Biotronik, Inc.v.Atlas IP, LLC

Patent Trial and Appeal Board

Dec 3, 2015

08011415 (P.T.A.B. Dec. 3, 2015)

Trials@uspto.gov Paper 29
571-272-7822 Entered: December 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ST. JUDE MEDICAL, INC., ST. JUDE MEDICAL S.C., INC.,
PACESETTER, INC., and BIOTRONIK, INC.,
Petitioner,

v.

ATLAS IP LLC,
Patent Owner.
____________

Case IPR2014-009161
Patent 5,371,734
____________

Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

1 Case IPR2015-00534 has been joined with this proceeding.
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I. INTRODUCTION
We have jurisdiction to hear this inter partes review 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. For the reasons discussed herein, Petitioner has
shown by a preponderance of the evidence that claims 6, 11, 14, and 21 of
U.S. Patent No. 5,371,734 are unpatentable.
A. Procedural History
St. Jude Medical, Inc., St. Jude Medical S.C., Inc., and Pacesetter, Inc.
(collectively, “St. Jude”) filed a Petition for inter partes review of claims 6,
11, 14, 21, and 44 of U.S. Patent No. 5,371,734 (Ex. 1001, “the
’734 patent”). Paper 2 (“Pet.”). Atlas IP LLC (“Patent Owner”) filed a
Preliminary Response. Paper 6 (“Prelim. Resp.”). On December 8, 2014,
we instituted an inter partes review of claims 6, 11, 14, and 21 of the
’734 patent on asserted grounds of unpatentability. Paper 7 (“Dec.”).
Subsequent to institution, Biotronik, Inc. (“Biotronik”) filed a Petition
and a Motion for Joinder with the instant proceeding. Biotronik, Inc. v. Atlas
IP LLC, Case IPR2015-00534, Papers 1, 2. We instituted an inter partes
review and granted the Motion, joining Biotronik with St. Jude (collectively,
“Petitioner”) in this inter partes review. Paper 17.
Patent Owner filed a Patent Owner Response to the Petition, Paper 16
(“PO Resp.”), and Petitioner filed a Reply to the Patent Owner Response,
Paper 18 (“Reply”). An oral hearing was held on July 15, 2015, and a
transcript of the hearing was entered into the record. Paper 22.
On October 29, 2015, the United States Court of Appeals for the
Federal Circuit issued precedential opinions in appeals from decisions in two
district court cases involving the ’734 patent. See Atlas IP, LLC v.
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Medtronic, Inc., No. 2015-1071, 2015 WL 6550622 (Fed. Cir. Oct. 29,
2015) (“Medtronic”); Atlas IP, LLC v. St. Jude Med., Inc., 804 F.3d 1185
(Fed. Cir. 2015) (“St. Jude”). Pursuant to our authorization, the parties filed
supplemental briefing addressing the impact of the Medtronic and St. Jude
Federal Circuit opinions on this proceeding. Papers 24, 25, 27.
B. Related Matters
The parties indicate that the ’734 patent has been asserted in several
district court actions. Pet. 1; Paper 5, 1. In one of those cases, Patent Owner
asserted the ’734 patent against St. Jude. Atlas IP, LLC v. St. Jude Med.,
Inc., No. 1:14-cv-21006 (S.D. Fla.). The Federal Circuit recently vacated
the district court’s summary judgment of non-infringement in that case and
remanded for further proceedings. St. Jude, 804 F.3d at 1190. The other
recent Federal Circuit decision was an appeal from summary judgment
rulings by the district court in Atlas IP, LLC v. Medtronic, Inc., No. 1:13-cv-
23309. In that case, the Federal Circuit affirmed the district court’s
summary judgment of non-infringement, reversed the district court’s
summary judgment of no anticipation or obviousness, and remanded for
further proceedings. Medtronic, 2015 WL 6550622, at *10.
C. The ’734 Patent
The ’734 patent relates to a medium access control (“MAC”) protocol
for use in wireless network communications. Ex. 1001, 1:16–30. According
to the Summary of the Invention, the MAC protocol described in the
’734 patent combines beneficial aspects of time division multiple access
(“TDMA”) techniques, such as predictable transmission opportunities, with
aspects of packet reservation multiple access (“PRMA”) techniques, such as
effective allocation of available bandwidth. Id. at 5:14–19. The Summary
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of the Invention further states that the disclosed protocol “obtains significant
reductions in battery power drain by permitting the receivers as well as the
transmitters of the communicator stations to be powered off during a
majority of the time, but selectively and predictably powered on to send or
receive relevant communications.” Id. at 5:25–33.
For communication among a group of communicators, one
communicator is designated as a “hub” and the remaining communicators
are designated as “remotes.” Id. at 5:42–44. Figure 3 of the ’734 patent,
reproduced below, illustrates a communication cycle in accordance with the
MAC protocol described in the ’734 patent:

Figure 3 illustrates communication cycle 70 established by the hub to control
outbound transmissions from the hub to the remotes and to control inbound
transmissions from the remotes to the hub. Id. at 7:12–18. Outbound
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portion 72 begins with information interval 76, during which the hub
transmits control and other information to the remotes. Id. at 11:56–59.
This information indicates the predetermined times when each remote will
be able to participate in the communication cycle. Id. at 11:60–62.
Broadcast interval 78 allows the hub to broadcast the same information to all
of the remotes. Id. at 11:62–66. Directed packet interval 80 allows the hub
to transmit frames to specifically identified remotes. Id. at 11:67–12:1.
Outbound portion 82 concludes with alternative information interval 82,
during which the hub repeats the information provided in information
interval 76. Id. at 12:1–9.
During inbound portion 74, those remotes that have requested a
transmission opportunity to transmit messages to the hub are provided with
an opportunity to do so. Id. at 12:14–17. Figure 3 shows transmission
opportunities 84, labeled “TXOP 1” to “TXOP n.” Id. at Fig. 3. All remotes
initially receive a transmission opportunity (or “Txop”) “with (at least) a
predefined minimum duration on each communication cycle 70, whether or
not they have any frames to transmit.” Id. at 12:27–30. The hub may adjust
the duration of transmission opportunities based on observed traffic patterns
and information received from the remotes regarding the amount of data
each remote has queued for transmission. Id. at 12:30–34. In addition, if a
transmission opportunity is not used by a remote for a predefined number of
communication cycles, the hub may cancel the transmission opportunity for
that remote in subsequent cycles. Id. at 12:41–46. Following transmission
opportunities 84 in inbound portion 74, Txop request interval 86 allows
remotes that recently have joined the group or have not been allocated a
transmission opportunity to transmit messages to the hub to request
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allocation of a transmission opportunity in the next communication cycle.
Id. at 12:47–53.
Based on information about the intervals in a communication cycle
received from the hub, the remotes can determine in advance when they
should expect to receive frames transmitted from the hub and when they
may transmit frames to the hub. Id. at 5:47–54, 13:29–33. As a
consequence, remotes can power down their receivers and transmitters at
other times to conserve battery power. Id. at 5:54–66, 13:33–36.
D. Illustrative Claim
Claims 6, 11, 14, and 21 of the ’734 patent are independent and
contain many of the same limitations. Claim 6 is illustrative of the claimed
subject matter:
6. A communicator for wirelessly transmitting frames to
and receiving frames from a[t] least one additional
communicator in accordance with a predetermined medium
access control protocol, the communicators which transmit and
receive the frames constituting a Group, each communicator
including a transmitter and a receiver for transmitting and
receiving the frames respectively, the medium access control
protocol controlling each communicator of the Group to effect
predetermined functions comprising:
designating one of the communicators of the Group as a
hub and the remaining the [sic] communicators of the Group as
remotes;
the hub establishing repeating communication cycles,
each of which has intervals during which the hub and the
remotes transmit and receive frames;
the hub transmitting information to the remotes to
establish the communication cycle and a plurality of
predeterminable intervals during each communication cycle, the
intervals being ones when the hub is allowed to transmit frames
to the remotes, when the remotes are allowed to transmit frames
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to the hub, and when each remote is expected to receive a frame
from the hub;
the remotes powering off their transmitters during times
other than those intervals when the remote is allowed to
transmit frames to the hub, by using the information transmitted
from the hub;
the remotes powering off their receivers during times
other than those intervals when the remote is expected to
receive a frame from the hub, by using the information
transmitted from the hub;
the hub assigning transmission opportunities to the
remotes, each transmission opportunity being an interval for a
remote to transmit frames to the hub;
the hub transmitting transmission opportunity allocation
information in a frame transmitted by the hub; and
the hub allocating a number of transmission opportunities
during at least one communication cycle which is at least one
less in number than the number of remotes in the Group.
Ex. 1001, 46:16–58.
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E. Grounds of Unpatentability
We instituted an inter partes review of claims 6, 11, 14, and 21 of the
’734 patent on the following grounds of unpatentability:
Reference(s) Basis Challenged Claim(s)
Natarajan 19922 35 U.S.C. § 102(a) 6, 14, and 21
Natarajan 1992 and Bella3 35 U.S.C. § 103(a) 11
Natarajan ’5424 and Bantz5 35 U.S.C. § 103(a) 6, 14, and 21
Natarajan ’542, Bantz, and Bella 35 U.S.C. § 103(a) 11

II. DISCUSSION
A. Claim Construction
The ’734 patent expired on January 29, 2013. See Pet. 14; Ex. 1001.
For claims of an expired patent, the Board’s claim construction analysis is
similar to that of a district court. See In re Rambus, 694 F.3d 42, 46 (Fed.
Cir. 2012). In this context, claim terms “are generally given their ordinary
and customary meaning” as understood by a person of ordinary skill in the
art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d
1303, 1312–13 (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

