  United States Court of Appeals
      for the Federal Circuit
                ______________________

     DSS TECHNOLOGY MANAGEMENT, INC.,
                 Appellant

                          v.

                    APPLE INC.,
                       Appellee
                ______________________

                 2016-2523, 2016-2524
                ______________________

   Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-00369, IPR2015-00373.
                ______________________

               Decided: March 23, 2018
               ______________________

   ERIC WILLIAM BUETHER, Buether Joe & Carpenter
LLC, Dallas, TX, argued for appellant. Also represented
by BRIAN ANDREW CARPENTER; ANDRIY LYTVYN, Smith &
Hopen, PA, Oldsmar, FL.

    JON WRIGHT, Sterne Kessler Goldstein & Fox, PLLC,
Washington, DC, argued for appellee. Also represented
by DAVID K.S. CORNWELL, JASON A. FITZSIMMONS.
                ______________________

 Before NEWMAN, O’MALLEY, and REYNA, Circuit Judges.
2                               DSS TECH. MGMT.   v. APPLE INC.



    Opinion for the court filed by Circuit Judge O’MALLEY.
     Dissenting opinion filed by Circuit Judge NEWMAN.
O’MALLEY, Circuit Judge.
     In response to two petitions for inter partes review
filed by Appellee Apple Inc. (“Apple”), the Patent Trial
and Appeal Board (“Board”) issued a pair of final written
decisions finding claims 1–4 and 9–10 of U.S. Patent No.
6,128,290 (“the ’290 patent”), owned by Appellant DSS
Technology Management, Inc. (“DSS”), unpatentable as
obvious. Apple Inc. v. DSS Tech. Mgmt., Inc., No.
IPR2015-00369, 2016 WL 3382361 (P.T.A.B. June 17,
2016) (Apple I); Apple Inc. v. DSS Tech. Mgmt., Inc., No.
IPR2015-00373, 2016 WL 3382464 (P.T.A.B. June 17,
2016) (Apple II). Because we find that the Board did not
provide a sufficient explanation for its conclusions, and
because we cannot glean any such explanation from the
record, we reverse.
                       I. BACKGROUND
                     A. The ’290 patent
    The ’290 patent, which issued in 2000 and is assigned
to DSS, is directed to a wireless communication network
for a single host device and multiple peripheral devices.
The ’290 patent discloses a data network for bidirectional
wireless data communications between a host or server
microcomputer—described in the specification as a per-
sonal digital assistant or “PDA”—and a plurality of pe-
ripheral devices that the specification refers to as
personal electronic accessories or “PEAs.” ’290 patent,
col. 1, ll. 11–20, col. 2, ll. 15–18. According to the ’290
patent, this data network provides “highly reliable”
communication, “requires extremely low power consump-
tion, particularly for the peripheral units,” “avoids inter-
ference from nearby similar systems,” and “is of relatively
simple and inexpensive construction.” Id. at col. 1, ll. 33–
DSS TECH. MGMT.   v. APPLE INC.                                3



47. Figure 1 of the ’290 patent illustrates an embodiment
of this wireless data network:




Id. at Fig. 1. This figure depicts a server microcomputer,
shown as PDA 11, and a plurality of peripheral units 21
to 29. Id. at col. 2, ll. 42–44, col. 2, l. 66–col. 3, l. 15.
     The ’290 patent teaches that the transmitters within
the host or server microcomputer and the peripheral units
in the data network operate in a “low duty cycle pulsed
mode of operation.” Id. at col. 1, ll. 57–59. In such a mode
of operation, each peripheral unit is allocated a subset of
available time slots in which it receives or transmits data
from or to the server microcomputer in radio frequency
(i.e., wireless) bursts. Id. at col. 3, l. 57–col. 4, l. 6. These
time slots are determined in relation to synchronizing
information initially transmitted from the server micro-
computer. Id. at col. 2, ll. 35–39. In the time slots when a
peripheral unit is neither receiving nor transmitting, its
reception and transmission circuitry may be powered
down. Id. at col. 4, ll. 6–8. “The low duty cycle pulsed
operation both substantially reduces power consumption
and facilitates the rejection of interfering signals.” Id. at
col. 1, ll. 59–61.
   The ’290 patent contains 11 apparatus claims, six of
which—claims 1–4 and 9–10—are relevant to this appeal.
4                               DSS TECH. MGMT.   v. APPLE INC.



