitter and receiver units at the
portable units (i.e., by scheduling when they should be
turned ON or OFF)." Id. at col. 3, l. 66-col.
4, l. 3. "A desirable solution is one in which the
transmitter (or receiver) consumes power only when it is
actively transmitting a message (or actively receiving a
message)." Id. at col. 4, ll. 3-6.
scheduled multi-access protocol achieves this goal by
dividing time into fixed-length frames, which are themselves
divided into slots. Id. at col. 4, ll. 20-23. Figure
4 of Natarajan shows an exemplary frame:
frame is divided into three subframes: A, B, and C.
Id. at col. 4, ll. 28-38. The first subframe, period
A, is used "for broadcast of [data] packets from base
station to mobile units (outbound traffic)."
Id. at col. 4, ll. 30-32. The second subframe,
period B, is used for "contention-free transfer of all
traffic from mobile units to base station (inbound
traffic)." Id. at col. 4, ll. 33-35. The third
sub-frame, period C, is "for the transfer of all bursty
data traffic in a contention mode from mobile units to base
station (inbound traffic)." Id. at col. 4, ll.
36-38. Each of subframes A and B in this example is
associated with a header, AH and BH, respectively, that is
broadcast by the base station to all mobile stations at the
start of the subframe. Id. at col. 4, ll. 30-35.
Using these headers, each mobile unit can compute exactly
when it should be ready to receive data from the base station
and when it should begin transmitting data to the base
station. Id. at col. 4, 1. 67-col. 5, 1. 2;
id. at col. 5, ll. 20-22. The mobile unit can turn
its receiver or transmitter off to save power during those
time slots in which the mobile unit is not receiving or
transmitting data. Id. at col. 5, ll. 2-6, 23-29.
concurrently filed two IPR petitions related to the '290
patent on December 4, 2014. Apple's first petition
challenged the validity of claims 1-4 of the '290 patent,
and the second challenged the validity of claims 6, 7, 9, and
10. The Board instituted two IPRs on June 25, 2015, as
IPR2015-00369 and IPR2015-00373, respectively. It instituted
the first IPR to determine whether claims 1 to 4 were obvious
over Natarajan and Neve. The Board instituted the second IPR
on the same basis, as well as on the ground that claims 6 and
7 allegedly were obvious over U.S. Patent No. 5, 696, 903 to
Mahany. DSS later disclaimed claims 6 and 7 of the '290
Board issued its final written decisions in both IPRs on June
17, 2016. The Board found that all remaining challenged
claims-claims 1-4, 9, and 10-were invalid as obvious over
Natarajan in view of Neve. Apple I, 2016 WL 3382361,
at *1, *19; Apple II, 2016 WL 3382464, at *1,
DSS conceded that all but one limitation in each of these
claims was disclosed in Nata-rajan and Neve. Apple
I, 2016 WL 3382361, at *10-11. But DSS disputed that
either reference disclosed the limitation "said server .
. . transmitter being energized in low duty cycle RF
bursts." Id. at *11.
Board construed the term "energized in low duty cycle RF
bursts" as "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."
Id. at *4-7. The Board explained that it
"un-derst[oo]d the 'duty cycle' of a transmitter
to be the average ratio of the durations during which the
transmitter is energized to the [total] duration of
communication cycles over the course of network
operation." Id. at *6.
Board then turned to the question of obviousness. Apple
argued that, because the mobile unit transmitters in
Natarajan operated in "low duty cycle RF bursts, "
"it would have been plainly obvious to a [person of
ordinary skill in the art] to have the base station operate
in an analogous manner." Id. at *13 (alteration
in original). Apple explained that, because the "low
duty cycle RF bursts" limitation was not novel and
because "the base and mobile stations have the same
physical structure, " it "would have been no more
than using a known technique to improve similar devices in
the same way." Id.
DSS admitted that Natarajan discloses a system for reducing
power consumption in mobile units, DSS argued that Natarajan
says nothing about doing the same for the base
station transmitter. Id. at *12. DSS noted that
the stated goal of the Natarajan reference is to provide
energy savings for the mobile units, not the base station.
Id. DSS also observed that the base station in
Natarajan uses a different communications scheme than the
mobile units, where the base station transmits ...