2 K.S. Natarajan et al., Medium Access Control Protocol for Wireless LANs
(An Update), IEEE P802.11/92-39, Mar. 9, 1992 (Ex. 1011,
“Natarajan 1992”).
3 U.S. Patent No. 4,542,499, issued Sept. 17, 1985 (Ex. 1026, “Bella”).
4 U.S. Patent No. 5,241,542, issued Aug. 31, 1993 (Ex. 1003,
“Natarajan ’542”).
5 U.S. Patent No. 5,123,029, issued June 16, 1992 (Ex. 1014, “Bantz”).
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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).
1. “repeating communication cycles, each of which has intervals during
which the hub and the remotes transmit and receive frames”
Each challenged claim includes the following limitation, referred to
by the parties as the “each” limitation: “repeating communication cycles,
each of which has intervals during which the hub and the remotes transmit
and receive frames.” E.g., Ex. 1001, 46:29–31 (claim 6). In the Decision on
Institution, we construed this claim limitation “to require that each
communication cycle include intervals during which the hub and remotes are
allowed to transmit and receive, without requiring actual transmission of
frames.” Dec. 12. We based our construction on the language of the claims,
including additional language referring to “intervals . . . when the hub is
allowed to transmit frames to the remotes [and] when the remotes are
allowed to transmit frames to the hub.” Id. at 10 (citing Ex. 1001, 46:36–
39). We also considered the written description of the ’542 patent, which
speaks of transmission opportunities during which remotes are provided an
opportunity to transmit messages to the hub. Id. (citing Ex. 1001, 12:14–
17).
After institution, Patent Owner argued that this inter partes review
turns on a single claim construction issue—whether the recited limitation
“requires that, in each communication cycle, there be at least one interval in
which a remote transmits frames to the hub, or whether there need only be
an ‘opportunity’ for such transmission.” PO Resp. 1 (emphasis omitted). In
advocating for the former construction, Patent Owner relied on the district
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court’s holding in Atlas v. Medtronic that “[t]he plain meaning necessitates
the hub and the remotes transmit and receive frames during each
communication cycle, not that the hub and the remotes simply may do so
during a communication cycle as Medtronic argues.” Atlas IP, LLC v.
Medtronic, Inc., No. 1:13-cv-23309, 2014 WL 5305577, at *3 (S.D. Fla.
Oct. 15, 2014); see PO Resp. 2.
After the oral hearing in this proceeding, the Federal Circuit addressed
the proper construction of the “each” limitation in claims of the ’734 patent.
On appeal from summary judgment in the Medtronic case, the Federal
Circuit rejected the district court’s so-called “plain meaning” construction,
also urged by Patent Owner here. Medtronic, 2015 WL 6550622, at *10.
Instead, the Federal Circuit determined that context was necessary to resolve
the facial uncertainty of the claim language. Id. at *8. The court analyzed
the relevant contextual evidence, including the additional claim language
and references to transmission opportunities in the written description that
we cited in our claim construction discussion in the Decision on Institution.
Id. at *9. With analysis similar to ours, the Federal Circuit held, as we did,
that the claim language, properly construed, requires only that each cycle
have one or more intervals in which remotes are allowed to transmit frames.
Id.
Thus, the Federal Circuit, in a precedential opinion, rejected the same
“plain meaning” claim construction argument made by Patent Owner in this
proceeding. Also, as in this proceeding, Patent Owner provided no extrinsic
evidence, so the court construed the disputed limitation based on intrinsic
evidence—the claim language and the written description. Moreover, the
court used the same Phillips-based claim construction approach that the
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Board applies when a patent has expired. Accordingly, in our patentability
analysis we will apply the Federal Circuit’s construction of the “each”
limitation, which, with respect to transmission by remotes, requires only that
each cycle have one or more intervals during which remotes are allowed to
transmit.
2. “the hub transmitting information to the remotes to establish the
communication cycle and a plurality of predeterminable
intervals during each communication cycle”
Each challenged claim includes the following limitation: “the hub
transmitting information to the remotes to establish the communication cycle
and a plurality of predeterminable intervals during each communication
cycle.” E.g., Ex. 1001, 46:32–35 (claim 6). Petitioner proposed that this
“transmitting” limitation be construed as “the hub transmitting to the
remotes information necessary to know in advance the starting time and
duration for the communication cycle and the plurality of predesignated
intervals during each communication cycle.” Pet. 19 (emphasis added). We
did not construe this limitation expressly in the Decision on Institution, and
Patent Owner did not propose a construction in either the Preliminary
Response or the Patent Owner Response. Indeed, the “transmitting”
limitation was not a point of contention during the trial, as the parties
maintained that the proceeding turned on the correct construction of the
“each” limitation and whether the prior art disclosed that limitation. See
PO Resp. 1; Reply 1.
The “transmitting” limitation, however, was at issue in the two district
court non-infringement summary judgment rulings reviewed by the Federal
Circuit. In Medtronic, the Federal Circuit construed the “transmitting”
limitation (in conjunction with “the hub establishing repeating
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communication cycles”) to “require the hub to define and transmit the start
time and duration of each communication cycle and its constituent intervals