Because the parties dispute only a single claim limitation
recited in independent claim 1, they agree that claim 1 is
representative. Claim 1 recites:
    A data network system for effecting coordinated
    operation of a plurality of electronic devices, said
    system comprising:
    a server microcomputer unit;
    a plurality of peripheral units which are battery
    powered and portable, which provide either input
    information from the user or output information
    to the user, and which are adapted to operate
    within short range of said server unit;
    said server microcomputer incorporating an RF
    [radio frequency] transmitter for sending com-
    mands and synchronizing information to said pe-
    ripheral units;
    said peripheral units each including an RF receiv-
    er for detecting said commands and synchronizing
    information and including also an RF transmitter
    for sending input information from the user to
    said server microcomputer;
    said server microcomputer including a receiver for
    receiving input information transmitted from said
    peripheral units;
    said server and peripheral transmitters being en-
    ergized in low duty cycle RF bursts at intervals de-
    termined by a code sequence which is timed in
    relation to said synchronizing information.
’290 patent, col. 11, l. 62–col. 12, l. 18 (emphasis added).
    The only disputed limitation of claim 1 pertains to the
“low duty cycle RF bursts” referenced above. Claim 1
requires both the server microcomputer and each of the
peripheral units to comprise transmitters. According to
DSS TECH. MGMT.   v. APPLE INC.                            5



the claim, the server microcomputer’s transmitter is used
“for sending commands and synchronizing information to
said peripheral units,” while the peripheral unit’s trans-
mitters are used “for sending input information from the
user to said server microcomputer.” Id. at col. 12, ll. 4–11.
The transmitters on both the server microcomputer and
the peripheral units must be “energized in low duty cycle
RF bursts.” Id. at col. 12, ll. 15–18. This limitation was
the focus of the IPR proceedings below, and it is at the
center of the single dispute on appeal.
                    B. Relevant Prior Art
     The Board relied on two pieces of prior art in the IPR
proceedings: U.S. Patent No. 5,241,542 to Natarajan et
al. (“Natarajan”), and U.S. Patent No. 4,887,266 to Neve
et al. (“Neve”). In its final written decisions, the Board
found that the combination of Natarajan and Neve ren-
dered obvious all of the challenged claims of the ’290
patent. Apple I, 2016 WL 3382361, at *1, *19; Apple II,
2016 WL 3382464, at *1, *19. Of the two prior art refer-
ences, only Natarajan is relevant to this appeal.
    As the Board described it, “Natarajan is directed to
power conservation in wireless communication, particu-
larly battery efficient operation of wireless link adapters
of mobile computers (also referred to, inter alia, as battery
powered computers, hand held or laptop computers,
mobile units, and mobile stations) as controlled by multi-
access protocols used in wireless communication.” Apple
I, 2016 WL 3382361, at *8. Figure 2 of Natarajan depicts
this system:
6                               DSS TECH. MGMT.   v. APPLE INC.




Natarajan, Fig. 2. This block diagram shows mobile
stations 10, 12, 14, and 16, which communicate via wire-
less transceivers within transceiver adapters 44 and 36
with base stations 26 and 28, which are in turn connected
to server 18. Id. at col. 2, ll. 32–39, 51–52, 58–59, 65–67.
     According to Natarajan, “the main idea for minimiz-
ing battery power consumed by wireless link adapters at
the mobile units” depends on the “scheduled access multi-
access protocol” through which the mobile units communi-
cate with the base station. Id. at col. 3, l. 59–col. 4, l. 6,
col. 4, ll. 20–23. These protocols “can be implemented to
effectively conserve battery power by suitable control of
the state of transmitter and receiver units at the portable
units (i.e., by scheduling when they should be turned ON
or OFF).” Id. at col. 3, l. 66–col. 4, l. 3. “A desirable
solution is one in which the transmitter (or receiver)
consumes power only when it is actively transmitting a
message (or actively receiving a message).” Id. at col. 4,
ll. 3–6.
    Natarajan’s scheduled multi-access protocol achieves
this goal by dividing time into fixed-length frames, which
DSS TECH. MGMT.   v. APPLE INC.                               7



are themselves divided into slots. Id. at col. 4, ll. 20–23.
Figure 4 of Natarajan shows an exemplary frame:




Id., Fig. 4.
     The frame is divided into three subframes: A, B, and
C. Id. at col. 4, ll. 28–38. The first subframe, period A, is
used “for broadcast of [data] packets from base station to
mobile units (outbound traffic).” Id. at col. 4, ll. 30–32.
The second subframe, period B, is used for “contention-
free transfer of all traffic from mobile units to base station
(inbound traffic).” Id. at col. 4, ll. 33–35. The third sub-
frame, period C, is “for the transfer of all bursty data
traffic in a contention mode from mobile units to base
station (inbound traffic).” Id. at col. 4, ll. 36–38. Each of
subframes A and B in this example is associated with a
header, AH and BH, respectively, that is broadcast by the
base station to all mobile stations at the start of the
subframe. Id. at col. 4, ll. 30–35. Using these headers,
each mobile unit can compute exactly when it should be
ready to receive data from the base station and when it
should begin transmitting data to the base station. Id. at
col. 4, l. 67–col. 5, l. 2; id. at col. 5, ll. 20–22. The mobile
unit can turn its receiver or transmitter off to save power
during those time slots in which the mobile unit is not
receiving or transmitting data. Id. at col. 5, ll. 2–6, 23–29.
                    C. Procedural History
    Apple concurrently filed two IPR petitions related to
the ’290 patent on December 4, 2014. Apple’s first peti-
tion challenged the validity of claims 1–4 of the ’290
patent, and the second challenged the validity of claims 6,
7, 9, and 10. The Board instituted two IPRs on June 25,
8                              DSS TECH. MGMT.   v. APPLE INC.



2015, as IPR2015-00369 and IPR2015-00373, respectively.
It instituted the first IPR to determine whether claims 1
to 4 were obvious over Natarajan and Neve. The Board
instituted the second IPR on the same basis, as well as on
the ground that claims 6 and 7 allegedly were obvious
over U.S. Patent No. 5,696,903 to Mahany. DSS later
disclaimed claims 6 and 7 of the ’290 patent.
     The Board issued its final written decisions in both
IPRs on June 17, 2016. The Board found that all remain-
ing challenged claims—claims 1–4, 9, and 10—were
invalid as obvious over Natarajan in view of Neve. Apple
I, 2016 WL 3382361, at *1, *19; Apple II, 2016 WL
3382464, at *1, *19. 1 DSS conceded that all but one
limitation in each of these claims was disclosed in Nata-
rajan and Neve. Apple I, 2016 WL 3382361, at *10–11.
But DSS disputed that either reference disclosed the
limitation “said server . . . transmitter[] being energized
in low duty cycle RF bursts.” Id. at *11.
    The Board construed the term “energized in low duty
cycle RF bursts” as “energized, in short periods of intense
RF transmission activity on an otherwise quiet data
channel, only to the extent required to satisfy the data
transmission needs over the course of a communication
cycle.” Id. at *4–7. The Board explained that it “un-
derst[oo]d the ‘duty cycle’ of a transmitter to be the aver-
age ratio of the durations during which the transmitter is
energized to the [total] duration of communication cycles
over the course of network operation.” Id. at *6.
    The Board then turned to the question of obviousness.
Apple argued that, because the mobile unit transmitters
in Natarajan operated in “low duty cycle RF bursts,” “it



    1   The two final written decisions are identical in all
relevant respects. We hereafter cite only to the first final
written decision for simplicity.
DSS TECH. MGMT.   v. APPLE INC.                          9



would have been plainly obvious to a [person of ordinary
skill in the art] to have the base station operate in an
analogous manner.” Id. at *13 (alteration in original).
Apple explained that, because the “low duty cycle RF
bursts” limitation was not novel and because “the base
and mobile stations have the same physical structure,” it
“would have been no more than using a known technique
to improve similar devices in the same way.” Id.
    Although DSS admitted that Natarajan discloses a
system for reducing power consumption in mobile units,
DSS argued that Natarajan says nothing about doing the
same for the base station transmitter. Id. at *12. DSS
noted that the stated goal of the Natarajan reference is to
provide energy savings for the mobile units, not the base
station. Id. DSS also observed that the base station in
Natarajan uses a different communications scheme than
the mobile units, where the base station transmits con-
tinuously during the time slots designated for outbound
traffic and cannot be turned off at any point during that
period. Id.
     The Board was “persuaded by each of Apple’s argu-
ments presented above.” Id. at *15. It found that “Nata-
rajan is expressly concerned with ‘power conservation due
to wireless communication,’ and specifically, with ‘battery
efficient operation of wireless link adapters of mobile
computers as controlled by multiaccess protocols used in
wireless communication.’” Id. (quoting Natarajan, col. 1,
ll. 7–13). The Board acknowledged that Natarajan de-
scribes only the mobile units as battery-powered devices,
but it noted that the base units also are conventional
microcomputers and contain similar wireless communica-
tion components as the mobile units. Id. (citing Nata-
rajan, col. 2, ll. 40–41, col. 2, l. 51–col. 3, l. 2).
    From this, the Board concluded “that a person of ordi-
nary skill in the art would have been motivated by Nata-
rajan to apply the same power-conserving techniques to
10                             DSS TECH. MGMT.   v. APPLE INC.



