Uniloc 2017 LLC

Patent Trials and Appeals Board

Nov 4, 2020

IPR2019-00964 (P.T.A.B. Nov. 4, 2020)

Trials@uspto.gov Paper 17
571-272-7822 Entered: November 4, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CISCO SYSTEMS, INC.,
Petitioner,

v.

UNILOC 2017 LLC,
Patent Owner.
____________

IPR2019-00964
Patent 6,285,892 B1
____________

Before MINN CHUNG, CHARLES J. BOUDREAU, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

BOUDREAU, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

IPR2019-00964
Patent 6,285,892 B1

2
I. INTRODUCTION
Cisco Systems, Inc. (“Petitioner”) filed a Petition requesting inter
partes review of claims 1, 4, 5, and 8 (the “challenged claims”) of U.S.
Patent No. 6,285,892 B1 (Ex. 1001, “the ’892 patent”). Paper 1 (“Pet.”).
Uniloc 2017 LLC (“Patent Owner”) filed a Preliminary Response. Paper 6
(“Prelim. Resp.”). After reviewing these papers, we determined that
Petitioner had demonstrated a reasonable likelihood of success in proving
that claims 1, 4, 5, and 8 of the ’892 patent are unpatentable, and we
instituted an inter partes review of all challenged claims on the ground set
forth in the Petition. Paper 7 (“Institution Decision” or “Inst. Dec.”).
After institution, Patent Owner filed a Response (Paper 9, “PO
Resp.”), Petitioner filed a Reply (Paper 10, “Pet. Reply”), and Patent Owner
filed a Sur-Reply (Paper 11, “PO Sur-Reply”). An oral hearing in this
proceeding was held on August 26, 2020, and a transcript of the hearing is
included in the record (Paper 16, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6. 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 below, we conclude that Petitioner has shown by a
preponderance of the evidence that claims 1, 4, 5, and 8 of the ’892 patent
are unpatentable under 35 U.S.C. § 103(a).
A. Related Matters
The parties report that the ’892 patent is involved in Uniloc 2017 LLC
v. Google LLC, No. 2:18-cv-00494 (E.D. Tex.), and has also been the
subject of several prior district court actions. Pet. 6; PO Resp. 19.
Additionally, claims 1–8 of the ’892 patent previously were the subject of a
IPR2019-00964
Patent 6,285,892 B1

3
petition for inter partes review filed by Google LLC in Case IPR2019-
01408, in which institution was denied.
B. The ’892 Patent
The ’892 patent, titled “Data Transmission System for Reducing
Terminal Power Consumption in a Wireless Network,” issued September 4,
2001, from U.S. Patent Application No. 09/198,708, filed November 24,
1998. Ex. 1001, codes (21), (22), (45), (54).
The ’892 patent is “directed to a system for reducing power
consumption of networked wireless terminals.” Ex. 1001, 1:7–8. The
system “divides the wireless terminals into sets,” and “instructs the sets of
terminals when to switch from a low-power mode to a data-receiving mode
in order to receive data.” Id. at 1:9–11.
By way of background, the ’892 patent explains that “ATM
(‘asynchronous transfer mode’) is a protocol which was developed to
address problems associated with transmitting multimedia data between
networked devices.” Ex. 1001, 1:18–20. In the case of wireless ATM
networks, two main configurations are disclosed: (1) a base station
architecture in which base stations (“BSs”) control communications among
various wireless terminals (“WTs”); and (2) ad-hoc architectures in which a
particular WT known as the central controller (“CC”) is assigned the task of
controlling communications. Id. at 1:44–57. “In both the base station and
ad-hoc configurations, communications among the various WTs are effected
via a periodic time-division multiple access (‘TDMA’) frame.” Id. at 1:58–
60. The ’892 patent goes on to explain that power saving features have been
incorporated in existing wireless ATM networks. Id. at 2:29–31. “For
example, in one conventional system, the BS/CC issues a reservation
IPR2019-00964
Patent 6,285,892 B1

4
message specifying which WT is to transmit data to a particular slot, and
also which WT is to receive data from a particular slot.” Id. at 2:31–34.
“With this information in hand, the receiving WTs are able to switch
between a low-power (i.e., a ‘power-saving’) mode and a higher power (i.e.,
‘data-receiving’) mode, during which data from appropriate slots can be
received.” Id. at 2:34–38. However, the ’892 patent explains that these
conventional power conservation techniques have significant drawbacks,
such as increased network overhead and requiring additional processing
capabilities in the WTs. Id. at 2:39–3:6.
According to the ’892 patent, “the invention provides various ways of
switching specific sets of WTs between a low-power mode, during which
relatively little power is consumed, and a data-receiving mode, during which
power sufficient to receive and/or process data is consumed.” Ex. 1001,
3:9–13. “By switching the WTs in sets, rather than individually as in the
prior art, the invention is able to reduce the amount of overhead in the
BS/CC, the transmitting WTs, and/or the receiving WTs.” Id. at 3:13–16.
In the operation of an embodiment of the ’892 patent, “the BS/CC
identifies a transmitter and a set of receivers among the plural WTs (e.g., by
examining a message from the transmitter which includes that information).”
Ex. 1001, 3:20–23. “The BS/CC then issues a message to the transmitter
and to the set of receivers, the message identifying the transmitter, the set of
receivers, and a transmission time at which the transmitter transmits the data
to the set of receivers.” Id. at 3:24–28. At the transmission time, the set of
receivers switch from a low-power mode to a data-receiving mode and the
transmitter transmits the data to the set of receivers. Id. at 3:28–34.
According to the ’892 patent, controlling WTs in sets, rather than controlling
IPR2019-00964
Patent 6,285,892 B1

5
each WT individually, “is less computationally intensive, and thus faster,
without significantly increasing the power consumption of the wireless
WTs.” Id. at 3:41–45.
Another disclosed embodiment of the ’892 patent is “a system for
transmitting data among plural WTs in a wireless network.” Ex. 1001, 3:46–
48. In the operation of this embodiment, the BS/CC designates at least one
of the plural WTs as a transmitter, and designates a set of the plural WTs as
able to receive data output to the wireless network by the transmitter. Id.
at 3:48–52. The BS/CC issues a message to the plural WTs identifying the
transmitter and the set of plural WTs. Id. at 3:52–53. “When data is output
over the wireless network, each of the plural WTs determines whether it is
able to receive the data based on the identity of the transmitter.” Id. at 3:53–
56. “Those of the plural WTs which are able to receive the data switch from
a low-power mode to a data-receiving mode in order to receive the data.”
Id. at 3:56–58. In this embodiment, “the transmitting WT is relieved of the
task of determining the destinations of its data” and thus “the transmitting
WT (and the BS/CC, for that matter) is freed up for other processing.” Id.
at 3:59–67.
C. Illustrative Claims
Challenged claims 1 and 5 are the only independent claims of the
’892 patent and are reproduced below with bracketed limitation numbers
added for reference:
1. [1.0] A method of transmitting data among plural terminals
in a wireless network, the method comprising:
[1.1] designating at least one of the plural terminals as a
transmitter, the transmitter for outputting data to the wireless
network;
IPR2019-00964
Patent 6,285,892 B1

6
[1.2] designating a set of the plural terminals as able to receive
data output to the wireless network by the transmitter;
[1.3] issuing a first message to the plural terminals identifying
the transmitter and the set of plural terminals;
[1.4] receiving a request for transmission from the transmitter;
and
[1.5] issuing a second message to the plural terminals that
identifies the transmitter;
[1.6] wherein, each of the plural terminals determines whether
it is able to receive the data based on the second message
that identifies the transmitter; and
wherein
[1.7] those of the plural terminals which are able to receive
the data are enabled to receive the data, and
[1.8] at least one of those of the plural terminals that are not
able to receive the data is enabled to enter a low-power
mode.
Ex. 1001, 12:50–13:5.
5. [5.0] A system for transmitting data among plural terminals
in a wireless network, the system comprising:
[5.1] a controlling apparatus that is configured to:
[5.2] (i) designate at least one of the plural terminals as a
transmitter, the transmitter for outputting data to the
wireless network,
[5.3] (ii) designate a set of the plural terminals as able to
receive data output to the wireless network by the
transmitter,
[5.4] (iii) issue a first message to the plural terminals
identifying the transmitter and the set of plural terminals,
[5.5] (iv) receive a request for transmission from the
transmitter; and
IPR2019-00964
Patent 6,285,892 B1

7
[5.6] (v) issue a second message to the plural terminals that
identifies the transmitter;
[5.7] wherein:
each of the plural terminals determines whether it is able to
receive the data based on the second message that
identifies the transmitter; and
[5.8] those of the plural terminals which are able to receive
the data are enabled to receive the data and
[5.9] one or more of the plural terminals that are not able to
receive the data are enabled to enter a low-power mode.
Id. at 13:18–14:14.
D. Asserted Ground
Petitioner asserts the following ground of unpatentability:
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 4, 5, 8 § 103(a)1 Chen’98,2 Chen’973
Pet. 19–72. Petitioner submits the testimony of Mr. James T. Geier to
support its contentions. Ex. 1003.

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284 (2011), amended 35 U.S.C. §§ 102 and 103, effective March 16,
2013. Because the ’892 patent has an effective filing date prior to March 16,
2013, we refer to the pre-AIA versions of §§ 102 and 103.
2 Jyh-Cheng Chen, Krishna M. Sivalingam, Prathima Agrawal & Shalinee
Kishore, “A Comparison of MAC Protocols for Wireless Local Networks
Based on Battery Power Consumption,” Proc. 17th Ann. Joint Conf. IEEE
Computer and Comm. Societies (1998) (Ex. 1007, “Chen’98”).
3 Krishna M. Sivalingam, Mani B. Srivastava, Prathima Agrawal &
Jyh-Cheng Chen, “Low-power Access Protocols Based on Scheduling for
Wireless and Mobile ATM Networks,” Proc. 6th Int’l Conf. on Universal
Pers. Comm. Rec. (1997) (Ex. 1008, “Chen’97”).
IPR2019-00964
Patent 6,285,892 B1

8
II. ANALYSIS
A. Principles of Law
In an inter partes review, the petitioner has the burden of proving
unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e).
That burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are “such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The legal question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of ordinary skill in the art; and (4) when in evidence,
objective evidence of obviousness or nonobviousness.4 Graham v. John
Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966). One seeking to
establish obviousness based on more than one reference also must articulate
sufficient reasoning with rational underpinnings to combine teachings. See
KSR, 550 U.S. at 418.
B. The Level of Ordinary Skill in the Art
Petitioner asserts that the level of ordinary skill in the art corresponds
to “a bachelor’s degree in computer science, computer engineering, or an
equivalent, and three years of professional experience relating to wireless

4 The record does not include allegations or evidence of objective indicia of
obviousness or nonobviousness.
IPR2019-00964
Patent 6,285,892 B1