in advance,” i.e., before the transmission opportunities for the remotes
begin. Medtronic, 2015 WL 6550622, at *6 (emphasis added). In St. Jude,
vacating summary judgment of non-infringement under the district court’s
erroneous construction, the Federal Circuit further held that the
“transmitting” limitation “does not require that the cycle’s starting time and
duration be communicated to the remotes even earlier, i.e., before the
communication cycle begins.” St. Jude, 804 F.3d at 1188.
The Federal Circuit’s construction of the “transmitting” limitation is
consistent with that proffered by Petitioner in this proceeding in that both
constructions require the hub to transmit the start time and duration of the
communication cycle and its constituent intervals in advance. The Federal
Circuit’s opinions clarify that start time and duration must be transmitted “in
advance” of the time at which the remotes may begin transmitting, but need
not be transmitted “in advance” of the communication cycle. Because the
Federal Circuit construed the “transmitting” limitation in precedential
opinions under the same claim construction standard the Board uses for
expired patents, we will apply the court’s construction of the “transmitting”
limitation in our patentability analysis.
3. “frame”
The parties do not dispute the proper construction of the claim term
“frame,” which we construed in the Decision on Institution as “an ordered
group of bits, such as a packet, used to carry information between network
stations.” Dec. 9. We address this term here only to highlight that “frame”
is used in the ’734 patent in a manner different from how it is used in some
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of the prior art. Id. (citing Pet. 16). Specifically, a “frame” in
Natarajan 1992 and Natarajan ’542 is similar to a “communication cycle” in
the ’734 patent, whereas a data “packet” in Natarajan 1992 and
Natarajan ’542 is equivalent to a “frame” in the ’734 patent. Id. (citing
Pet. 16); see Ex. 1002 ¶ 99.
B. Anticipation by Natarajan 1992—Claims 6, 14, and 21
Petitioner contends that claims 6, 14, and 21 are unpatentable under
35 U.S.C. § 102(a) as anticipated by Natarajan 1992, relying on declaration
testimony of Dr. Zygmunt Haas. Pet. 20–34 (citing Ex. 1002 ¶¶ 78–147).
Patent Owner responds, arguing only that under the proper claim
construction, Natarajan 1992 does not disclose the “each” limitation.
PO Resp. 5–7. Having considered the parties’ contentions and supporting
evidence, we determine that Petitioner has demonstrated by a preponderance
of the evidence that claims 6, 14, and 21 are unpatentable as anticipated by
Natarajan 1992.
1. Natarajan 1992
Natarajan 1992 describes a MAC protocol for wireless local area
networks (LANs). Ex. 1011, 1. The network architecture includes a finite
number of Access Points through which mobile stations communicate.
Id. at 2. Inbound and outbound communication between an Access Point
and mobile stations is structured as a sequence of frames. Id. at 3. Figure 1
shows the frame structure of the MAC protocol described in Natarajan 1992:
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Id. at 3. As shown in Figure 1, a frame contains three time intervals—
Periods A, B, and C. Id. In the first interval (Period A), outbound traffic is
transmitted from the Access Point to mobile stations. Id. In the second
interval (Period B), bandwidth is allocated for contention-free inbound data
transmitted from mobile stations to the Access Point. Id. The third interval
(Period C) is used for contention-based transmission from mobile stations to
the Access Point. Id. During this interval, mobile stations can submit
requests for bandwidth in subsequent frames. Id. at 7.
Immediately before each of Periods A, B, and C, the Access Point
broadcasts control information to the mobile stations in a header, shown as
AH, BH, and CH in Figure 1. Id. at 4. Header AH identifies the start of the
information frame and contains, among other control data, the lengths of
Periods A, B, and C (TA, TB, and TC in Figure 1), as well as the lengths of
Headers AH, BH, and CH (TAH, TBH, and TCH). Id. (Fig. 2 showing
control information in Header AH). These parameters inform the mobile
stations how much time is allocated to each of the intervals and headers in
the current frame. Id. at 4–5. The lengths of the intervals are adjusted to
enable bandwidth to be allocated on a demand-driven basis. Id. at 6.
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Header AH also includes a list of mobile stations that will receive data
packets from the Access Point during Period A. Id. at 4–5. On correct
reception of Header AH, each mobile station can determine whether it will
receive packets from the Access Point during Period A. Id. at 5. A mobile
station that does not expect to receive data during Period A can power down
its receiver at the beginning of Period A, and set a timer to power on the
receiver at the end of Period A, just in time to receive Header BH. Id. at 20.
Header BH identifies the beginning of Period B. Id. at 5. The control
information in Header BH includes a list of ordered pairs indicating the
mobile stations that are allowed to transmit data packets to the Access Point
during Period B, and the number of time slots in Period B allocated to each
mobile station. Id. at 5–6. Based on the information in Header BH, a
mobile station can determine whether it has been allocated slots during
Period B and will power on its transmitter and transmit packets according to
the ordered slot allocation information. Id. at 6, 20.
2. Limitations Common to Claims 6, 14, and 21
We begin our anticipation analysis with the limitations that
independent claims 6, 14, and 21 have in common. Natarajan 1992 discloses
a “communicator” (i.e., mobile station or Access Point) for wirelessly
transmitting to and receiving “frames” (i.e., packets) from an “additional
communicator” (i.e., mobile station or Access Point) “in accordance with a