base units as it is disclosed with respect to mobile units,
as well as that it would have been within the skill of the
ordinarily skilled artisan to do so.” Id. The PTAB found
“no persuasive evidence of record that it would have been
‘uniquely challenging or difficult for one of ordinary skill
in the art’ to do so.” Id. (quoting Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)).
The Board noted that, “as the [Supreme] Court explained
in KSR, the skilled artisan is ‘a person of ordinary crea-
tivity, not an automaton.’” Id. (quoting KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420–21 (2007)).
    DSS appeals this single aspect of the Board’s deci-
sions. We have jurisdiction over this appeal under 28
U.S.C. § 1295(a)(4). See Shaw Indus. Grp., Inc. v. Auto-
mated Creel Sys., Inc., 817 F.3d 1293, 1297 (Fed. Cir.
2016).
                      II. DISCUSSION
    “Obviousness is a question of law based on underlying
findings of fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed.
Cir. 2009). We review the factual findings underlying the
Board’s obviousness determination for substantial evi-
dence, whereas we review its legal conclusions de novo.
In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).
    A patent is obvious “if the differences between the
subject matter sought to be patented 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.” 35 U.S.C. § 103(a). “Though less com-
mon, in appropriate circumstances, a patent can be obvi-
ous in light of a single prior art reference if it would have
been obvious to modify that reference to arrive at the
patented invention.” Arendi S.A.R.L. v. Apple Inc., 832
F.3d 1355, 1361 (Fed. Cir. 2016) (citations omitted).
DSS TECH. MGMT.   v. APPLE INC.                          11



    The sole issue on appeal is the Board’s finding that it
would have been obvious to modify the base station
transmitter in Natarajan to be “energized in low duty
cycle RF bursts,” as required by the claims of the ’290
patent. Apple I, 2016 WL 3382361, at *15. 2 We hold that
the Board’s final written decisions fail to provide suffi-
cient explanation for its obviousness finding.
     As we observed in Arendi, “common sense and com-
mon knowledge have their proper place in the obviousness
inquiry,” at least “if explained with sufficient reasoning.”
832 F.3d at 1361 (quoting Perfect Web Techs., Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1328 (Fed. Cir. 2009)).
“But,” we cautioned, “there are at least three caveats to
note in applying ‘common sense’ in an obviousness analy-
sis.” Id. “First, common sense is typically invoked to
provide a known motivation to combine, not to supply a
missing claim limitation.” Id. at 1361–62 (citing DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
Co., 464 F.3d 1356, 1360, 1368, 1371 (Fed. Cir. 2006), and
Randall Mfg. v. Rea, 733 F.3d 1355, 1356, 1363 (Fed. Cir.
2013)). Second, we have invoked common sense to fill in a
missing limitation only when “the limitation in question
was unusually simple and the technology particularly
straightforward.” Id. at 1362 (citing Perfect Web, 587 F.3d
at 1326). “Third, our cases repeatedly warn that refer-
ences to ‘common sense’—whether to supply a motivation
to combine or a missing limitation—cannot be used as a
wholesale substitute for reasoned analysis and eviden-
tiary support, especially when dealing with a limitation
missing from the prior art references specified.” Id.




   2     Apple admits that the Board did not adopt Apple’s
argument that Natarajan expressly discloses a server
transmitter energized in low duty cycle RF bursts. Appel-
lee’s Br. 29. Apple has not cross-appealed this issue.
12                             DSS TECH. MGMT.   v. APPLE INC.