9
networking,” and that “[l]ack of professional experience can be remedied by
additional education, and vice versa.” Pet. 14–15 (citing Ex. 1003 ¶¶ 22–
24). Patent Owner “does not provide its own definition” of a person of
ordinary skill in the art. PO Resp. 20–21.
Petitioner’s unopposed proposal is supported by the testimony of
Mr. Geier and is consistent with the ’892 patent specification and the
asserted prior art. Accordingly, we adopt the level of ordinary skill as
articulated by Petitioner.
C. Claim Construction
Because the Petition was filed after November 13, 2018, we interpret
claim terms using “the same claim construction standard that would be used
to construe the claim in a civil action under 35 U.S.C. 282(b).” See Changes
to the Claim Construction Standard for Interpreting Claims in Trial
Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
(Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13,
2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). That is, we apply the
same claim construction standard used by Article III federal courts and the
ITC, both of which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
2005) (en banc), and its progeny. 83 Fed. Reg. 51340 (Oct. 11, 2018).
Under that standard, we construe each challenged claim generally to have
“the ordinary and customary meaning of such claim as understood by one of
ordinary skill in the art and the prosecution history pertaining to the patent.”
37 C.F.R. § 42.100(b) (2019). “[T]he claims themselves provide substantial
guidance as to the meaning of particular claim terms.” Phillips, 415 F.3d
at 1314. However, the claims “do not stand alone” and must be read in view
of the specification, for “the specification may reveal a special definition
IPR2019-00964
Patent 6,285,892 B1

10
given to a claim term by the patentee that differs from the meaning it would
otherwise possess.” Id. at 1315–16. “When the patentee acts as its own
lexicographer, that definition governs.” Continental Circuits LLC v. Intel
Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1315–
16). “To act as its own lexicographer, a patentee must ‘clearly set forth a
definition of the disputed claim term’ other than its plain and ordinary
meaning.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365
(Fed. Cir. 2012) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
1359, 1366 (Fed. Cir. 2002)). In the absence of such a definition, limitations
are not to be read from the specification into the claims. See Hill-Rom
Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). In
addition, “the specification may reveal an intentional disclaimer, or
disavowal, of claim scope.” Phillips, 415 F.3d at 1316. “In those situations,
it is again the inventor’s disavowal that is dispositive of the claim
construction.” Continental Circuits, 915 F.3d at 797. “To disavow claim
scope, the specification must contain ‘expressions of manifest exclusion or
restriction, representing a clear disavowal of claim scope.’” Retractable
Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir.
2011) (quoting Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335
(Fed. Cir. 2009)).
Petitioner argued in the Petition that no claim terms require express
construction “for the purposes of evaluating the prior art in this Petition” but
nonetheless identified and presented constructions for three claim terms for
which it “plan[ned] to assert express constructions . . . in the co-pending
district court litigation based on how these terms are used in the ’892 Patent
and by the Applicant in the file history”: (1) “low-power mode” (claims 1
IPR2019-00964
Patent 6,285,892 B1

11
and 5); (2) “identifying” (claim 1) / “identifies” (claim 5); and (3) “second
message” (claims 1 and 5). Pet. 15–18. In the Institution Decision, we
noted that Patent Owner had offered an alternative construction of “second
message” in its Preliminary Response. Inst. Dec. 8 (citing Prelim. Resp. 5).
After considering the record then before us, we preliminarily adopted
Petitioner’s proposed constructions, as follows:
Claim Term Construction
“low-power mode”
“mode that can be switched to, where a
relatively small amount of power is
consumed by the wireless terminals
relative to the data-receiving mode”
“identifying” / “identifies” “including the address(es) of” / “includes the address(es) of”
“second message” “acknowledgement message to a transmit request”
Inst. Dec. 9–13 (citing Pet. 15–18; Prelim. Resp. 5–6). In its Response,
Patent Owner does not challenge the adopted constructions but merely
contends that “there is no need for construction of any of the terminology as
proposed by Petitioner, as, even under the proposed constructions, the
Petition fails to demonstrate that any claim of the ’892 Patent is
unpatentable.” PO Resp. 38. Neither party further addresses the
construction of these terms in its post-institution briefing (see generally PO
Resp.; Pet. Reply; PO Sur-Reply), and we do not discern any reason to alter
those constructions or our analysis with respect to them. Accordingly, to the
extent necessary for the purposes of this Decision, we maintain the
previously adopted constructions.
IPR2019-00964
Patent 6,285,892 B1

12
Although Patent Owner does not further address construction of any
of the above-identified terms, Patent Owner contends that “Petitioner bases
its patentability challenges on an erroneous implicit claim construction, in
which the recited ‘set of plural terminals’ includes all terminals other than
the transmitter.” PO Resp. 30. According to Patent Owner, when the step of
“designating a set of plural terminals as able to receive data output to the
wireless network by the transmitter” in claim 1 is read “according to its plain
meaning, and in view of the ’892 patent specification, it is clear it should be
construed as ‘designating a set of terminals comprising more than one and
fewer than all of the terminals in the network, that are able to receive data
output to the wireless network by the designated transmitter.’” Id. at 31
(emphasis omitted); see also id. at 37 (“[B]ased upon the intrinsic evidence,
the phrase ‘designating a set of plural terminals as able to receive data output
to the wireless network by the transmitter’ should be construed as
‘designating a set of terminals, comprising more than one and less than all of
the terminals in the network, as able to receive data output to the wireless
network by the designated transmitter.’”).
First, Patent Owner asserts, this claim term corresponds to Step S802
of Figure 8 of the ’892 patent, reproduced below.
IPR2019-00964
Patent 6,285,892 B1

13

Figure 8, above, is a flow diagram showing process steps for implementing a
“second embodiment of the invention.” Ex. 1001, 4:59–60. According to
Patent Owner, “[i]n view of the set of plural terminals being designated after
the designation of the transmitter” in step S801 of Figure 8, “it is clear from
the ’892 Patent Specification that the term ‘set of plural terminals’
corresponds to a subset of the entire group of all plural terminals.”
PO Resp. 32. Quoting disclosure in the ’892 patent that “[t]he present
invention . . . specifies a set of WTs, and then controls the set of WTs,
rather than each WT individually,” Patent Owner further contends that “[t]he
’892 Patent Specification clearly discloses that the set of terminals are a
subset of all the wireless terminals, rather than a set comprising all of the
wireless terminals.” Id. at 32–33 (quoting Ex. 1001, 3:41–45 (emphasis
added)). According to Patent Owner, “the use of sets relieves the
IPR2019-00964
Patent 6,285,892 B1

14
transmitting terminal of determining the destinations for the data, which
saves computational resources,” and “transmission to a particular set of
terminals allows those terminals to be switched over from low-power to
data-receiving mode without individually addressing each terminal.” Id.
at 33 (citing Ex. 1001, 3:59–62, 8:60–65).
Still further, Patent Owner argues, “[t]he Second Embodiment
described in the ’892 Specification makes clear that the designated set of
terminals ‘is less than the total number of other WTs in the network’ and
comprises a subset of all of the terminals of the network that is actively
selected as members of the set,” “not[ing] that in an embodiment, the
designated set of terminals may comprise the terminals that have
connections to the transmitting terminal.” PO Resp. 33–34 (citing Ex. 1001,
9:4–12). Further still, Patent Owner argues that Figure 3 of the ’892 patent,
reproduced below, shows a network in which one terminal (WT 20) is
designated as the transmitter, three terminals (WTs 21–23) are designated as
a set of terminals, and two unnumbered terminals are part of the network but
not part of the designated set. Id. at 34.
IPR2019-00964
Patent 6,285,892 B1

15

Figure 3, above, “shows a network, on which the . . . invention [of the
’892 patent] may be implemented, which has an ad-hoc architecture and a
fully[] connected topology.” Ex. 1001, 4:47–49. According to Patent
Owner, “the description of the Second Embodiment in the ’892 Specification
clearly indicates that the designated set of terminals (WT 21, 22, and 23)
comprise a set of more than one terminal, and fewer than all of the terminals
(two unnumbered, plus 20, 21, and 22) that can receive data from the
designated transmitter terminal.” PO Resp. 35 (citing Ex. 1001, 9:36–40)
(emphasis omitted).
Additionally, Patent Owner contends, “both the First Embodiment and
the Third Embodiment [of the ’892 patent] describe the designation of a set
of terminals as a set that communicate[s] with the designated transmitter
terminal.” PO Resp. 35–36. In particular, Patent Owner argues that the
’892 patent states in relation to the First Embodiment that “the BS/CC
identifies a transmitter and a set of receivers among the plural WTs, where
IPR2019-00964
Patent 6,285,892 B1

16
the transmitter is used to transmit data to the set of receivers,” and that the
’892 patent states in relation to the Third Embodiment that “the BS/CC
divides the plural receiving WTs into sets of power-saving WTs and non-
power-saving WTs . . . [and] [t]he BS/CC then issues a message over the
wireless network instructing the power-saving WTs when to switch between
a low-power mode and a data-receiving mode.” Id. at 36 (emphasis omitted)
(quoting Ex. 1001, 7:29–31, 9:64–10:3). According to Patent Owner,
because the sets in the Third Embodiment “comprise a set including the
power-saving terminals and a set including the non-power-saving terminals,”
“[t]his is also a disclosure that a designated set comprises more than one
terminal and fewer than all of the terminals in the network.” Id. Further,
Patent Owner contends, the ’892 patent’s description of “fixed” sets of
power-saving and non-power-saving WT’s “also makes clear that the sets
comprise fewer than all of the terminals in the network that are able to
receive data.” Id. at 36–37 (citing Ex. 1001, 4:19–31).
Lastly, Patent Owner alleges that a person of ordinary skill in the art
would understand that the term “designating” in the phrase “designating a
set of . . . plural terminals” “requires an active selection of the members of
the set.” PO Resp. 37. Accordingly, Patent Owner contends,
[B]ased upon the intrinsic evidence, the phrase “designating a
set of plural terminals as able to receive data output to the
wireless network by the transmitter” should be construed as
“designating a set of terminals, comprising more than one and
less than all of the terminals in the network, as able to receive
data output to the wireless network by the designated
transmitter.” While the Petition does not explicitly provide a
construction for this claim phrase, the Petition’s arguments that
the combination of Chen ’97 and Chen ’98 allegedly teach this
recitation hinge on an implicit, and erroneous, construction of
IPR2019-00964
Patent 6,285,892 B1

