IP Law Daily PTAB’s obviousness finding for wireless network patent reversed; lacked sufficient explanation
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Friday, March 23, 2018

PTAB’s obviousness finding for wireless network patent reversed; lacked sufficient explanation

By Cheryl Beise, J.D.

Two final decisions of the Patent Trial and Appeal Board—each finding that certain apparatus claims of a wireless communication network owned by DSS Technology Management were invalid as obvious—have been reversed by the U.S. Court of Appeals for the Federal Circuit, because the Board failed to provide a sufficient explanation for its findings, and a more reasoned explanation could not be gleaned from the record. The Board failed to explain why it would have been obvious to a skilled artisan to modify the base station transmitter claimed in a prior art patent to be "energized in low duty cycle RF bursts," as required by the challenged claims. Circuit Judge Pauline Newman filed a dissenting opinion (DSS Technology Management, Inc. v. Apple Inc., March 23, 2018, O’Malley, K.).

DSS is the assignee of U.S. Patent No. 6,128,290 (the ’290 patent), which was issued in 2000, and 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." Apple filed two petitions for inter partes review, the first challenging the validity of claims 1–4 of the ’290 patent, and the second challenging claims 6, 7, 9, and 10. After the Board instituted review, DSS disclaimed claims 6 and 7. In two substantially similar final decisions, the Board concluded that claims 1–4, 9, and 10 were obvious over a combination of two prior art patents, 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"). DSS appealed.

The parties agreed that independent claim 1 is representative. Claim 1 requires both the server microcomputer and each of the peripheral units to comprise transmitters. 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." The transmitters on both the server microcomputer and the peripheral units must be "energized in low duty cycle RF bursts."

The parties’ dispute focused on whether Natarajan disclosed the "low duty cycle RF bursts" limitation of claim 1. The 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." DSS admitted that Natarajan discloses a system for reducing power consumption in mobile units, but argued that Natarajan says nothing about doing the same for the base station transmitter. Apple, on the other hand, 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."

The Board acknowledged that Natarajan describes only the mobile units as battery-powered devices, but it noted that the base units also are conventional microcomputers and contain similar wireless communication components as the mobile units. Persuaded by Apple’s arguments, the Board found that a person of ordinary skill in the art would have been motivated to modify Natarajan to incorporate the same power-conserving techniques disclosed for the mobile units to the base units as well, and that such a modification would have been within the skill of the ordinarily skilled artisan.

The Board’s conclusion that it would have been obvious to a skilled artisan to modify the base station transmitter in Natarajan to be "energized in low duty cycle RF bursts," as required by the claims of the ’290 patent, was not supported by substantial evidence, according to the Federal Circuit. In Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361-62 (Fed. Cir. 2016), the Federal Circuit explained that "common sense" and "common knowledge"—and "ordinary creativity" invoked by the Board in this case—have a place in the obviousness inquiry if "explained with sufficient reasoning." However, common sense can only supply a missing claim limitation when "the limitation in question was unusually simple and the technology particularly straightforward" and common sense "cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified."

The Board did not provide a sufficient explanation for its reasoning, in the court’s view. As in Arendi, the limitation at issue here was not "unusually simple," and the technology was not "particularly straightforward," yet the full extent of the Board’s analysis was contained in a single paragraph, the court noted. The court also found that a more reasoned explanation could not be gleaned from the record in this case.

To the extent the Board relied on the testimony of Apple’s expert, Dr. Hu (which the Board did not expressly cite), the court found her "conclusory statements and unspecific expert testimony" were insufficient to support the Board’s findings. Dr. Hu and the Board failed to consider that Natarajan’s multi-access protocol imposes different transmission requirements on the base station and the mobile units, the court noted. In the only exemplary embodiment in Natarajan, the base station allocates transmission time slots for a mobile unit only if the base station has data to transmit to the mobile unit. The base station transmitter is energized for the entirety of time during which the base station transmits data to the mobile unit. Moreover, neither Dr. Hu nor the Board addressed how the transmissions of Natarajan’s base station transmitter, if modified, would be characterized by "short periods of intense RF transmission activity on an otherwise quiet data channel," as required by the Board’s own claim construction. "The similarities in transmission hardware cannot close these gaps without additional, reasoned analysis," the court said. The Board’s finding of unpatentability was reversed.

Dissenting opinion. Circuit Judge Pauline Newman filed a dissenting opinion to express her disagreement not only with the majority’s conclusion that the PTAB’s explanation was deficient, but also with the majority’s decision to grant final judgment for DSS. According to Judge Newman, if the Board’s explanation was indeed inadequate, the appropriate appellate action was either (1) to vacate and remand for additional explanation, or (2) to decide this question of law. In this case, the majority neither remanded nor decided the question. "My colleagues’ action in simply reversing the ruling of the PTAB, producing a final judgment of patentability that is purportedly subject to estoppel in any district court proceeding between these parties, is contrary to the body of precedent, and dilutes the purpose of these post-grant proceedings," Judge Newman said.

The case is Nos. 2016-2523 and 2016-2524.

Attorneys: Eric William Buether (Buether Joe & Carpenter LLC) for DSS Technology Management, Inc. Jon Wright (Sterne Kessler Goldstein & Fox, PLLC) for Apple Inc.

Companies: DSS Technology Management, Inc.; Apple Inc.

MainStory: TopStory Patent TechnologyInternet FedCirNews

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