    The Board’s invocation of “ordinary creativity” is no
different from the reference to “common sense” that we
considered in Arendi. See id. at 1361 (noting that the
obviousness analysis should take into account “the
knowledge, creativity, and common sense that an ordinar-
ily skilled artisan would have brought to bear when
considering combinations or modifications” (quoting
Randall, 733 F.3d at 1362)). Here, the Board relied on a
gap-filler—“ordinary creativity” instead of “common
sense”—to supply a missing claim limitation. Id. at 1361.
“In cases in which ‘common sense’ is used to supply a
missing limitation, as distinct from a motivation to com-
bine, . . . our search for a reasoned basis for resort to
common sense must be searching.” Id. at 1363. The
Board’s reliance on “ordinary creativity” calls for the same
“searching” inquiry.
    As in Arendi, the limitation at issue here is not “unu-
sually simple,” and the technology is not “particularly
straightforward.” Id. at 1362. The ’290 patent devotes
the bulk of its written description to the complex commu-
nications protocol that enables the claimed “low duty
cycle” mode of operation. ’290 patent, col. 5, l. 46–col. 11,
l. 52. As the Board’s claim construction discussion
demonstrates, the question of whether a transmitter is
“energized in low duty cycle RF bursts” is not an easy one.
Apple I, 2016 WL 3382361, at *4–7. The missing limita-
tion, moreover, “plays a major role in the subject matter
claimed.” Arendi, 832 F.3d at 1362. Unlike the Nata-
rajan reference, the ’290 patent contemplates a server
that is itself a mobile device, and a stated object of the
patent is for this server to have “extremely low power
consumption.” ’290 patent, Fig. 1, col. 1, ll. 33–47. The
’290 patent explains that the low duty cycle pulsed mode
of operation is critical to achieving this goal. Id. at col.
1:59–61.
    With these precepts in mind, we find that the Board’s
decisions do not satisfy the standard set forth in Arendi.
DSS TECH. MGMT.   v. APPLE INC.                          13



The full extent of the Board’s analysis is contained in a
single paragraph. Apple I, 2016 WL 3382361, at *15.
After acknowledging that Natarajan does not disclose a
base unit transmitter that uses the same power conserva-
tion technique, the Board concluded that a person of
ordinary skill would have been motivated to modify
Natarajan to incorporate such a technique into a base
unit transmitter and that such a modification would have
been within the skill of the ordinarily skilled artisan. Id.
In reaching these conclusions, the Board made no further
citation to the record. Id. It referred instead to the
“ordinary creativity” of the skilled artisan. Id. (quoting
KSR, 550 U.S. at 420–21). This is not enough to satisfy
the Arendi standard.
    Apple argues that this characterization of the Board’s
analysis ignores the previous eight pages of discussion.
Those pages, however, are devoted solely to enumerating
the parties’ arguments. Even if we assume that the
Board incorporated any or all of Apple’s arguments by
reference by stating that it was “persuaded by each of
Apple’s arguments presented above,” id., only one para-
graph of the Board’s summary of Apple’s arguments is
relevant to the Board’s obviousness conclusion. This
paragraph quotes Apple’s argument that “it would have
been plainly obvious to a [person of ordinary skill in the
art] to have the base station operate in an analogous
manner” to the mobile units. Id. at *13 (alteration in
original). The Board also repeated Apple’s assertion that,
“[b]ecause the base and mobile stations have the same
physical structure, this would have been no more than
using a known technique to improve similar devices in the
same way.” Id. (alteration in original).
   The Board parenthetically noted the evidence that
Apple cited in support of these contentions, which consist-
ed solely of paragraphs of a declaration from Apple’s
14                             DSS TECH. MGMT.   v. APPLE INC.



expert, Dr. Hu. 3 She opined that “it would have been
obvious to a [person of ordinary skill in the art] to have
the base station [in Natarajan] operate in an analogous
manner” to the mobile units, which the parties agreed
operated in “low duty cycle RF bursts.” J.A. 1994, ¶ 45.
She noted that “[t]he RF systems of the base station and
mobile stations in Natarajan have the same physical
structure.” Id. (citing Natarajan, col. 3, ll. 7–8, Fig. 3).
She then explained that a person of skill in the art “apply-
ing the exact design disclosed in Natarajan to an applica-
tion exactly as described in Natarajan,” where most users
are likely to be inactive most of the time, “would have
conceived a system in which . . . the transmitter and the
receiver of the base station . . . operate in ‘low duty cycle
RF bursts.’” Id. (citing Natarajan, col. 6, ll. 41–44). Dr.
Hu therefore concluded that a person of skill in the art
would not have found the “low duty cycle RF bursts”
limitation to be “novel.” Id.
    To the extent the Board’s obviousness findings were
based on Dr. Hu’s testimony—which is questionable,
because the Board never cited her testimony directly—her
“conclusory statements and unspecific expert testimony”
are insufficient to support the Board’s findings. Arendi,
832 F.3d at 1366; see also Icon Health & Fitness, Inc. v.
Strava, Inc., 849 F.3d 1034, 1047 (Fed. Cir. 2017) (“[T]he



