Apple Inc v. DSS Technology Management Inc

1. Case Identification

• Case #: IPR: Unassigned
• Patent #: 6,128,290
• Filed: December 4, 2014
• Petitioner(s): Apple Inc.
• Patent Owner(s): DSS Technology Management, Inc.
• Challenged Claims: 6, 7, 9, 10

2. Patent Overview

• Title: Personal Data Network
• Brief Description: The ’290 patent describes a system for bidirectional wireless data communication between a server microcomputer (e.g., a PDA) and multiple peripheral units (e.g., physiological sensors). The system purports to achieve low power consumption and reliable communication through a time division multiple access (TDMA) scheme with a low duty cycle pulsed operation mode.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 9-10 - Claims 9 and 10 are obvious over Barber.

• Prior Art Relied Upon: Barber ("BodyLANTM: A Low-Power Communications System," a 1996 Master's Thesis).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that claims 9 and 10 are only entitled to the patent's 1997 filing date due to new matter (the "20 meters" range limitation), making the 1996 Barber publication prior art. Petitioner argued that Barber, a single reference, discloses a low-power wireless communication system that meets all limitations of claim 9. Barber’s "Hub" was alleged to be the claimed "server microcomputer unit," and its "Personal Electronic Assistants (PEAs)" were the "peripheral units." Barber disclosed a TDMA system using attachment and synchronization beacons to coordinate communication, with the Hub controlling the network. The claimed operating range of "about 20 meters" was allegedly met by Barber's system designed to operate "within the sphere of the body," which it specified as having a 6-10 foot range.
  • Motivation to Combine (for §103 grounds): This ground is based on a single reference, obviating the need for a motivation to combine. Petitioner contended that any minor differences would have been obvious modifications to a person of ordinary skill in the art (POSA).
  • Key Aspects: The validity of this ground hinges on Petitioner's priority date argument, which asserts that the "20 meters" limitation added in the application leading to the ’290 patent prevents claims 9 and 10 from claiming priority to an earlier 1996 application.

Ground 2: Obviousness of Claims 6-7 and 9-10 - Claims 6, 7, 9, and 10 are obvious over Natarajan in view of Neve.

• Prior Art Relied Upon: Natarajan (Patent 5,241,542) and Neve (Patent 4,887,266).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Natarajan disclosed a power-conserving wireless network with a base station ("server") and mobile units ("peripherals") using a scheduled multi-access protocol. Natarajan’s system conserves power by turning units off when not scheduled to transmit or receive. While Natarajan taught the importance of coordinated timing and used timers, it did not explicitly disclose synchronizing the peripheral timers with the base station. Neve was argued to cure this deficiency by teaching a synchronous communication system where a master station provides synchronization signals to slave stations within dedicated time slots to maintain system-wide timing with low power consumption.
  • Motivation to Combine (for §103 grounds): A POSA would combine the teachings because both references address power conservation in wireless networks. A POSA, recognizing the importance of precise timing in Natarajan's scheduled system, would have been motivated to incorporate Neve's conventional synchronization technique to improve the reliability and efficiency of Natarajan's system, a predictable combination of known elements.
  • Expectation of Success: Petitioner asserted a POSA would have had a reasonable expectation of success in combining the systems, as it involved applying a known synchronization solution to a system that would clearly benefit from it.

Ground 3: Obviousness of Claims 6-7 - Claims 6 and 7 are obvious over Mahany.

• Prior Art Relied Upon: Mahany (Patent 5,696,903).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Mahany disclosed a local area network for radio communication between a portable computer (server) and peripheral devices, controlled by a reservation access protocol. Mahany was argued to teach all elements of claim 6, including a server microcomputer with an oscillator for establishing a time base (a crystal reference oscillator stabilizing a VCO), battery-powered portable peripheral units that provide user input, and an RF transmitter for sending commands and synchronizing information via a "SYNC" field in access intervals.
  • Motivation to Combine (for §103 grounds): This ground is based on a single reference. Petitioner argued Mahany alone renders the claims obvious.

4. Key Claim Construction Positions

• "local oscillator": This term, appearing in claims 6 and 9, was identified as a central issue. Petitioner argued there is a significant inconsistency between its use in the claims and its description in the ’290 patent specification. The claims require the peripheral's "local oscillator" to be synchronized with the server's oscillator to maintain a time base. However, the specification allegedly teaches that "crystal oscillators" perform this synchronization function, while "local oscillators" are distinct components that drive the RF antennas. Petitioner argued that under a proper construction consistent with the specification, the claims are invalid for lacking written description support. Petitioner also noted that even under the Patent Owner's allegedly overbroad construction from related litigation ("an oscillator located in a peripheral unit"), the prior art still discloses the feature.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that its grounds were not redundant and that the Board should institute on all asserted grounds. It presented the grounds as having different strengths and weaknesses. For example, Ground 1 (Barber) was presented as strong for relying on a single reference but potentially subject to a priority date dispute. In contrast, Ground 2 (Natarajan and Neve) was argued to be immune to such a dispute, as the references predate the earliest possible priority date, but it requires combining references. Petitioner contended that instituting on only one basis would be prejudicial by denying it the opportunity to present its alternative, and potentially stronger, invalidity theories.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 6, 7, 9, and 10 of the ’290 patent as unpatentable.