17
this recitation as including all of the terminals in the network
other than the transmitter (“Thus, the “set of mobile IDs”
(other than the “transmitter” mobile) identified by the base
station during the downlink reservation “designat[es] a set of
the plural terminals . . . able to receive data output to the
wireless network by the transmitter.” Pet.[] 42 (emphasis in
original)). Petitioner’s implicit construction is absurd, as, under
this construction, all of the terminals in the wireless network
would be enabled to receive the data, and the Claim 1 recitation
“at least one of those of the plural terminals that are not able to
receive the data is enabled to enter a low-power mode” would
be rendered meaningless. Recognizing this reveals the
obviousness arguments of the Petition to be defective.
Id. at 37–38.
In reply to Patent Owner’s contentions, Petitioner maintains that no
claim terms require construction for the purposes of evaluating the prior art
in the Petition, but that, “[a]lternatively, for the purposes of this proceeding,
it is sufficient to specify that an express construction of the claimed ‘a set of
plural terminals’ includes, for example, all of the terminals in the network
except for the designated transmitter.” Pet. Reply 6. Addressing Patent
Owner’s quotation of the ’892 patent’s disclosure that “[t]he present
invention . . . specifies a set of WTs, and then controls the set of WTs, rather
than each WT individually” (Ex. 1001, 3:41–45 (cited in PO Resp. 32–33)),
Petitioner contends that “nowhere does the quoted passage . . . mention a
‘subset of all the wireless terminals,’ as [Patent Owner] alleges.” Pet.
Reply 7. Therefore, Petitioner argues, “this passage does not place any
restriction on the maximum number of terminals permitted in a set.” Id.
Petitioner further contends that Patent Owner’s argument that the
designated set of terminals in the so-called “second embodiment” of the
’892 patent is less than the total number of other WTs in the network (PO
IPR2019-00964
Patent 6,285,892 B1

18
Resp. 34) “fails for several reasons.” Pet. Reply 7–8. First, Petitioner
contends, Patent Owner improperly imports a limitation from an
embodiment into the claims. Id. at 8. Second, Petitioner asserts, Patent
Owner “relies on disclosure that is permissive (‘WTs may be designated’),
not mandatory,” and, moreover, “[t]he quoted language also refers to a
situation ‘in many wireless networks,’ as opposed to describing all such
wireless networks.” Id. Petitioner argues that “[i]t follows that, in at least
some wireless networks, on terminal will have connections with all
terminals.” Id. (citing Ex. 1001, 9:4–12). Third, the cited portion of the
’892 patent “states that ‘the receiving WTs may be designated as all WTs in
the network which have connections to the transmitting WT,’ which thus
includes the situation where all terminals in the network—which may be as
few as two or three terminals—have connections to the transmitting
terminal.” Id. (quoting Ex. 1001, 9:4–12). Therefore, Petitioner argues,
Patent Owner’s proposed construction improperly limits the claim and is
inconsistent with the specification. Id.
Responding to Patent Owner’s arguments with respect to the “first
embodiment,” Petitioner contends that the specification passage cited by
Patent Owner merely refers to a “set of receivers,” and Patent Owner “offers
no analysis of how or why this passage or the first embodiment supports its
position” that “the claimed ‘set’ is a subset of all the wireless terminals in
the network.” Pet. Reply 9. Regarding the “third embodiment,” Petitioner
contends that Patent Owner provides no explanation as to how the cited
passage disclosing division of plural receiving WTs into “‘sets’ of
‘power-saving WTs’ and ‘non-power-saving WTs’” relates to the method of
claim 1, which recites only a singular set of terminals and recites neither
IPR2019-00964
Patent 6,285,892 B1

19
“power-saving” nor “non-power-saving” terminal types. Id. at 9–10 (citing
PO Resp. 36, 40–41; Ex. 1001, 9:64–10:3). According to Petitioner, Patent
Owner’s “argument is based on construing a term—‘sets’—that is not even
in the claims.” Id. at 10. Moreover, Petitioner points out, although the
application that issued as the ’892 patent originally included sets of claims
that recited “sets of power-saving terminals and non-power-saving
terminals,” all of those claims were cancelled by Patent Owner in response
to a restriction requirement. Id. (citing Ex. 1002 (’892 patent prosecution
history file), 52–61, 91–96).
Still further, Petitioner contends, Patent Owner’s proposed
construction in this proceeding is inconsistent with the position Patent
Owner itself took in a prior District Court litigation asserting the ’892 patent
against Petitioner. Pet. Reply 10–11. In that case, Petitioner asserts, Patent
Owner alleged that the “set” of terminals corresponds to “all scanning
devices within close distance in [Petitioner’s] network.” Id. (quoting
Ex. 1014, 17). According to Petitioner, “[b]ecause this proceeding applies
the same claim construction standard as a district court, it was incumbent on
PO to either advocate for the same construction or explain how its claim
construction here is consistent with its district court arguments.” Id. at 11.
Finally, with respect to Patent Owner’s argument that Petitioner’s
“implicit construction” would render meaningless the limitation that “at least
one of those of the plural terminals that are not able to receive the data is
enabled to enter a low-power mode” (PO Resp. 38), Petitioner contends that
this argument ignores the structure of claim 1 and the distinction therein
between the recited “set of the plural terminals” and the more general
recitation of “plural terminals” in the claim. Pet. Reply 11. In particular,
IPR2019-00964
Patent 6,285,892 B1

20
Petitioner points out that “the ‘set of [the] plural terminals’ is designated
and then identified in the first message, but the remainder of the claim does
not refer to this set of terminals,” but instead simply refers to “plural
terminals,” which, Petitioner contends, “may or may not be part of the
claimed set.” Id. As explained by Petitioner, the recited “first message” in
claim 1 “identifies the set of plural terminals that have been designated as
able to receive data output by the transmitter . . . [, b]ut each terminal in the
wireless network subsequently uses a second message to determine whether
the terminal is able to receive the data.” Id. at 12. According to Petitioner,
the latter determination is not recited as having any relation to the former,
and, indeed, is not even based on the first message that included the
designation. Id. Thus, Petitioner asserts, claim 1 itself “draws a distinction
between the plural terminals in the wireless network generally and the set of
plural terminals referenced only in [the ‘designating’ and ‘issuing a first
message’] limitations” of claim 1, and Patent Owner’s argument that the
“plural terminals” in the final claim limitation must influence the
construction of the “set of . . . plural terminals” in those earlier limitations
“is untethered from the claim language.” Id. at 12–13.
In its Sur-Reply, Patent Owner repeats its contention that the Petition
is keyed to an erroneous construction of “a set of . . . plural terminals.” PO
Sur-Reply 1–15. Patent Owner further contends that Petitioner’s Reply
“impermissibly attempts to cure this deficiency of the Petition by advancing
new—and hence waived—claim construction argument and evidence” and
that, even if the Board were to consider those arguments and evidence, they
still fail to cure the alleged deficiencies arising from Petitioner’s
construction. Id. at 2–3. According to Patent Owner, independent claims 1
IPR2019-00964
Patent 6,285,892 B1

21
and 5 each include “three distinct requirements,” which Patent Owner argues
may be graphically represented by the pie chart reproduced below.

The pie chart reproduced above, titled “The Plural Terminals,” includes a
blue slice labeled “Transmitter(s),” a green slice labeled “Set . . . able to
receive [sic] data,” and a red slice labeled “At least one . . . not able to
receive the data,” together with the annotation “Claim language correctly
symbolized.” Id. at 4.
With reference to the above pie chart, Patent Owner contends:
[T]he claim language itself expressly defines the term “plural
terminals” as at least requiring (i) at least one designated transmitter
(represented as the blue slice), (ii) a designated “set of the plural
terminals able to receive data output to the wireless network by the
designated transmitter” (represented as the green portion) and (iii) “at
least one of those of the plural terminals that are not able to receive
the data is enabled to enter a low-power mode” (represented as the red
slice).
The explicit requirement that “at least one of those plural
terminals are not able to receive the data” would be rendered
meaningless where, as Petitioner erroneously contends, the designated
“set of the plural terminals . . . able to receive data output” allegedly
encompasses all of the terminals in the network except for the
designated transmitter. [Pet.] Reply 6. In other words, the theory set
forth in the Petition is keyed to a construction that essentially reads
IPR2019-00964
Patent 6,285,892 B1

22
out the requirement recited in claim 1 as, “at least one of those of the
plural terminals [is] not able to receive the data.”
PO Sur-Reply 4–5. According to Patent Owner, “Petitioner’s error” is
represented by the following second pie chart:

The pie chart reproduced above, titled “The Plural Terminals,” includes a
blue slice labeled “Transmitter(s)” and a green slice labeled “Set . . . able to
receive [sic] data,” together with the annotation “Petitioner’s erroneous
interpretation.” Id. at 5.
With reference to this second pie chart, Patent Owner contends:
Petitioner advances a logically fallacy in its Reply in a belated and
futile attempt to defend the incorrect claim construction applied in the
Petition. According to Petitioner, the claimed “at least one of those of
the plural terminals that are not able to receive the data” (as recited in
claim 1) “may or may not be part of the claimed set.” [Pet.] Reply 11
(emphasis by Petitioner). While Petitioner has the burden of proof, it
offers no explanation for how a terminal “may . . . be part of the
claimed set,” and hence designated as “able to receive data output to
the wireless network by the designated transmitter,” and yet also
qualify as “not able to receive the data.” Nothing in the record
supports the understanding that these mutually-exclusive
qualifications could possibly be simultaneously present in the same
terminal.
PO Sur-Reply 5–6.
IPR2019-00964
Patent 6,285,892 B1

23
Patent Owner further contends that Petitioner’s construction is
unsupported and would impermissibly exclude preferred embodiments. PO
Sur-Reply 7–14. For example, according to Patent Owner, the “second
embodiment” in the ’892 patent only supports Patent Owner’s interpretation
of the claim language, and the record “simply contains no cognizable
argument as to why the . . . disclosure [of that embodiment], instead,
allegedly supports Petitioner’s construction.” Id. at 7. Moreover, Patent
Owner contends, Petitioner’s interpretation of the recited “set of . . . plural
terminals” to include all terminals other than the designated transmitter
“would result in excluding preferred embodiments where at least some of the
terminals within the network do not have a connection with the designated
transmitter in a manner that satisfies the claimed requirement of being ‘able
to receive data output to the wireless network by the transmitter.’” Id. at 9.
According to Patent Owner, Petitioner’s Reply offers mere attorney
argument and mischaracterizes the disclosure of second embodiment by
focusing on the statement that “the receiving WTs may be designated as all
WTs in the network which have connections to the transmitting WT,” to the
exclusion of the preceding statement that “one WT will have connections to
only a small number of other WTs (i.e., less than the total number of other
WTs in the network).” Id. at 9–10 (quoting Ex. 1001, 9:7–12).
Having reviewed the parties’ arguments and the full record, we agree
with Petitioner that the recited “set of . . . plural terminals” does not have a
special meaning in the context of the challenged claims and that the plain
and ordinary meaning of that phrase may include, for example, all of the
terminals in the network except for the designated transmitter. See Pet.
IPR2019-00964
Patent 6,285,892 B1

24
Reply 6.5 The portions of the ’892 patent cited by Patent Owner do not
persuasively demonstrate that the recited set of plural terminals should be
limited to “more than one and fewer than all of the terminals in the
network.” For example, the cited discussion of the “second embodiment,”
read in context, does not persuasively support Patent Owner’s contentions.
As quoted by Patent Owner, the cited portion describing Figure 8 states:
In step S802, the BS/CC designates a set of the WTs as being
able to receive data only from the transmitting WT designated
in step S801. For example, in many wireless networks, one WT
will have connections with only a small number of other WTs
(i.e., less than the total number of other WTs in the network).
Thus, in step S802, the receiving WTs may be designated as all
WTs in the network which have connections to the transmitting
WT.
Ex. 1001, 9:4–12 (cited by PO Resp. 34). Contrary to Patent Owner’s
suggestion that the cited disclosure “makes clear that the designated set of