predetermined medium access control protocol” (i.e., a MAC protocol for
wireless LANs). Ex. 1011, 3; see Pet. 21–22; Ex. 1002 ¶¶ 98–99.
Natarajan 1992 also discloses communicators “constituting a Group,” e.g.,
two mobile stations registered with the same Access Point, as shown in
Figure 7. Ex. 1011, 10; see Pet. 22–23; Ex. 1002 ¶¶ 102–03. Each of
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Natarajan 1992’s communicators (i.e., mobile stations and Access Points)
includes “a transmitter and a receiver for transmitting and receiving frames
respectively.” See Ex. 1011, 20 (mobile stations have transmitters and
receivers); id. at 12 (mobile station units can be Access Points); Pet. 23;
Ex. 1002 ¶¶ 105–06. The MAC protocol disclosed in Natarajan 1992
“designat[es] one of the communicators of the Group as a hub and the
remaining communicators of the Group as remotes” when it explicitly
designates a mobile station to provide the control functions of an Access
Point, leaving the remaining mobile stations to act as remotes. Ex. 1011, 12;
see Pet. 24; Ex. 1002 ¶¶ 109–14; Ex. 1001, 10:39–41 (the ’734 patent
indicating that communicators other than the hub are designated as remotes).
Natarajan 1992 also discloses the “each” limitation. In the MAC
protocol described in Natarajan 1992, the “hub establish[es] repeating
communication cycles” (i.e., sequences of frames having the structure
shown in Figure 1 of Natarajan 1992). Ex. 1011, 3; see Pet. 26; Ex. 1002
¶¶ 115–16. Each communication cycle (frame) has “intervals” during which
the hub transmits frames received by the remotes—Period A (the period for
outbound traffic from the Access Point to the mobile stations), as well as
Headers AH, BH, and CH. Ex. 1011, 4–6; see Pet. 26–27; Ex. 1002 ¶ 117.
With respect to transmission by the remotes, the proper construction
of the “each” limitation requires only that each cycle have one or more
intervals during which remotes are allowed to transmit. See supra
Section II.A.1. Period B is such an interval, as it contains allocated slots
during which individual mobile stations are allowed to transmit packets to
the Access Point. See Ex. 1011, 5–6; Pet. 27; Ex. 1002 ¶ 118. The
individual slots within Period B are also intervals. See Pet. 27; Ex. 1002
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¶ 122. Patent Owner’s argument that Period B is not an interval meeting the
requirements of the claim is unpersuasive because it is premised on an
incorrect claim construction requiring at least one interval in which a remote
actually transmits to the hub. See PO Resp. 5–7. As explained previously,
the Federal Circuit has rejected Patent Owner’s proffered construction of the
“each” limitation. See supra Section II.A.1.
The MAC protocol described in Natarajan 1992 also satisfies the
“transmitting” limitation. As construed by the Federal Circuit, this
limitation requires the hub to define and transmit the start time and duration
of each communication cycle and its constituent intervals before the time at
which the remotes may begin transmitting. See supra Section II.A.2.
Additional claim language requires that the intervals be “ones when the hub
is allowed to transmit frames to the remotes, when the remotes are allowed
to transmit frames to the hub, and when each remote is expected to receive a
frame from the hub.” E.g., Ex. 1001, 46:36–40 (claim 6).
First, Natarajan 1992 discloses the three different types of intervals
recited in the “transmitting” limitation. Period A and Headers AH, BH, and
CH are intervals when the hub (Access Point) is allowed to transmit to the
remotes (mobile stations). Ex. 1011, 4–6; see Pet. 29; Ex. 1002 ¶¶ 124–25.
Period B and its individual slots are intervals when the remotes (mobile
stations) are allowed to transmit to the hub (Access Point). Ex. 1011, 5; see
Pet. 29; Ex. 1002 ¶ 126. Headers AH, BH, and CH are intervals when each
remote is expected to receive a frame from the hub (i.e., when the Access
Point broadcasts control information to the mobile stations). Ex. 1011, 4–6;
see Pet. 29–30; Ex. 1002 ¶ 127.
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Next, Natarajan 1992’s hub (Access Point) defines and transmits the
start time and duration of a communication cycle (frame) before the
transmission opportunities for the remotes (mobile stations) begin.
Specifically, Header AH, transmitted by the Access Point to the mobile
stations at the beginning of a frame, includes parameters identifying the
lengths of Periods A, B, and C (i.e., TA, TB, and TC) and the lengths of
Headers AH, BH, and CH (i.e., TAH, TBH, and TCH). Ex. 1011, 4–5; see
Pet. 27–28; Ex. 1002 ¶¶ 119–20. According to Natarajan 1992, Header AH
identifies the start of the information frame, and the information contained
therein (i.e., TA, TB, TC, TAH, TBH, and TCH) tells the mobile stations the
duration of the frame. Ex. 1011, 4–5; see Pet. 27–28; Ex. 1002 ¶ 120. The
Access Point broadcasts Header AH prior to the time at which the remotes
may begin transmitting, which occurs during Period B. See Ex. 1011, 3
(Fig. 1).
The Access Point in Natarajan 1992 also defines and transmits the
start time and duration of the intervals in the communication cycle (frame)
prior to the time at which the remotes may begin transmitting. As noted,
Header AH, transmitted at the beginning of the frame, contains the timing
information for Periods A, B, and C and for Headers AH, BH, and CH.
Ex. 1011, 4–5; see Pet. 27–28; Ex. 1002 ¶¶ 119–20. In addition, Header BH
contains the timing information for the individual slots in Period B in the
form of an ordered list of mobile stations and the number of slots allocated
to each mobile station, allowing each mobile station to know when and for
how long it may transmit to the Access Point. Ex. 1011, 5–6; see Pet. 28;
Ex. 1002 ¶ 122. Header BH is sent immediately before Period B, and thus is
transmitted before the first remotes (mobile stations) are permitted to
