Docket No. 2016-2523, -2524 (IPR2015-00369, -00373)
NEWMAN, O’MALLEY, REYNA
March 23, 2018
Brief summary: PTAB FWDs finding DSS’s claims obvious reversed because the PTAB “did not provide a sufficient explanation for its conclusions”.
Summary: DSS appealed PTAB final written decisions (FWDs) finding claims 1-4, 9 and 10 directed to “[a] data network system for effecting coordinated operation of a plurality of electronic devices” unpatentable as obvious in view of the combination of US 5,241,542 (“Natarajan”), US 4,887,266 (“Neve”), and/or US 5,696,903 (“Mahany”). “The only disputed limitation of claim 1” is “said server and peripheral transmitters being energized in low duty cycle RF bursts” (specifically “low duty cycle RF bursts”), which was “the focus of the IPR proceedings below, and…is at the center of the single dispute on appeal.” The PTAB construed the term 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.” Based on this definition, the PTAB concluded the claims are invalid for obviousness, acknowledging “that Natarajan describes only the mobility units…but [noting] that the base units…are conventional microcomputers and contain similar wireless communication components as the mobile units”, one would have been motivated “to apply the same power-conserving techniques to base units”, and “it would have been within the skill of the ordinarily skilled artisan to do so”, “the skilled artisan [being] ‘a person of ordinary creativity, not an automaton” (Leapfrog, FC 2007; KSR, US 2007). The FC panel explained that “[o]bviousness is a question of law based on underlying findings of fact” that are reviewed for substantial evidence, whereas…its legal conclusions” are reviewed de novo (In reKubin, FC 2009; In re Gartside, FC 2000; § 103(a); Arendi, FC 2016). The FC panel also explained that “‘common sense and common knowledge have their proper place in the obviousness inquiry,’ at least ‘if explained with sufficient reasoning’”, “common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation”, can “fill in a missing limitation only when ‘the limitation in question was unusually simple and the technology particularly straightforward’”, and “cannot be used as a wholesale substitution for reasoned analysis and evidentiary support” (Arendi, FC 2016). And, here, the FC panel wrote that “[t]he Board’s invocation of ‘ordinary creativity’ is no different from the reference to ‘common sense’” in Arendi and “the limitation at issue here is ‘unusually simple,’ and the technology is not ‘particularly straightforward’” and “plays a major role in the subject matter claimed”. The FC panel concluded the PTAB’s reasoning (“contained in a single paragraph”) “is not enough to satisfy the Arendi standard” (e.g., Apple expert’s “‘conclusory statements and unspecific expert testimony’ are insufficient to support the Board’s findings” (Arendi; Icon, FC 2017). The Board decision of obviousness was therefore reversed because it “did not provide a sufficient explanation for its conclusions”. Judge Newman’s dissent argued reversal was not the proper response, and it should have remanded for additional explanation or decided the question of law.