5 Contrary to Patent Owner’s contentions in its Sur-Reply, we do not find
Petitioner’s arguments concerning the construction of this term to have been
waived. See PO Sur-Reply 2–3. Petitioner argued in the Petition that no
terms require express construction for the purposes of evaluating the prior
art asserted in this proceeding based on Petitioner’s mapping of the cited art
to the challenged claims (Pet. 15), and we do not understand Petitioner to
have changed course in its response to the contentions in Patent Owner’s
Response. Indeed, Patent Owner does not identify, and we do not discern,
any substantive difference between the “implicit claim construction” Patent
Owner contends “Petitioner bases its patentability challenges on” in the
Petition, on the one hand, and the “express construction” Petitioner recites in
its Reply, on the other hand. Compare PO Resp. 30 (asserting “Petitioner
bases its patentability challenges on an erroneous implicit claim
construction, in which the recited ‘set of plural terminals’ includes all
terminals other than the transmitter”), with Pet. Reply 6 (stating that “for the
purposes of this proceeding, it is sufficient to specify that an express
construction of the claimed ‘a set of plural terminals’ includes, for example,
all of the terminals in the network except for the designated transmitter”).
IPR2019-00964
Patent 6,285,892 B1

25
terminals ‘is less than the total number of other WTs in the network’” (PO
Resp. 34 (emphasis added)), that disclosure instead expressly states that “the
receiving WTs may be designated as all WTs in the network which have
connections to the transmitting WT.” Ex. 1001, 9:10–12 (emphasis added).
The fact that the designated WTs in that example may represent “less than
the total number of other WTs in the network” is stated as being merely a
consequence of the fact that “in many wireless networks, one WT will have
connections with only a small number of other WTs,” not as a result of any
lexicography with respect to the recited “set of . . . plural terminals.”
Patent Owner’s contentions regarding Figure 3 of the ’892 patent and
its corresponding description are similarly unpersuasive. As quoted by
Patent Owner, the cited portion describing Figure 3 states:
For example, with reference to FIG. 3, if WT 20 is the
designated transmitter for WTs 21, 22 and 23, in step S805,
each of these WTs will determine whether the data was
transmitted from WT 20 (as opposed to another transmitter).
Ex. 1001, 9:36–40 (cited by PO Resp. 35). Although there is no dispute that
Figure 3 depicts two unnumbered WTs in addition to WTs 20–23, we find
no suggestion in the ’892 patent that those unnumbered WTs would not be
members of the recited “set of . . . plural terminals.” And even if the
’892 patent had included such a suggestion, that still would not provide a
sufficient basis for us to conclude that claims 1 and 5 require designation of
fewer than all of the terminals other than the designated transmitter. Simply
put, we do not find in the specification of the ’892 patent either any
definition of the term “set” or any “expressions of manifest exclusion or
restriction, representing a clear disavowal of claim scope” rising to the level
IPR2019-00964
Patent 6,285,892 B1

26
of clear and unmistakable disclaimer of the full scope of the word “set.”
Thorner, 669 F.3d at 1367; Retractable Techs., 653 F.3d at 1306.
We also find no inconsistency inherent in all terminals other than the
designated transmitter being initially designated as members of “a set of . . .
plural terminals . . . able to receive data output to the wireless network by
the transmitter” and then at least one terminal later determining that it is not
able to receive the data and thus being enabled to enter a low-power mode.
Cf. PO Sur-Reply 5 (contending Petitioner “offers no explanation for how a
terminal “may . . . be part of the claimed set,” and hence designated as “able
to receive data output to the wireless network by the designated transmitter,”
and yet also qualify as “not able to receive the data”). As Petitioner points
out, the recited “first message” in claim 1 “identifies the set of plural
terminals that have been designated as able to receive data output by the
transmitter . . . [, b]ut each terminal in the wireless network subsequently
uses a second message to determine whether the terminal is able to receive
the data,” and the latter determination is not recited as having any relation to
the former. Pet. Reply 12.
In summary, we conclude that the phrase “set of . . . plural terminals”
should be given its plain and ordinary meaning, where such plain and
ordinary meaning can include, for example, a set containing all of the
terminals in the network except for the designated transmitter.
IPR2019-00964
Patent 6,285,892 B1

27
D. Obviousness of Claims 1, 4, 5, and 8 over Chen’98 and Chen’97
1. Overview of Chen’986
Chen’98, titled “A Comparison of MAC Protocols for Wireless Local
Networks Based on Battery Power Consumption,” is an article describing a
study of energy efficiency of mobile wireless terminals (“mobiles”).
Ex. 1007, 150.7 The study involves a performance comparison between
various medium access control (MAC) protocols for wireless networks,
including the EC-MAC (energy-conserving MAC) protocol. Id. According
to Chen’98, “energy consumption at the MAC level should also be an
important consideration in the design of the MAC protocol for mobile
wireless networks.” Id. Chen’98 describes “an infrastructure network
where a base station coordinates access to one or more channels for mobiles
in its cell.” Id. The channels can be, for example, time slots in TDMA. Id.
Chen’98 explains that a “radio can operate in three modes: standby, receive,
and transmit” and that “the radio consumes more power in the transmit mode
than in the receive mode, and consumes least power in the standby mode.”
Id. Chen’98 discloses that “[o]ne possible way to reduce receiver power-on

6 Petitioner has shown by a preponderance of the evidence that Chen’98
qualifies as prior art under 35 U.S.C. § 102(a). See Pet. 20. In particular,
the record reflects that Chen’98 would have been publicly available no later
than May 10, 1998, based on its April 10, 1998, Library of Congress date
stamp and that Chen’98 was cited by others in papers published as early as
September 1998. See Ex. 1005 ¶¶ 18–29 (Declaration of Ingrid Hsieh-Yee).
These dates are prior to the earliest potential priority date of the ’892 patent
on this record, i.e., November 24, 1998 (see 35 U.S.C. § 102(a); Ex. 1001,
code (22)). Patent Owner does not dispute Chen’98’s status as prior art.
7 For consistency with the parties’ usage, page numbers referenced herein
for Exhibit 1007 refer to the original page numbers of Chen’98 rather than to
the page numbers added by Petitioner.
IPR2019-00964
Patent 6,285,892 B1

28
time is to broadcast a data transmission schedule for each mobile,” which
“will enable a mobile to be in standby mode except during its allotted [sic]
slots.” Id. at 150–151.
A channel access method for the energy-conserving MAC
(“EC-MAC”) protocol disclosed by Chen’98 is illustrated in Figure 1(e),
reproduced below.

Figure 1(e) of Chen’98, above, depicts a transmission frame of the EC-MAC
protocol. Ex. 1007, 151. Chen’98 discloses that the EC-MAC “protocol is
defined using fixed-length frames since each mobile receiver will precisely
know the time of the next beacon transmission,” which “enables the receiver
to power off knowing precisely when the next frame will start.” Id. at 152.
Chen’98 explains that the EC-MAC transmission frame “is divided into
multiple phases: reservation control phase, new-user phase, schedule beacon,
and data phase.” Id. Chen’98 discloses that “[t]he reservation phase is made
collision-less by letting the base station broadcast a list containing the set of
the mobile IDs and the transmission order.” Id. Next, the base station
“broadcasts the transmission schedule for the data phase using a schedule
beacon” that is received by the mobiles. Id. During the data phase, mobiles
“power on the transmitters and receivers at the appropriate time.” Id.
IPR2019-00964
Patent 6,285,892 B1

29
2. Overview of Chen’978
Chen’97, titled “Low-power Access Protocols Based on Scheduling
for Wireless and Mobile ATM Networks,” is an article describing “the
design and analysis of a medium access control protocol called EC-MAC
(Energy Conserving Medium Access Protocol) that supports multimedia
traffic for wireless ATM networks.” Ex. 1008, 429.9 According to
Chen’97, “[t]he objective of protocol design is to develop a low-power
access protocol that will provide support for different traffic types with
quality-of-service (QoS).” Id. Chen’97 describes a network “infrastructure
model where one base station serves all the mobiles currently in its cell.” Id.
Chen’97 discloses “a reservation based approach . . . with appropriate
scheduling of the requests from the mobiles,” which “is utilized to
accomplish the goal of reduced power consumption and support service
quality provision in wireless links.” Id. By way of introduction, Chen’97
explains that “ATM networks are based on a cell-based transport mechanism

8 Petitioner contends that Chen’97 is prior art under 35 U.S.C. § 102(a) and
(b). Pet. 20. We conclude that Petitioner has established by a
preponderance of the evidence that Chen’97 qualifies as prior art at least
under § 102(a). In particular, the record reflects that Chen’97 would have
been publicly available no later than December 17, 1997, based on its
November 17, 1997, Library of Congress date stamp and that Chen’97 was
cited by others in papers published as early as September 1998. See
Ex. 1005 ¶¶ 30–42. These dates are prior to the earliest potential priority
date of the ’892 patent on this record, i.e., November 24, 1998 (see
35 U.S.C. § 102(a); Ex. 1001, code (22)). Patent Owner does not dispute
Chen’97’s status as prior art.
9 For consistency with the parties’ usage, page numbers referenced herein
for Exhibit 1008 refer to the original page numbers of Chen’97 rather than to
the page numbers added by Petitioner.
IPR2019-00964
Patent 6,285,892 B1

30
with the switching provided by high performance hardware,” wherein “[t]he
source and destination establish bidirectional virtual-circuits (VC) for
communication and the ATM network provides sequential delivery of cells.”
Id. Chen’97 discloses that “[e]ach registered mobile is represented by a
unique MACid which may be reassigned after handoff to a new basestation”
and that “[e]ach VC in every mobile is represented by a VCid which is
unique within the mobile.” Id. at 430. A transmission frame for the EC-
MAC protocol disclosed by Chen’97 is illustrated in Figure 2, reproduced
below.

Figure 2 of Chen’97, above, depicts a transmission frame of the EC-MAC
protocol. Id. Chen’97 further discloses that “[c]onserving battery power in
mobiles should be a crucial consideration in designing protocols for mobile
computing.” Id. Chen’97 explains that “[t]ransmission in EC-MAC is
organized by the basestation into frames” and that “[e]ach frame is
composed of a fixed number of slots, where each slot equals the basic unit of
wireless data transmission.” Id. With reference to Figure 2, Chen’97
IPR2019-00964
Patent 6,285,892 B1

31
explains that each transmission frame is divided into multiple phases,
including “Frame Beacon,” “Reservation Phase,” New-User Phase,”
“Schedule Beacon,” and “Downlink and Uplink Data Phases.” Id. at 430–
31.
With respect specifically to the Schedule Beacon phase, Chen’97
discloses that “[t]he basestation broadcasts a beacon that contains the slot
allocations for the subsequent data phase,” and “[t]he data phase includes
downlink transmissions from the basestation, and uplink transmissions from
the mobiles.” Ex. 1008, 431. According to Chen’97:
Each permission consists of a 2-bit type field, the VCid
field and the length field. The allocation information is
grouped based on sender ID with a length field. This approach
is attractive from a power consumption perspective. It reduces
the time the receiver has to be turned on to receive the schedule
information. Table 1[, reproduced below,] lists the different
types of permissions.
Id.