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transmit. See Ex. 1011, 3 (Fig. 1). Because the Access Point transmits the
start time and duration of the frame and all relevant intervals—Periods A, B,
and C; Headers AH, BH, and CH; and the individual slots in Period B—
before the transmission opportunities for the mobile stations begin,
Natarajan 1992 discloses the “transmitting” limitation as construed by the
Federal Circuit.
In supplemental briefing that we authorized after the Federal Circuit
decided the Medtronic and St. Jude appeals, Patent Owner contends
Petitioner did not account for the Federal Circuit’s construction of the
“transmitting” limitation in its unpatentability analysis. Paper 25, 5. We are
not persuaded by Patent Owner’s argument. The Petition, with ample
citation to Natarajan 1992 and to Dr. Haas’s testimony for support, provided
a detailed explanation of when the hub (Access Point) in Natarajan 1992
transmits the start time and duration of both the communication cycle
(frame) and its constituent intervals. See Pet. 26–29 (citing Ex. 1002
¶¶ 115–23). As discussed above, Natarajan 1992’s Access Point transmits
all the relevant timing information in advance of the time at which the
remotes (mobile stations) may begin transmitting (i.e., Period B), which is
all that is required under the Federal Circuit’s construction of the
“transmitting” limitation. For purposes of determining whether
Natarajan 1992 anticipates, it is immaterial that the “transmitting” limitation
does not require the timing information to be transmitted even earlier, i.e.,
before the communication cycle begins.
Finally, Natarajan 1992 discloses the remotes (mobile stations)
“powering off their transmitters during times other than those intervals when
the remote is allowed to transmit frames [and] powering off their receivers
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during times other than those intervals when the remote is expected to
receive a frame from the hub, by using the information transmitted from the
hub.” As set forth in Natarajan 1992, a mobile station uses knowledge of
receiver and transmitter schedules, based on the information transmitted
from the hub in Headers AH, BH, and CH, to minimize power consumption
“when the mobile station is neither actively transmitting nor actively
receiving information.” Ex. 1011, 20; see Pet. 30; Ex. 1002 ¶¶ 129–33.
More specifically, a mobile station turns its transmitter off except (i) during
the slots allocated to the mobile station for transmission during Period B
according to the information received in Header BH, and (ii) if the mobile
station wishes to transmit during contention-based Period C. Ex. 1011, 20.
Similarly, a mobile station turns its receiver off except (i) when it expects to
receive Headers AH, BH, and CH, and (ii) during Period A if the mobile
station is in Header AH’s list of mobile stations that will receive data during
Period A. Id.; see Ex. 1002 ¶ 132.
3. Remaining Limitations in Claims 6, 14, and 21
In addition to the limitations that appear in all of the challenged
claims, Natarajan 1992 discloses the remaining limitations recited in claims
6, 14, and 21. First, as recited in claim 6, Natarajan 1992 discloses “the hub
assigning transmission opportunities to the remotes, each transmission
opportunity being an interval for a remote to transmit frames to the hub”
(i.e., the slots allocated in Period B for mobile stations to transmit to the
Access Point). Ex. 1011, 5–6; see Pet. 31. Natarajan 1992 also discloses
“the hub transmitting transmission opportunity allocation information in a
frame transmitted by the hub” (i.e., slot allocation information transmitted to
the mobile stations in Header BH). Ex. 1011, 5–6; see Pet. 31. Lastly, with
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respect to “the hub allocating a number of transmission opportunities during
at least one communication cycle which is at least one less in number than
the number of remotes in the Group,” Natarajan 1992 explains that some
mobile stations do not have allocated slots in Period B during a particular
frame (i.e., do not have transmission opportunities) and put their receivers to
sleep for the entire length of Period B. Ex. 1011, 20; see Pet. 31–32;
Ex. 1002 ¶¶ 136–37.
Natarajan 1992 also discloses the additional limitations in claim 14
(Ex. 1001, 49:63–68): “the hub establishing the length of each
communication cycle” (i.e., the lengths of Periods A, B, and C, and lengths
of headers AH, BH, and CH) and “the hub transmitting a frame containing
information describing the length of the communication cycle prior to the
end of the communication cycle whose length is established” (i.e., Header
AH, sent at the beginning of a frame, containing the lengths of Periods A, B,
and C, and lengths of headers AH, BH, and CH). Ex. 1011, 4 (Fig. 2); see
Pet. 32–33; Ex. 1002 ¶¶ 140–44.
Finally, Natarajan 1992 discloses “the hub transmitting two frames
containing information to establish the plurality of predeterminable intervals
during each communication cycle,” as recited in claim 21. See Ex. 1001,
51:3–9. Header AH is a first frame containing timing information for
Periods A, B, and C, and for Headers AH, BH, and CH. Ex. 1011, 4–5; see
Pet. 33; Ex. 1002 ¶ 146. Header BH is a second frame containing timing
information for the allocated slots in Period B. Ex. 1011, 5–6; see Pet. 33;
Ex. 1002 ¶ 146. The second frame (Header BH) also “occur[s] before the
intervals in which the remotes are allowed to transmit frames to the hub,” as
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required by claim 21, because it is transmitted before Period B. Ex. 1011, 3
(Fig. 1); see Pet. 34; Ex. 1002 ¶ 147.
4. Conclusion
For the foregoing reasons, we determine that Petitioner has shown by
a preponderance of the evidence that claims 6, 14, and 21 are anticipated by
Natarajan 1992.
C. Obviousness over Natarajan 1992 and Bella—Claim 11
Petitioner contends that claim 11 is unpatentable under 35 U.S.C.