     3  We note DSS’s contention that Apple did not pre-
sent this expert declaration with its initial petition for
inter partes review. [Reply 24–26.] Because DSS has not
appealed the Board’s reliance on this evidence, however,
we do not decide whether this violated the applicable
statutes and rules. See Intelligent Bio-Systems, Inc. v.
Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed.
Cir. 2016) (affirming the Board’s refusal to consider an
argument “raised for the first time in [an IPR petitioner’s]
reply brief and expert declaration”).
DSS TECH. MGMT.   v. APPLE INC.                          15



[Board] is permitted to credit a party’s argument as part
of its reasoned explanation of its factual findings; howev-
er, the [Board] must ‘explain[] why [it] accepts the pre-
vailing argument.’” (alterations in original) (quoting In re
NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016))). 4
Dr. Hu and the Board failed to consider that Natarajan’s
multi-access protocol imposes different transmission
requirements on the base station and the mobile units. In
the only exemplary embodiment in Natarajan, as DSS
points out, the base station allocates transmission time
slots for a mobile unit only if the base station has data to
transmit to the mobile unit. Natarajan, col. 4, ll. 39–53;
id. at col. 7, ll. 59–66, Fig. 6. Each mobile unit transmit-
ter is energized only during the mobile unit’s assigned
time slot for transmission, whereas the base station
transmitter is energized for the entirety of time period A,
during which the base station transmits data to the
mobile units. Id. at col. 4, l. 20–col. 5, l. 29. Dr. Hu
admitted these facts in her deposition. Neither Dr. Hu
nor the Board, moreover, analyzed whether, if the base
station transmitter in Natarajan were modified, its
transmissions would be characterized by “short periods of
intense RF transmission activity on an otherwise quiet
data channel,” as required by the Board’s own claim
construction. Apple I, 2016 WL 3382361, at *7 (emphasis
added). 5    The similarities in transmission hardware



   4    Under the Chenery doctrine, we decline Apple’s
invitation to consider evidence that the Board did not cite
in its decision. See Bd. of Trs. of Leland Stanford Junior
Univ. v. Chinese Univ. of H.K., 860 F.3d 1367, 1376 (Fed.
Cir. 2017) (citing SEC v. Chenery Corp., 332 U.S. 194, 196
(1947)) (“We must base our review on the analysis pre-
sented by the Board.”).
     5  In her dissent, Judge Newman does not discuss
the portion of the Board opinion where it explains the
16                              DSS TECH. MGMT.   v. APPLE INC.



cannot close these gaps without additional, reasoned
analysis.
    For these reasons, Dr. Hu’s testimony does not consti-
tute substantial evidence that is capable of supporting the
Board’s conclusions “that a person of ordinary skill in the
art would have been motivated by Natarajan to apply the
same power-conserving techniques to base units as it is
disclosed with respect to mobile units, as well as that it
would have been within the skill of the ordinarily skilled
artisan to do so.” Id. at *15. The Board thus relied on



rationale for its holding and, instead, relies heavily on the
Board’s statement that
     “energized in low duty cycle RF bursts” simply
     means that a transmitter is not energized contin-
     uously over the course of network operation, but is
     depowered during at least two time periods of
     each communication cycle: first, in time slots in
     which the unit that includes the transmitter is as-
     signed to receive data; and second, in time slots, if
     any, when the unit is assigned to transmit data
     but has no data to transmit.
Apple I, 2016 WL 3382361, at *7. But the dissent reads
too much into this sentence. Taken out of context, this
passage contradicts the Board’s own explicit claim con-
struction, because it does not incorporate the “short
periods” and “otherwise quiet data channel” aspects of
that construction. For example, if a transmitter is con-
tinuously transmitting data—that is, it is never assigned
to receive data and always has data to transmit—the
transmitter would satisfy the requirements of the sen-
tence quoted above. But the transmission activity would
not be in “short periods,” and the data channel would not
be “otherwise quiet.” It follows that the Board’s claim
construction requires more than the quoted passage.
DSS TECH. MGMT.   v. APPLE INC.                         17