Table 1, above, lists the bit values, MACid, and VCid for each of three
packet types: “Downlink VC,” “Uplink,” and “Peer-to-peer/multicast.” Id.
3. Motivation to Combine Chen’98 and Chen’97
Relying on the testimony of Mr. Geier and the disclosures of Chen’97
and Chen’98, Petitioner contends that a person of ordinary skill in the art
would have been motivated to combine the teachings of the asserted
IPR2019-00964
Patent 6,285,892 B1

32
references for several reasons, including that Chen’98 explicitly refers to
Chen’97 for additional information about the EC-MAC protocol and, thus,
provides an express motivation to incorporate the teachings of Chen’97
(Pet. 24–25 (citing Ex. 1003 ¶¶ 50–51; Ex. 1007, 150, 152, 155, 157;
Ex. 1008, 429)); that the combination would teach a system in which the
schedule beacon identifies the terminals that are to transmit and receive in
certain time slots using MACid and VCid pairing of information, which
would be more efficient than including each receiver ID (id. at 25–30 (citing
Ex. 1003 ¶¶ 52, 53, 59–61, 63, 64, 66–70; Ex. 1007, 150–52, 155; Ex. 1008,
429–31, Table 1)); and that the combined system would perform both peer-
to-peer and multicast communications, where the former “provide faster
communications among terminals and make more efficient use of the
available wireless communication bandwidth,” and the latter “provide[] for
faster and more efficient transmission of information to multiple receiving
terminals” (id. at 30–32 (citing Ex. 1003 ¶¶ 65, 71–73; Ex. 1007, 150;
Ex. 1008, 432)). According to Petitioner, based on Mr. Geier’s testimony,
“[t]he combination of Chen’98 and Chen’97 is merely the ordinary use of
common techniques (e.g., peer-to-peer and multicast transmissions) in the
same EC-MAC protocol to yield predictable and beneficial results (faster
and more bandwidth-efficient data transmissions),” where the results would
have been predictable based on the long use of multicast and peer-to-peer
transmissions in the art, and a person of ordinary skill in the art would have
had a reasonable expectation of success in making the combination. Id.
at 33–34 (citing Ex. 1003 ¶¶ 72, 74–76; Ex. 1008, 430; Ex. 1009, 1042;
Ex. 1011, 123–24). Furthermore, Petitioner contends, “[a]ny modification
of Chen’98’s teachings, including implementing software programming or
IPR2019-00964
Patent 6,285,892 B1

33
hardware, to accommodate the teachings of Chen’97 (including the schedule
beacon format and support for peer-to-peer and multicast data) would have
been within the level of ordinary skill in the art.” Pet. 34–36 (citing
Ex. 1003 ¶¶ 77–79; Ex. 1007, Abstract, Fig. 1(e); Ex. 1008, Abstract,
Table 1).
Patent Owner does not dispute the reasons to combine Chen’98 and
Chen’97 as articulated by Petitioner. See generally PO Resp.
Petitioner’s assertions and explanations are consistent with and
supported by the evidence cited by Petitioner, and, based on the complete
record, we are persuaded that Petitioner has shown sufficiently that a person
of ordinary skill in the art would have been motivated to combine Chen’98
and Chen’97 as Petitioner proposes.
4. Independent Claims 1 and 5
Petitioner asserts that claims 1, 4, 5, and 8 would have been obvious
over Chen’98 and Chen’97. Pet. 36–71. We begin our analysis with
independent claims 1 and 5.
a. [1.0] “A method of transmitting data among plural
terminals in a wireless network” / [5.0] “A system for
transmitting data among plural terminals in a wireless
network, the system comprising: [5.1] a controlling
apparatus . . .”
The preamble of claim 1 recites “[a] method of transmitting data
among plural terminals in a wireless network.” Ex. 1001, 12:50–51. The
preamble of claim 5 recites “[a] system for transmitting data among plural
terminals in a wireless network, the system comprising: a controlling
apparatus that is configured to” perform a list of functions similar to the
method of claim 1. Id. at 13:18–20.
IPR2019-00964
Patent 6,285,892 B1

34
Petitioner treats the preambles of claims 1 and 5 as limitations and
asserts that Chen’98 and Chen’97 both teach these preamble recitations by
virtue of their teaching of the EC-MAC protocol, which “supports
multimedia traffic for wireless ATM networks” and in which a “base station
schedules . . . requests from mobiles” and the mobiles “send out
transmission requests and data traffic.” Pet. 36–38 (quoting Ex. 1007, 152,
155; Ex. 1008, 429), 68–70 (quoting Ex. 1007, 152, 155; Ex. 1008, 429).10
Petitioner further contends that a person of ordinary skill in the art “would
have understood that Chen’98’s base station and mobiles are ‘plural
terminals’ because they transmit and receive data in Chen’98’s wireless
network.” Id. at 37 (emphasis omitted) (citing Ex. 1003 ¶ 93), 69 (citing
Ex. 1003 ¶ 167). Still further, Petitioner contends that because Chen’98
describes a base station that performs “reservation control,” “schedules . . .
requests from mobiles, and then broadcasts the schedule that contains the
slot allocations” (Ex. 1007, 155), and, therefore, controls the timing of
transmissions in the wireless network, it would have been obvious to a
person of ordinary skill in the art that the base station is a “controlling
apparatus” as recited in claim 5. Pet. 70. Moreover, Petitioner contends,
Chen’97 explains that the EC-MAC protocol described in both Chen’98 and
Chen’97 is “extensible to an ad-hoc network by letting the mobiles elect a

10 Because we conclude below that Petitioner has shown sufficiently that the
recitations in the preambles are satisfied by Chen’98 and Chen’97, we need
not determine whether the preambles are limiting. See Vivid Techs., Inc. v.
Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (explaining that
only terms that are in controversy need to be construed, and then only to the
extent necessary to resolve the controversy); Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(applying Vivid Techs. in the context of an inter partes review).
IPR2019-00964
Patent 6,285,892 B1

35
coordinator to perform the functions of the base station,” and Chen’98 and
Chen’97 further teach that the base station (or a mobile performing the
functions thereof) is a controlling apparatus that performs all of the steps and
meets the other limitations recited in claim 5. Id. (quoting Ex. 1008, 430)
(citing Ex. 1003 ¶¶ 170–173).
Patent Owner does not challenge Petitioner’s contentions with respect
to these preamble recitations, and we are persuaded that both Chen’98 and
Chen’97 individually disclose the preambles of claims 1 and 5.
b. [1.1] “designating at least one of the plural terminals as a
transmitter . . .”/ [5.2] “(i) designate at least one of the
plural terminals as a transmitter . . .”
Claim 1 recites “designating at least one of the plural terminals as a
transmitter, the transmitter for outputting data to the wireless network.”
Ex. 1001, 12:52–54. Claim 5 recites the controlling apparatus being
configured to perform a similar function. Id. at 13:21–23.
Petitioner asserts that Chen’98 and Chen’97 teach these limitations by
virtue of their teaching of a base station that generates a reservation control
message identifying a mobile terminal that will transmit during at least one
assigned time slot during a frame. Pet. 38–40 (citing Ex. 1003 ¶¶ 96–102;
Ex. 1007, 152, Fig. 1(e); Ex. 1008, 430), 70. Pointing to Chen’98’s
disclosure that the “base station broadcast[s] a list containing the set of the
mobile IDs and the transmission order” during the reservation control phase
of the EC-MAC protocol and Chen’97’s disclosure that “[e]ach mobile is
allocated one slot during the [uplink] reservation phase,” Petitioner contends
that “[b]y allocating time slots to mobile terminals and generating the ‘list
containing the set of the mobile IDs and the transmission order’ for
transmissions during the uplink reservation control phase, the base station
IPR2019-00964
Patent 6,285,892 B1

36
designates each of the mobiles as a transmitter during a slot in the uplink
reservation control phase.” Id. at 38–39 (quoting Ex. 1007, 152; Ex. 1008,
430) (citing Ex. 1003 ¶ 100). According to Petitioner, “the transmission
order identifies (‘designating’) when a mobile registered with the base
station (‘at least one of the plural terminals’) will transmit its new
connection requests and queue statuses (‘as a transmitter’) to the base
station (‘transmitter for outputting data to the wireless network’).” Id. at 39.
Petitioner contends this step is illustrated in Figure 1(e) of Chen’98. Id.
at 39–40 (citing Ex. 1007, Fig. 1(e); Ex. 1003 ¶ 100).
Patent Owner does not challenge Petitioner’s contentions with respect
to these limitations in its Response, and, having considered Petitioner’s
arguments and cited evidence, we are persuaded that Petitioner has shown
by a preponderance of the evidence that the limitations are taught by
Chen’98 and Chen’97.
c. [1.2] “designating a set of the plural terminals . . .” /
[5.3] “(ii) designate a set of the plural terminals . . .”
Claim 1 recites “designating a set of the plural terminals as able to
receive data output to the wireless network by the transmitter.” Ex. 1001,
12:55–56. Claim 5 recites the controlling apparatus being configured to
perform a similar function. Id. at 13:24–26.
Petitioner asserts that Chen’98 and Chen’97 teach these limitations by
virtue of their teaching of a base station that generates a reservation control
message that includes a list of registered mobile identifiers, where the list
specifies when each identified mobile will transmit, as well as during which
time the other identified mobiles are able to receive. Pet. 41–44 (citing
Ex. 1007, 152, Fig. 1(e); Ex. 1008, 430–31; Ex. 1003 ¶¶ 106–108), 70–71.
IPR2019-00964
Patent 6,285,892 B1

37
Based on Chen’98’s explanation that the uplink reservation phase in the EC-
MAC protocol is “collision-less” and Chen’97’s teaching, for example, that
“[e]ach mobile is allocated one slot during the [uplink] reservation phase,”
Petitioner contends that it would have been obvious to a person of ordinary
skill in the art “that only one mobile at a time transmits its new connection
requests and queue information” and “that the other registered mobiles in the
network do not transmit during that slot.” Id. at 41 (quoting Ex. 1007, 152;
Ex. 1008, 430) (citing Ex. 1003 ¶ 106). More generally, according to
Petitioner, it would have been obvious to a person of ordinary skill in the art
that “when one mobile transmits data, the other registered mobiles in
Chen’98’s wireless network are able to receive the data, either directly or via
relay through the base station.” Id. at 42 (citing Ex. 1003 ¶ 107).
Relying on its claim construction arguments discussed in Section II.C
above, Patent Owner responds that the asserted references fail to disclose the
recited designation of a “set” of terminals because Petitioner’s contentions
rest on a construction of the term “set” as “all of the registered terminals in
the system, except for the transmitting terminal,” whereas “the ’982
Specification makes clear that the set comprises more than one and fewer
than all of the terminals, such as a set of terminals that can communicate
with the transmitting terminal as discussed in relation to Fig. 3 or a set of the
terminals that are power-saving.” PO Resp. 39–40 (citing Ex. 1001, 9:4–12,
9:64–10:3).
Patent Owner further contends that “the ’892 Specification makes
clear that the power savings achieved by the embodiments are because of the
‘fixed’ sets that are designated,” which allow the invention to control sets
rather than controlling each terminal individually and thereby “reduce
IPR2019-00964
Patent 6,285,892 B1