§ 103(a) over the combination of Natarajan 1992 and Bella, relying on
declaration testimony of Dr. Haas. Pet. 34–38 (citing Ex. 1002 ¶¶ 148–67).
With regard to this ground and the other asserted obviousness grounds,
Patent Owner argues only that none of the cited prior art teaches the “each”
limitation under the district court’s construction, which the Federal Circuit
has rejected. See PO Resp. 7–8. As discussed in the previous section,
Natarajan 1992 discloses the “each” limitation under the proper claim
construction.
In addition to reciting limitations included in claim 6, claim 11
requires the hub to “monitor[] the frames transmitted by each remote during
its transmission opportunity” and to “revok[e] a previous transmission
opportunity allocation of a remote which has not transmitted more than a
predetermined number of frames during a previous number of
communication cycles.” Ex. 1001, 48:31–36. For the reasons explained
below, we are persuaded by Petitioner’s argument that the combination of
Natarajan 1992 and Bella teaches these additional limitations and that a
person of ordinary skill in the art would have combined the references in the
manner asserted. See Pet. 34–38.
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Bella describes a system for medium access control in a LAN that
carries data and voice traffic. Ex. 1026, 1:9–16; see Ex. 1002 ¶ 150. Bella’s
system combines contention-based communications with TDMA-like time
slots that may be reserved for voice traffic. Ex. 1026, 2:3–34, 3:10–31; see
Pet. 35; Ex. 1002 ¶¶ 153–54. A communicator device that has voice traffic
to transmit sends a booking packet to reserve a time slot during which it will
regularly transmit speech packets. Ex. 1026, 3:65–4:2, 9:50–55; see
Ex. 1002 ¶ 154. This reservation persists until it is cancelled. Ex. 1026,
10:26–33; see Pet. 35; Ex. 1002 ¶ 154. Cancellation occurs when the
communicator device that has reserved the time slot stops transmitting
packets, so the time slot passes unused. Ex. 1026, 11:9–13; see Pet. 35;
Ex. 1002 ¶ 155. Other stations monitor packets transmitted on the network
and interpret the lack of packets in the time slot as a cancellation of the
reservation. Ex. 1026, 11:9–13; see Pet. 35; Ex. 1002 ¶ 155.
Petitioner relies on a combination of Bella’s time slot cancellation
method with the system of Natarajan 1992 to satisfy the additional
limitations of claim 11. Pet. 34–38; Ex. 1002 ¶¶ 161–67. Like Bella,
Natarajan 1992 describes a system in which mobile stations make
reservation requests for slot allocation. Ex. 1011, 7–8; see Pet. 37–38;
Ex. 1002 ¶ 165. If a mobile station requests isochronous service, the
requested number of slots will be allocated to the mobile station in Period B
of every frame until the mobile station cancels the allocation by sending a
cancellation request. Ex. 1011, 8; see Pet. 36, 38; Ex. 1002 ¶ 166. Thus,
Natarajan 1992 teaches “revoking a previous transmission opportunity
allocation of a remote,” as recited in claim 11, when the hub receives a
cancellation request from the remote. See Pet. 37–38; Ex. 1002 ¶ 166–67. If
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the system of Natarajan 1992 instead utilized Bella’s cancellation method,
which revokes a previous transmission allocation when a remote transmits
no packets in a communication cycle, we are persuaded by Petitioner’s
argument that the combination would result in “the hub revoking a previous
transmission opportunity allocation of a remote which has not transmitted
more than a predetermined number of frames” (zero) “during a previous
number of communication cycles” (one). See Pet. 37–38; Ex. 1002 ¶ 167.
Furthermore, if Natarajan 1992 employed the cancellation technique of
Bella, the hub would be “monitoring the frames transmitted by each remote
during its transmission opportunity.” See Pet. 37; Ex. 1002 ¶¶ 162, 164.
Petitioner also has articulated sufficient reasoning with some rational
underpinning to support the legal conclusion that the subject matter of
claim 11 would have been obvious to one of ordinary skill in the art in view
of the combined teachings of the references. See KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 418 (2007); Pet. 35–37; Ex. 1002 ¶¶ 156–60. According
to Petitioner, for example, the combination would simplify the cancellation
method of Natarajan 1992 by allowing the hub to revoke a time slot
allocation when the remote stops transmitting. Pet. 36; Ex. 1002 ¶ 158.
Relying on Dr. Haas’s testimony for support, Petitioner also asserts that
using Bella’s cancellation method makes even more sense when the remotes
are mobile, as in Natarajan 1992, because they may move outside of the
hub’s range abruptly and be unable to cancel their own reservations. Pet. 37;
Ex. 1002 ¶ 159. Moreover, we are persuaded by Petitioner’s position that
only ordinary skill would be required to implement the reservation and
cancellation method of Bella in the Natarajan 1992 system. See Pet. 37;
Ex. 1002 ¶ 160.
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For these reasons, having considered the parties’ contentions and
supporting evidence, we determine that Petitioner has shown by a
preponderance of the evidence that claim 11 would have been obvious over
the combination of Natarajan 1992 and Bella.
D. Obviousness over Natarajan ’542 and Bantz—Claims 6, 14, and 21
Petitioner contends that claims 6, 14, and 21 are unpatentable under
35 U.S.C. § 103(a) over Natarajan ’542 and Bantz, relying on declaration
testimony of Dr. Haas. Pet. 43–58 (citing Ex. 1002 ¶¶ 195–257). In
response, Patent Owner contends only that Natarajan ’542 does not disclose
the “each” limitation for the same reasons argued with respect to
Natarajan 1992. PO Resp. 7.
1. Natarajan ’542
As Petitioner notes, Natarajan ’542 is a United States patent
describing Natarajan’s work and is similar in substance to Natarajan 1992.
Ex. 1003; see Pet. 43. Figure 4 illustrates the frame structure of the MAC
protocol described in Natarajan ’542:

Ex. 1003, Fig. 4. As shown in Figure 4, a frame contains three time
intervals—Periods A, B, and C—just as in Natarajan 1992. Id. at 4:28–38.
Period A is for outbound traffic from a base station to mobile stations;
Period B is for contention-free inbound traffic from mobile stations to the
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base station; and Period C is for contention-based inbound traffic. Id. As in
Natarajan 1992, immediately preceding each interval is a header containing
control information from which a mobile station can determine when to
power on and off its transmitter and receiver. Id. at 4:41–5:60. Header BH
contains an ordered list of mobile stations that are allowed to transmit data
packets to the base station during Period B and the bandwidth allocated to
each mobile station. Id. at 5:9–19.
2. Bantz
Bantz, which shares a co-inventor with Natarajan ’542, describes a
MAC protocol for use in wireless networks. Ex. 1014. Like Natarajan ’542,
Bantz describes a frame (or communication cycle) with intervals for inbound
and outbound traffic between a base station and mobile stations. See id. at
Fig. 3A. Of particular note is Bantz’s teaching that the protocol described
therein “may be implemented in a distributed file system composed of only
remote stations, one of which is designated as a base station. Moreover, the
designation of the base station can be made to be dynamic . . . .”
Id. at 11:53–57.
3. Analysis
Petitioner contends that Natarajan ’542 teaches most of the limitations
of claims 6, 14, and 21. Pet. 47–58. Petitioner’s detailed analysis is similar
to that presented with respect to anticipation of these claims by
Natarajan 1992, a substantially similar reference. Id. The one exception is
that Petitioner relies on Bantz for teaching the “designating” limitation
recited in each of claims 6, 14, and 21. Id. at 44, 49. We agree with
Petitioner that Bantz teaches designating a “hub” (i.e., base station that
coordinates and relays communications between mobile stations) and
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designating the remaining mobile stations as “remotes.” Ex. 1014, 4:1–18,
11:50–62; see Pet. 49; Ex. 1002 ¶¶ 224–25. We also are persuaded by
Petitioner’s analysis that Natarajan ’542 discloses the remaining limitations
of claims 6, 14, and 21, including the “each” limitation and “transmitting”
limitation as properly construed, for reasons similar to those explained with
respect to anticipation by Natarajan 1992. See Pet. 47–58.
Moreover, we are persuaded that Petitioner has provided sufficient
reasoning with some rational underpinning to support the conclusion of
obviousness based on the combination of Natarajan ’542 and Bantz, which
Petitioner describes as “the incorporation of known techniques (those of
Bantz) for their known functions with a known base system (described in
Natarajan ’542), without unpredictable results.” Id. at 46–47 (citing KSR,
550 U.S. at 415–20); see Ex. 1002 ¶¶ 209–10. For example, Bantz teaches
that the ability to designate a base station dynamically is advantageous in the
event that a currently designated base station should fail, a feature that
would have been desirable in the network disclosed in the related
Natarajan ’542 reference. See Ex. 1014, 11:52–61; Pet. 44–45; Ex. 1002
¶¶ 203–04.
Having considered the parties’ contentions and supporting evidence,
we determine that Petitioner has shown by a preponderance of the evidence
that claims 6, 14, and 21 would have been obvious over the combination of
Natarajan ’542 and Bantz.
E. Obviousness over Natarajan ’542, Bantz, and Bella—Claim 11
Petitioner contends that claim 11 is unpatentable under 35 U.S.C.
§ 103(a) over the combination of Natarajan ’542, Bantz, and Bella, relying
on declaration testimony of Dr. Haas. Pet. 58–59; see Ex. 1002 ¶¶ 262–69.
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Patent Owner makes no additional arguments directed specifically to this
asserted ground. See PO Resp. 7–8.
For reasons discussed in the previous two sections, Natarajan ’542
teaches most of the limitations of claim 11, except for the “designating”
limitation (taught by Bantz) and the “monitoring” and “revoking” limitations
(taught by the combination of Natarajan ’542 and Bella). See Pet. 58–59.
Also for reasons discussed previously, Petitioner has articulated sufficient
reasoning with some rational underpinning to support a conclusion of
obviousness in view of the combined teachings of the references. See id. As
Petitioner points out, the only material difference between Natarajan ’542
and Natarajan 1992 is that although Natarajan ’542 discloses mobile stations
sending bandwidth requests to the base station, it does not expressly disclose
requests for isochronous service, in which bandwidth is reserved in all future
frames until cancelled. See Pet. 58; Ex. 1002 ¶ 262; Ex. 1003, 5:63–64.
Nevertheless, Petitioner contends, with support from Dr. Haas, that carrying
voice and other isochronous traffic would have been desirable in the relevant
timeframe, so that it would have been obvious to add the capability to
Natarajan ’542 by using booking packets as taught by Bella, combined with
Bella’s method for cancelling, or revoking, the reservation. See Pet. 58–59;
Ex. 1002 ¶¶ 262–64.
Having considered the parties’ contentions and supporting evidence,
we determine that Petitioner has shown by a preponderance of the evidence
that claim 11 would have been obvious over the combination of
Natarajan ’542, Bantz, and Bella.
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III. CONCLUSION
Based on the evidence and arguments, Petitioner has demonstrated by
a preponderance of the evidence that (i) claims 6, 14, and 21 of the
’734 patent are anticipated by Natarajan 1992, (ii) claim 11 is unpatentable
for obviousness over the combination of Natarajan 1992 and Bella;
(iii) claims 6, 14, and 21 are unpatentable for obviousness over the
combination of Natarajan ’542 and Bantz; and (iv) claim 11 is unpatentable
for obviousness over the combination of Natarajan ’542, Bantz, and Bella.
IV. ORDER
Accordingly, it is:
ORDERED that claims 6, 11, 14, and 21 of U.S. Patent No. 5,371,734
have been shown to be unpatentable.
This is a final written decision. Parties to the proceeding seeking
judicial review of the decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.

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FOR PETITIONERS:
Matthew A. Smith
Zhuanjia Gu
TURNER BOYD LLP
smith@turnerboyd.com
gu@turnerboyd.com

Jeffrey M. Olson
Matthew S. Jorgenson
SIDLEY AUSTIN LLP
jolson@sidley.com
mjorgenson@sidley.com

FOR PATENT OWNER:
Matthew Pasulka
ATLAS IP, LLC
mpasulka@hotmail.com

George C. Summerfield
STADHEIM AND GREAR, LTD.
summerfield@stadheimgrear.com