“ordinary creativity” “as a wholesale substitute for rea-
soned analysis and evidentiary support,” and did so “when
dealing with a limitation missing from the prior art
references specified.” Arendi, 832 F.3d at 1362. Without
“a reasoned explanation that avoids conclusory generali-
zations,” this was not sufficient. Id. at 1366 (quoting
Perfect Web, 587 F.3d at 1329).
    We also find “that this is not a case where a more rea-
soned explanation than that provided by the Board can be
gleaned from the record.” Id. Dr. Hu’s testimony suffers
from the serious deficiencies that we have discussed
above, and Apple suggests no other evidence that might
remedy those defects. Apple failed to meet its burden of
establishing that the challenged claims of the ’290 patent
were obvious. We therefore reverse the Board’s finding of
unpatentability.
                       III. CONCLUSION
    For the foregoing reasons, we reverse the Board’s
findings that claims 1–4 and 9–10 of the ’290 patent are
obvious over the combination of Natarajan and Neve.
                         REVERSED
                            COSTS
   No costs.
  United States Court of Appeals
      for the Federal Circuit
                  ______________________

        DSS TECHNOLOGY MANAGEMENT, INC.,
                    Appellant

                             v.

                      APPLE INC.,
                         Appellee
                  ______________________

                   2016-2523, 2016-2524
                  ______________________

   Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-00369, IPR2015-00373.
                ______________________
NEWMAN, Circuit Judge, dissenting.
    The court now reverses the PTAB’s decision that
claims 1–4 and 9–10 of the ’290 patent are unpatentable
for obviousness, on the court’s holding that the PTAB’s
explanation is inadequate to support its decision. 1 How-
ever, if the PTAB’s explanation is indeed inadequate, the
appropriate appellate action is not to grant final judgment


    1   Apple Inc. v. DSS Tech. Mgmt., Inc., No. IPR2015-
00369, 2016 WL 3382361 (P.T.A.B. June 17, 2016) (Apple
I); Apple Inc. v. DSS Tech. Mgmt., Inc., No. IPR2015-
00373, 2016 WL 3382464 (P.T.A.B. June 17, 2016) (Apple
II). The rulings are substantially identical, and I cite only
to Apple I.
2                              DSS TECH. MGMT.   v. APPLE INC.



for the opponent. The appropriate action is either (1) to
remand for additional explanation, or (2) to decide this
question of law. However, the panel majority has neither
remanded nor decided the question.
    As a further concern, I do not share the view that the
PTAB’s explanation is deficient. Of course the PTAB
must explain its reasoning, and the America Invents Act
places significant responsibility on this agency tribunal,
in view of the PTO’s announced intention to bring its
technological expertise to these new proceedings. 2 Thus
the PTAB must well and fully explain the evidentiary
foundation and legal reasoning for its decision. In the
event that the PTAB’s findings or reasoning is deemed
inadequate for appellate review, the proper appellate
response is not to cement this inadequacy into a final
judgment for the opposing party.
    From the court’s errant rulings, I respectfully dissent.
        The PTAB Decision of Unpatentability
        on the Ground of Obviousness is Ade-
        quately Explained
    At the trial the parties agreed that only a single claim
clause is at issue; DSS conceded that all other claim
limitations are shown in the prior art. Thus the only
question before the PTAB was whether it would have
been obvious in view of the Natarajan reference that “said



    2   See Patent Reform: The Future of American Inno-
vation: Hearing Before the S. Comm. on the Judiciary,
110th Cong. 7 (2007), Director Jon W. Dudas:
    The idea was that this could serve as a meaning-
    ful alternative to litigation, probably less costly,
    certainly before experts at the Patent and Trade-
    mark Office.
DSS TECH. MGMT.   v. APPLE INC.                          3