38
network overhead.” Id. at 40–41 (quoting Ex. 1001, 3:41–45, 4:19–31).
According to Patent Owner, “the disclosure in Chen ’98 of a reservation
message that lists all of the terminals other than the transmitting terminal is
nothing more than a disclosure of the deficient prior art that the recited
embodiments are designed to overcome,” as “[i]n a system in which all of
the terminals are identified as a set, the control message must include
additional means to address and control the individual terminals.” Id. at 42
(quoting Ex. 1001, 3:34–41); PO Sur-Reply 17–18.
Further, according to Patent Owner, “the designation of all terminals
as the set in the embodiments of the ’892 Specification would result in
additional power consumption rather than power saving, because each
terminal would be powered to receive data for every transmitter.” PO
Resp. 43. Still further, Patent Owner contends, “Petitioner has failed to
provide a showing that the prior art teaches ‘designating’ the set of plural
terminals,” as “[t]he step of ‘designation’ requires more than a listing of
known information, namely providing a listing of all of the other terminals
in the network, but requires a process of selection or determination.” Id.; see
also PO Sur-Reply 19–20 (asserting that “the step ‘designating a set of the
plural terminals as able to receive data output . . .’ necessarily requires that
‘each of the plural terminals determines whether it is able to receive the
data . . .’” (ellipses in original)).
Having considered the parties’ respective arguments and cited
evidence, we are persuaded that Petitioner has shown by a preponderance of
the evidence that Chen’98 and Chen’97 renders these limitations obvious.
First, for the reasons stated in the Claim Construction section above, we
disagree with Patent Owner’s contention that the required “set” must include
IPR2019-00964
Patent 6,285,892 B1

39
fewer than all registered terminals in the system, except for the transmitting
terminal. See supra § II.C. Patent Owner’s arguments with respect to these
limitations do not persuade us otherwise.
Second, Petitioner does not contend that Chen’98 and Chen’97 teach
specifying and controlling WTs individually. Accordingly, Patent Owner’s
citation of the ’892 patent as touting purported advantages of specifying and
controlling a set of WTs, rather than each WT individually (see Ex. 1001,
3:41–45 (quoted by PO Resp. 41)) has no discernable bearing.
Third, notwithstanding Patent Owner’s attorney argument, we find no
evidentiary support in the record for Patent Owner’s contentions that a
control message would require any “additional means to address and control
the individual terminals” in a system in which all of the terminals other than
the transmitting terminal are designated, as opposed to a system in which
less than all are designated (see PO Resp. 42), or that designation of all
terminals other than the transmitting terminal would result in additional
power consumption (id. at 43). See In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997) (explaining that attorney arguments that are unsupported by
factual evidence are entitled to little probative value). Moreover, even if
Patent Owner had provided support for such contentions, they would
nonetheless be unpersuasive because Patent Owner identifies (and we
perceive) no recitation in claims 1 or 5 of any limitations requiring either
power savings or the absence of “additional means” to address and control
terminals.
Fourth, we agree with Petitioner that the claim language counsels
against Patent Owner’s implied construction of “designating” to require
more than generation of a list of terminals that are able to receive data output
IPR2019-00964
Patent 6,285,892 B1

40
to the wireless network by the transmitter. Pet. Reply 15–16 (citing PO
Resp. 43). Contrary to Patent Owner’s assertion in its Sur-Reply that “the
step ‘designating a set of the plural terminals as able to receive data
output . . .’ necessarily requires that ‘each of the plural terminals determines
whether it is able to receive the data . . .’” (PO Sur-Reply 19–20 (ellipses in
original)), the “determin[ation]” made by “each of the plural terminals . . .
whether it is able to receive the data” is expressly “based on the second
message” (see Ex. 1001, 12:64–66 (claim 1), 14:7–9 (claim 5)), and is,
accordingly, independent of the “designating” step.
Finally, we note that, apart from its contentions that the teachings of
the prior art would not teach or suggest the recited limitations under Patent
Owner’s express and implied proposed constructions, Patent Owner does not
dispute Petitioner’s contentions as to the substantive teachings of Chen’98
and Chen’97 regarding these limitations (see generally PO Resp. 39–44; PO
Sur-Reply 15–20).
d. [1.3] “issuing a first message . . .” / [5.4] “(iii) issue a first
message . . .”
Claim 1 recites “issuing a first message to the plural terminals
identifying the transmitter and the set of plural terminals.” Ex. 1001, 12:57–
58. Claim 5 recites the controlling apparatus being configured to perform a
similar function. Id. at 13:27–28.
Petitioner asserts that Chen’98 and Chen’97 teach these limitations.
Pet. 44–47, 71. First, Petitioner contends, the prior art renders obvious
generating a reservation control message that includes a list of registered
mobile identifiers and their transmission order, for the reasons stated in
connection with the “designating” limitations discussed above. See supra
IPR2019-00964
Patent 6,285,892 B1

41
§§ II.D.4.b, c. Citing Chen’98’s disclosure of the “base station
broadcast[ing] a list containing the set of mobile IDs and the transmission
order,” Petitioner further contends that Chen’98 teaches that the base station
transmits the reservation control message to the mobiles and that each
mobile terminal listed in the downlink reservation message has a
corresponding time slot in the uplink reservation phase. Pet. 45 (citing
Ex. 1007, 152, Fig. 1(e); Ex. 1003 ¶ 114). Further, Petitioner argues,
because the downlink reservation message (i.e., the “first message” in the
parlance of the claims) identifies every registered mobile, it therefore
“identif[ies] the transmitter and the set of plural terminals,” as recited in
claims 1 and 5. Id. at 45–46 (citing Ex. 1003 ¶¶ 111–116).
Patent Owner does not challenge Petitioner’s contentions with respect
to these limitations in its Response, and, having considered Petitioner’s
arguments and cited evidence, we are persuaded that Petitioner has shown
by a preponderance of the evidence that the limitations are taught by
Chen’98 and Chen’97.
e. [1.4] “receiving a request . . .” / [5.5] “(iv) receive a
request . . .”
Claim 1 recites “receiving a request for transmission from the
transmitter.” Ex. 1001, 12:59. Claim 5 recites the controlling apparatus
being configured to perform a similar function. Id. at 14:1–2.
Petitioner asserts that Chen’98 and Chen’97 teach these limitations by
virtue of their teaching that, during the uplink phase, “each registered mobile
transmits new connection requests and queue status” and the base station
receives uplink request transmissions from the mobiles. Pet. 47 (citing
Ex. 1007, 152; Ex. 1008, 431), 71. Relying on the testimony of Mr. Geier,
IPR2019-00964
Patent 6,285,892 B1

42
Petitioner argues that a person of ordinary skill in the art would have
understood that the transmission from a mobile during the uplink reservation
phase is a “request,” as recited in claims 1 and 5. Id. (citing Ex. 1003
¶¶ 117–119).
Patent Owner does not challenge Petitioner’s contentions with respect
to these limitations in its Response, and, having considered Petitioner’s
arguments and cited evidence, we are persuaded that Petitioner has shown
by a preponderance of the evidence that the limitations are taught by
Chen’98 and Chen’97.
f. [1.5] “issuing a second message . . .” / [5.6] “(v) issue a
second message . . .”
Claim 1 recites “issuing a second message to the plural terminals that
identifies the transmitter.” Ex. 1001, 12:61–62. Claim 5 recites the
controlling apparatus being configured to perform a similar function. Id.
at 14:3–4.
Petitioner asserts that Chen’98 and Chen’97 teach these limitations by
virtue of Chen’98’s teaching that, during the schedule beacon phase, the
“base station . . . broadcasts the transmission schedule for the data phase
using a schedule beacon,” which, Petitioner contends, a person of ordinary
skill in the art would have understood from Chen’97 to include, among other
things, the sender ID. Pet. 49–51 (citing Ex. 1007, 152, 155; Ex. 1008, 431;
Ex. 1003 ¶¶ 122, 123, 125), 71. “By including the sender ID,” Petitioner
contends, “the schedule beacon ‘identifies the transmitter.’” Id. at 51
(emphasis omitted) (citing Ex. 1003 ¶ 125). Petitioner further contends that
“because the base station uses the new connection requests and queue status
information for a mobile terminal to allocate time slots to the mobile
IPR2019-00964
Patent 6,285,892 B1

43
terminal, the transmitter of new connection requests and queue status
information during the reservation control phase is the same transmitter
identified in the schedule beacon.” Id. (citing Ex. 1003 ¶ 125). Moreover,
Petitioner contends that the prior art renders this limitation obvious under
Petitioner’s proposed construction of “second message,” which we have
adopted for purposes of this Decision, as “acknowledgement message to the
transmit request,” in view, for example, of Chen’97’s disclosure that the
“basestation transmits all the acknowledgments and registration information
for each mobile in the . . . beacon.” Id. at 54 (emphases omitted) (quoting
Ex. 1008, 431); see supra § II.C.
Patent Owner does not challenge Petitioner’s contentions with respect
to these limitations in its Response,11 and, having considered Petitioner’s
arguments and cited evidence, we are persuaded that Petitioner has shown
by a preponderance of the evidence that the limitations are taught by
Chen’98 and Chen’97.

11 Patent Owner previously challenged Petitioner’s showing with respect to
these limitations in its Preliminary Response, arguing that neither of the
asserted references discloses an acknowledgement message that includes an
identification of the intended receivers of the transmitted data, as would
have been required under the construction of “second message” Patent
Owner proposed in the Preliminary Response. Prelim. Resp. 7–11. For
reasons explained in the Institution Decision, we were persuaded by
Petitioner’s claim construction arguments and evidence presented with the
Petition that a person of ordinary skill in the art would have understood the
references to disclose that a reservation control message includes an
identification of a transmitter and that a subsequent schedule beacon
identifies, inter alia, that same transmitter. See Inst. Dec. 11–13, 24–27.
Patent Owner does not allege any error with respect to those conclusions in
its Response, and we discern no basis on the full record developed during
trial to arrive at any different conclusion in this Decision.
IPR2019-00964
Patent 6,285,892 B1

44
g. [1.6] / [5.7] “wherein [] each of the plural terminals
determines . . .”
Claims 1 and 5 each recite “wherein [] each of the plural terminals
determines whether it is able to receive the data based on the second
message that identifies the transmitter.” Ex. 1001, 12:64–66, 14:6–9.
Petitioner asserts that Chen’98 and Chen’97 teach these limitations by
virtue of their teaching that the scheduling beacon (i.e., the “second
message”), which identifies for each slot in the data phase which mobile will
transmit, provides the information used by other mobiles to determine
whether and when they will receive data. Pet. 55 (citing Ex. 1007, 152), 71.
According to Petitioner, because Chen’98 teaches that each data
transmission is allocated a unique time slot such that data transmissions
occur without collision, it would have been obvious to a person of ordinary
skill in the art that each mobile would use the information in the scheduling
beacon to determine whether it is able to receive data during each time slot
in the data phase. Id. at 55–56 (citing Ex. 1007, 155; Ex. 1003 ¶ 132). For
instance, Petitioner contends that it would have been obvious to a person of
ordinary skill in the art that “a mobile in the wireless network would use the
VCid’s in the schedule beacon,” as assigned by the base station, “to identify
slots allocated to virtual circuits to which the mobile is connected (i.e.,
‘whether [the mobile] is able to receive the data’)”; that “[d]uring the slots
allocated for transmission by other mobiles to the mobile’s virtual circuits,
the mobile would turn on its receiver to receive the data for the virtual
circuits”; and that the mobiles receiving the schedule beacon would
recognize, via the beacon, that one or more slots were allocated to a virtual
circuit instantiated between themselves and the sending mobile and therefore
IPR2019-00964
Patent 6,285,892 B1

45
would have determined that they were able to receive the data transmission
during the allocated slots. Id. at 58–59 (citing Ex. 1008, 430–431; Ex. 1003
¶¶ 134–136).
In response to Petitioner’s arguments, Patent Owner contends that the
cited prior art “does not teach or suggest a system or method in which each
of the terminals in a network determines whether it is able to receive data
from a particular transmitter based upon a second message that identifies the
transmitter,” but that Petitioner’s argument relating to this element is instead
that “each terminal determines whether it is going to receive data based upon
a schedule beacon that includes the transmission schedule for each
terminal.” PO Resp. 44 (emphasis omitted). According to Patent Owner,
the portions of Chen’98 cited by Patent Owner “make clear that powering on
is based upon the schedule received by the terminals, not the identity of the
transmitting terminal in a second message.” Id. at 45 (emphasis omitted).
Patent Owner further contends that, “even assuming arguendo that the
[s]chedule beacon includes the identity of the transmitting terminal, both the
Petitioner and Chen ’97 make clear that the individual terminals determine
whether they are able to receive the data based upon the scheduling data that
indicates when the terminal is to receive data, not based upon data
identifying the transmitting terminal in a second message.” Id. at 46. In the
system of Chen’97, Patent Owner contends, “the individual terminals are not
able to determine whether they are able to receive data based solely on the
identity of the transmitter in a message, because the individual terminals are
not assigned or designated as being able to receive data from only particular
transmitting terminals.” Id. at 46–47. In other words, Patent Owner argues,
“a terminal could receive the identity of a transmitting terminal, but would
IPR2019-00964
Patent 6,285,892 B1

46
not be able to determine whether it is able to receive data from that
transmitting terminal based upon that information alone.” Id. at 47. In
contrast, Patent Owner contends, “in the embodiments recited in the
independent claims, each of the terminals in a network is able to determine
whether it is able to receive data from a particular transmitter based solely
on the identity of the transmitter provided in the second message.” Id. at 48.
Thus, Patent Owner contends, “the cited prior art does not teach or suggest a
system or method in which each of the terminals in a network determines
whether it is able to receive data from a particular transmitter based upon a
second message that identifies the transmitter.” Id. at 48–49.
Having considered the parties’ respective arguments and cited
evidence, we are persuaded that Petitioner has shown by a preponderance of
the evidence that Chen’98 and Chen’97 renders this limitation obvious.
Patent Owner’s arguments appear to be premised on an implicit construction
of “based upon a second message that identifies the transmitter” as “based
on the identity of the transmitter,” such that the terminals must be powered
on based on the identity of the transmitter. We find no basis for construing
the claim language so narrowly. Patent Owner does not dispute that the
terminals in the cited art determine whether they are able to receive data
based on the schedule beacon or that the schedule beacon includes the
identity of the transmitting terminal. See PO Resp. 46 (“Chen ’97 make[s]
clear that the individual terminals determine whether they are able to receive
the data based upon the scheduling data that indicates when the terminal is to
receive data . . . .”).12 The challenged claim limitation requires no more,

12 Patent Owner appears to advance for the first time in its Sur-Reply a new
argument that the plural terminals’ determination whether they are able to
IPR2019-00964
Patent 6,285,892 B1

47
and, accordingly, we conclude that Petitioner has shown by a preponderance
of the evidence that the prior art teaches this limitation.
h. [1.7] / [5.8] “[wherein] those of the plural terminals which
are able to receive the data are enabled to receive the data”
Claims 1 and 5 each recite “wherein [] those of the plural terminals
which are able to receive the data are enabled to receive the data.” Ex. 1001,
12:67–13:2, 14:6, 14:10–11.
Petitioner asserts that Chen’98 and Chen’97 teach these limitations by
virtue of their teaching of mobiles powering their receivers on at appropriate
times in the data phase based on the received schedule beacon broadcast by
the base station. Pet. 59–60 (citing Ex. 1007, 150–52, 155), 71. Petitioner
further contends it would have been obvious to a person of ordinary skill in
the art to compare the VCid field disclosed by Chen’97 to the mobile’s list
of active virtual circuits to determine whether the mobile is the intended
recipient of the data to be transmitted during the slot and, accordingly, for

receive data cannot be based on timing. See PO Sur-Reply 20–21 (“[U]se of
a schedule beacon to dictate when a terminal is going to transmit and receive
data is distinguishable on its face from the distinct recitation, ‘each of the
plural terminals determines whether it is able to receive the data,’ . . . .”).
This argument is untimely. Consolidated Trial Practice Guide 74 (Nov.
2019) (“Consolidated TPG”), available at https://www.uspto.gov/
TrialPracticeGuideConsolidated (“Generally, a reply or sur-reply may only
respond to arguments raised in the preceding brief. 37 C.F.R. § 42.23,
except as noted above. ‘Respond,’ in the context of 37 C.F.R. § 42.23(b),
does not mean proceed in a new direction with a new approach as compared
to the positions taken in a prior filing. While replies and sur-replies can help
crystalize issues for decision, a reply or sur-reply that raises a new issue or
belatedly presents evidence may not be considered.”). Even apart from its
untimeliness, we find that argument unpersuasive, as we discern no support
in the record for such a narrow interpretation of the claim phrase “whether it
is able.”
IPR2019-00964
Patent 6,285,892 B1

48
the mobile to power on its receiver to receive the data. Id. at 61 (citing
Ex. 1003 ¶¶ 134, 143).
Patent Owner does not challenge Petitioner’s contentions with respect
to this limitation in its Response, and, having considered Petitioner’s
arguments and cited evidence, we are persuaded that Petitioner has shown
by a preponderance of the evidence that the limitation is taught by Chen’98
and Chen’97.
i. [1.8] / [5.9] “[wherein] at least one of those of the plural
terminals that are not able to receive the data is enabled to
enter a low-power mode”
Claim 1 recites “at least one of those of the plural terminals that are
not able to receive the data is enabled to enter a low-power mode.”
Ex. 1001, 13:3–4. Claim 5 similarly recites “one or more of the plural
terminals that are not able to receive the data are enabled to enter a low-
power mode.” Id. at 14:13–14.
Petitioner asserts that Chen’98 and Chen’97 teach these limitations by
virtue of their teaching that the disclosed broadcast of a data transmission
schedule for each mobile allows a reduction of receiver power-on time by
“enabl[ing] a mobile to be in standby mode except during its allot[t]ed
slots.” Pet. 62 (quoting Ex. 1007, 150–51) (citing Ex. 1003 ¶ 146), 71.
Likewise, Petitioner contends, “Chen’97 further teaches that its use of
schedule beacons to reserve time slots for data transmissions reduces power
consumption” and “further explains that the use of schedule beacons in the
EC-MAC protocol ‘is attractive from a power consumption perspective’
because it ‘reduces the time the receiver has to be turned on to receive the
schedule information.’” Id. at 62 (quoting Ex. 1008, 431) (citing Ex. 1008,
Abstract). Because Chen’97 and Chen’98 describe the standby mode as
IPR2019-00964
Patent 6,285,892 B1

49
reducing a mobile’s power consumption, Petitioner contends, it would have
been obvious to a person of ordinary skill in the art that the standby mode is
a “low-power mode.” Id. at 62–63 (citing Ex. 1003 ¶ 143). Moreover,
Petitioner contends, in light of the peer-to-peer and multicast transmission
examples provided by Chen’97, it would have been obvious to a person of
ordinary skill in the art that the mobiles not participating in the peer-to-peer
or multicast transmission “would not be intended recipients of the
transmitted data and would therefore turn off their respective receivers
during the time slot allocated for the peer-to-peer or multicast transmission.”
Id. (citing Ex. 1003 ¶ 148). Petitioner further contends, “Chen’97 confirms
that standby mode is a ‘low-power mode’ because it consumes substantially
less power than either transmit or receive modes.” Id. at 63 (citing Ex. 1008,
430 (stating that an exemplary radio “requires 1.725W in transmit, 1.475W
in receive, and 0.08W in standby modes”)).
In response to Petitioner’s arguments, Patent Owner contends that
neither Chen’98 nor Chen’97 teaches this limitation and that Petitioner’s
arguments are based on an unsupported, conclusory statement by its
declarant. PO Resp. 49–51. In particular, Patent Owner argues that
Petitioner’s contention that it would have been obvious to a person of
ordinary skill in the art that non-participating mobiles would turn off their
receivers during the time slot allocated for peer-to-peer or multicast
transmission (see Pet. 63) contradicts Mr. Geier’s testimony that, in
Chen’98, “the schedule beacon provides a benefit of informing mobile
terminals when to transmit and receive data so that the terminals can remain
in ‘standby’ mode when not transmitting or receiving in order to conserve
power, thereby extending extend battery life.” PO Resp. 50 (quoting
IPR2019-00964
Patent 6,285,892 B1

50
Ex. 1003 ¶ 144 (emphasis added)). According to Patent Owner, Mr. Geier
“does not explain how, if the terminals that are not able to receive data are
already in the low-power state, they can be further enabled to enter into a
low-power state,” and “[i]n fact, there can be no such explanation, because
the Declarant’s position contradicts the express teaching of Chen ’98.” Id.
at 50–51. Still further, Patent Owner contends, “it is not clear how it is
possible that there are any terminals that are not able to receive data, when
the Petitioner has construed the set of plural terminals able to receive data
output as comprising ALL of the terminals except the transmitting terminal,”
as that construction “is logically inconsistent with the assertion that the prior
art teaches at least one terminal not able to receive data.” Id. at 51 (citing
Pet. 43).
In its Reply, Petitioner responds that “[t]he prior art teaches multiple
examples where a terminal in a higher-power receiving mode—including
1) to receive scheduled data or 2) to receive the schedule beacon itself—
turns off its receiver and enters a low-power standby mode for data phase
slots where no data is scheduled.” Pet. Reply 25 (citing Pet. 61–64). First,
Petitioner contends, “Patent Owner ignores the prior art’s teaching that a
terminal powers on its receiver to receive data during slots allocated in the
schedule beacon for the transmission of data to the mobile, and during the
remaining slots, the mobile will not have its receiver on but instead will be
in ‘standby mode.’” Id. (citing Pet. 62; Ex. 1007, 150–151). Thus,
according to Petitioner, “in transitioning to standby mode after receiving
data, the terminal ‘is enabled to enter a low-power mode.’” Id. Second,
Petitioner contends, “Patent Owner also ignores the prior art’s teaching that
IPR2019-00964
Patent 6,285,892 B1

51
‘receiver power-on time’ includes receiving the beacon itself.” Id. at 26
(citing Pet. 63; Ex. 1008, 431).
Petitioner further responds that Patent Owner’s argument alleging that
“it is not clear how it is possible that there are any terminals that are not able
to receive data” under a construction in which the set of plural terminals able
to receive data output may comprise all of the terminals except the
transmitting terminal (PO Resp. 51) also fails “because . . . it assumes that
the ‘plural terminals’ in limitation [1.8] has antecedent basis in the ‘set of
plural terminals’ in limitation [1.2] when in fact it does not.” Pet.
Reply 26–27 (brackets in original). Rather, Petitioner argues, “‘those of the
plural terminals’ of limitation [1.8] refers to limitation [1.6],” in “which each
terminal makes a determination of whether it is able to receive the data—a
determination that is independent of the ‘designating’ step recited in
limitation [1.2].” Id. at 27 (brackets in original).
In the Sur-Reply, Patent Owner asserts that Petitioner’s Reply fails to
identify any express or even inherent disclosure in either cited reference
allegedly disclosing this limitation. PO Sur-Reply 22. Patent Owner
contends that “[t]his limitation requires a logical interrelationship—i.e., the
‘at least one’ terminal is defined as ‘not able to receive the data’ and,
consequently, it ‘is enabled to enter a low-power mode’” and that “Petitioner
glosses over the deficiencies of the Petition arising from these explicit and
interrelated requirements.” Id. Further, according to Patent Owner,
While Petition points to disparate portions of the cited
references allegedly disclosing that the transmission schedule
dictates when each mobile will enter a standby mode, Petitioner
does not even allege, much less prove attempt to prove, that the
mobile is not able to receive the data had it been transmitted to
that mobile. Petitioner appears to turn the claim language on its
IPR2019-00964
Patent 6,285,892 B1

52
head by asserting a combination that allegedly teaches a mobile
receives no transmissions, even if it is otherwise able to do so,
merely because a schedule places it in a standby mode when no
transmissions to that mobile are individually allocated. This
falls far shot [sic] of meeting Petitioner’s burden of proof for
this claim language.
Id.
Having considered the parties’ respective arguments and cited
evidence, we are persuaded that Petitioner has shown by a preponderance of
the evidence that Chen’98 and Chen’97 renders these limitations obvious.
Notwithstanding Patent Owner’s contention that Petitioner’s “sole basis [] is
the unsupported conclusory statement by its Declarant” (PO Resp. 49), we
agree with Petitioner that its arguments are supported in the Petition by
quotations from Chen’98 and Chen’97, explained and accompanied by
credible supporting testimony from Mr. Geier. Pet. Reply 27 (citing
Pet. 59–64); see Ex. 1003 ¶¶ 140–151 (citing Ex. 1007, 150, 152, 155;
Ex. 1008, 431). Moreover, we discern no inconsistency between Petitioner’s
arguments and Mr. Geier’s testimony that “terminals can remain in ‘standby’
mode when not transmitting or receiving” (Ex. 1003 ¶ 144 (emphasis
added)), on the one hand, and Mr. Geier’s testimony that “it would have
been obvious to a [person of ordinary skill in the art] that the mobiles in the
wireless network that are not participating in a peer-to-peer or multicast
transmission would not be intended recipients of the transmitted data and
would therefore turn off their respective receivers during the time slot
allocated for the peer-to-peer transmission” and “enter standby mode in
order to conserve power” (id. ¶ 148 (emphasis added)), on the other hand,
despite Patent Owner’s arguments (see PO Resp. 50–51). Patent Owner’s
argument that Mr. Geier “does not explain how, if the terminals that are not
IPR2019-00964
Patent 6,285,892 B1

53
able to receive data are already in the low-power state, they can be further
enabled to enter into a low-power state” (PO Resp. 50–51) appears to rest on
a misunderstanding or mischaracterization of Petitioner’s position. As
Petitioner explains, the cited prior art teaches that a terminal powers on its
receiver not only to receive data during slots allocated in the schedule
beacon for the transmission of data to the mobile, but also when receiving
the beacon itself. See Pet. 62–63; Pet. Reply 25–26; Ex. 1007, 150–151;
Ex. 1008, 431.
Still further, we agree with Petitioner that the antecedent for the
recited “plural terminals” in these limitations is found in the limitation
“wherein [] each of the plural terminals determines whether it is able to
receive the data based on the second message”—e.g., based on the schedule
beacon of Chen’98—not in the earlier step of “designating a set of . . . plural
terminals.” See Pet. Reply 26–27. Accordingly, we disagree with the
premise of Patent Owner’s argument that “Petitioner’s construction of ‘set of
plural terminals’ to include all terminals is logically inconsistent with the
assertion that the prior art teaches at least one terminal not able to receive
data.” PO Resp. 51.
j. Conclusion Regarding Independent Claims 1 and 5
For the foregoing reasons, we conclude that Petitioner has shown by a
preponderance of the evidence that the subject matter of independent
claims 1 and 5 of the ’892 patent would have been obvious over Chen’98
and Chen’97.
5. Dependent Claims 4 and 8
Claims 4 and 8 depend from independent claims 1 and 5, respectively,
and add to the independent claims the further limitations that “each of the
IPR2019-00964
Patent 6,285,892 B1

54
plural terminals includes a corresponding terminal identifier” and that “each
of the plural terminals determines whether it is able to receive the data based
on the corresponding terminal identifier of the transmitter.” Ex. 1001,
13:12–17, 14:21–26.
Petitioner has shown by a preponderance of the evidence that these
additional limitations would have been obvious in light of Chen’98 and
Chen’97. See Pet. 64–68 (citing Ex. 1003 ¶¶ 152–165; Ex. 1007, 152;
Ex. 1008, 430–31, Table 1; Ex. 1009, 1035–36; Ex. 1010, 11:9–17). First,
Petitioner asserts that Chen’98 and Chen’97 teach the recited “terminal
identifier” by virtue of Chen’98’s description of a “mobile ID” that
corresponds to mobile terminals registered with the network and Chen’97’s
further explanation that each terminal registered with the network has “a
unique MACid” or “mobile ID.” Pet. 64–65 (citing Ex. 1007, 152;
Ex. 1008, 430–31; Ex. 1003 ¶¶ 152–155). Second, Petitioner contends that
Chen’98 teaches whether to receive data based on the information provided
by the schedule beacon, which, as taught by Chen’97, includes the second
mobile ID. Id. at 65–66 (citing Ex. 1003 ¶¶ 156–157; Ex. 1008, Table 1).
Further, Petitioner contends, the receiving mobile terminals would determine
that they are able to receive the data based in part on the identity of the
sending mobile terminal. Id. at 67 (citing Ex. 1003 ¶¶ 160–161). Still
further, Petitioner contends “[i]t was also well known in the art for a receiver
to determine whether it is able to receive data based on the sender or
transmitter ID transmitted in addition to a VCid or VPI/VCI associated with
[a] multicast connection.” Id. at 67–68 (citing Ex. 1009, 1035–36; Ex. 1010,
11:9–17; Ex. 1003 ¶¶ 162–164). Petitioner thus concludes that, because “the
prior art teaches that the schedule beacon provides the information needed
IPR2019-00964
Patent 6,285,892 B1

55
for a mobile to determine when to turn on its receiver, where the schedule
beacon identifies slots for peer-to-peer and multicast transmissions by the
transmitter’s mobile ID and a virtual circuit ID,” the prior art renders
obvious “each of the plural terminals determin[ing] whether [they are] able
to receive the data based on the corresponding terminal identifier of the
transmitter.” Id. at 68 (citing Ex. 1003 ¶¶ 156–165).
We are persuaded by Petitioner’s contentions and also credit
Mr. Geier’s testimony cited in support thereof because Mr. Geier provides a
detailed and logical explanation that supports his assertions. Beyond the
arguments addressed above with respect to independent claims 1 and 5,
Patent Owner does not contest Petitioner’s assertions with respect to
dependent claims 4 and 8. PO Resp. 52.
Accordingly, we conclude that Petitioner has shown by a
preponderance of the evidence that the subject matter of dependent claims 4
and 8 would have been obvious over Chen’98 and Chen’97.
E. Patent Owner’s Constitutional Challenge
Patent Owner argues that Administrative Patent Judges (“APJs”) are
unconstitutionally appointed principal officers. PO Resp. 52–56 (citing
Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), cert.
granted sub nom. United States v. Arthrex, Inc., 2020 WL 6037206 (Oct. 13,
2020)). According to Patent Owner, the Federal Circuit erred by remedying
the constitutional violation, and thus, this case must be dismissed. Id.
We are bound by the Federal Circuit’s decision in Arthrex, which
addressed this issue. See 941 F.3d at 1337 (“This as-applied severance . . .
cures the constitutional violation.”); see also Arthrex, Inc. v. Smith &
Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir. 2020) (Moore, J., concurring in
IPR2019-00964
Patent 6,285,892 B1

56
denial of rehearing) (“Because the APJs were constitutionally appointed as
of the implementation of the severance, inter partes review decisions going
forward were no longer rendered by unconstitutional panels.”).
Accordingly, we do not consider this issue any further.

III. CONCLUSION
Based on the evidence presented with the Petition, the evidence
introduced during the trial, and the parties’ respective arguments, Petitioner
has shown by a preponderance of the evidence that the subject matter of
claims 1, 4, 5, and 8 of the ’892 patent would have been obvious over
Chen’98 and Chen’97.
In summary:
Claims 35 U.S.C. § Reference(s)/ Basis
Claims Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 4, 5, 8 103(a) Chen’97, Chen’98 1, 4, 5, 8

Overall
Outcome 1, 4, 5, 8

IPR2019-00964
Patent 6,285,892 B1

57
IV. ORDER
It is hereby:
ORDERED that claims 1, 4, 5, and 8 of the ’892 patent are
determined to be unpatentable; and
FURTHER ORDERED that, because 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.
IPR2019-00964
Patent 6,285,892 B1

58
For PETITIONER:
David McCombs
Theodore Foster
Samuel Drezdzon
HAYNES AND BOONE, LLP
david.mccombs.ipr@haynesboone.com
ipr.theo.foster@haynesboone.com
samuel.drezdzon.ipr@haynesboone.com

For PATENT OWNER:

Brett Mangrum
Ryan Loveless
James Etheridge
Jeffrey Huang
ETHERIDGE LAW GROUP
brett@etheridgelaw.com
ryan@eitheridgelaw.com
jim@etheridgelaw.com
jeff@etheridgelaw.com