server and peripheral transmitters be[ ] energized in low
duty cycle RF bursts.” ’290 patent, claim 1 (final clause).
     The PTAB decision recited the parties’ arguments, de-
scribed the Natarajan reference and the secondary refer-
ence to Neve, and explained why the PTAB agreed with
the positions presented by Apple as applied to the claims
and the references. Apple I at *8–16. My colleagues’
criticism is that the PTAB repeats the parties’ presenta-
tion concerning the ’290 patent and the references, and
generally endorses Apple’s arguments concerning obvi-
ousness. Maj. Op. at 11–13. Indeed, the PTAB’s opinion
states the arguments presented by each side. But the
PTAB also states with reasonable clarity how this infor-
mation contributed to the conclusion of obviousness, with
focus on those aspects that controlled the decision.
     This form of analysis can be useful, when the presen-
tation of the arguments and surrounding information is
adequate to show the foundation and reasoning of the
decision. In Outdry Technologies Corp. v. Geox S.p.A., 859
F.3d 1364, 1370 (Fed. Cir. 2017) this court stated: “The
Board is permitted to credit a party’s argument as part of
its reasoned explanation of its factual findings; it simply
must explain why it accepts the prevailing argument.”
(quoting Icon Health & Fitness, Inc. v. Strava, Inc., 849
F.3d 1034, 1047 (Fed. Cir. 2017)) (internal quotation
marks omitted). In Paice LLC v. Ford Motor Co., 881 F.3d
894 (Fed. Cir. 2018), the court responded to a similar
criticism, observing that in rejecting some arguments and
accepting others, “the Board’s decisions here cite to the
relevant portions of Ford’s briefing that explain how the
prior art discloses the relevant claim limitations.” Id. at
905. That the PTAB framed its analysis in terms of the
parties’ arguments and evidence does not render its
decision-making de facto inadequate. The concern is not
to condone an apparent shortcut in adjudicatory analysis,
but to assure that the PTAB “engaged in reasoned deci-
sion-making and sufficiently articulated its analysis” to
4                              DSS TECH. MGMT.   v. APPLE INC.



explain its support in fact and law. Outdry, 859 F.3d at
1370.
    Here, the PTAB’s reasons are sufficiently articulated,
as I shall discuss post. To be sure, there have been occa-
sions when the PTAB has failed to adequately explain its
findings or conclusions, seen in cases collected in Outdry,
supra, where “[m]issing from those Board decisions were
citations to the evidence, reasoned explanations, or explic-
it findings necessary for us to review for substantial
evidence.” Id. at 1369. Here, however, necessary findings
are not missing from the PTAB’s decision.
    The PTAB recited, and it is not disputed, that “ener-
gized in low duty cycle RF bursts” means “energized, in
short periods of intense RF transmission activity on an
otherwise quiet data channel, only to the extent required
to satisfy the data transmission needs over the course of a
communication cycle.” Apple I at *7. The PTAB under-
stood that this construction is satisfied when
    a transmitter is not energized continuously over
    the course of network operation, but is depowered
    during at least two time periods of each communi-
    cation cycle: first, in time slots in which the unit
    that includes the transmitter is assigned to re-
    ceive data; and second, in time slots, if any, when
    the unit is assigned to transmit data but has no
    data to transmit.
Apple I at *7.
    The PTAB was persuaded by each of Apple’s argu-
ments concerning the disputed limitation, and “con-
clude[d] that it would have been obvious to a person of
ordinary skill in the art to energize Natarajan’s server
transmitter in low duty cycle RF bursts, as recited in
claim 1.” Apple I at *15. The PTAB acknowledged, and
adopted, Apple’s cited evidence and expert’s views in its
obviousness determination. See Apple I at *16 (“As ex-
DSS TECH. MGMT.   v. APPLE INC.                           5



plained above, we find, based on Apple’s evidence, that
the combination of Natarajan and Neve teaches each
limitation of claim 1.”). Substantial evidence is cited and
explained in the PTAB opinion, in support of the PTAB’s
conclusion.
   For example, the PTAB explained in its opinion that
Natarajan teaches conserving battery power, stating:
   The scheduled access multiaccess protocol is im-
   plemented to effectively conserve battery power by
   suitable control of the state of the controller, the
   transmitter and receiver units at the wireless link
   adapter by scheduling when the adapter is in a
   normal running mode, or a standby mode in which
   power is conserved.
Apple I at *8 (quoting Natarajan at Abstract; also citing
col. 3, l. 66–col. 4, l. 1). The PTAB explained that Nata-
rajan discloses that “[a] desirable solution is one in which
the transmitter (or receiver) consumes power only when it
is actively transmitting a message (or actively receiving a
message).” Id. (quoting Natarajan at col. 4, ll. 3–6).
    The PTAB found it “uncontested” that Natarajan dis-
closes “peripheral transmitters being energized in low
duty cycle RF bursts at intervals determined by a code
sequence.” Apple I at *11. DSS does not dispute this
explanation, or the extent of uncontested facts.
    The PTAB also explained Natarajan’s teachings, stat-
ing that:
   Natarajan discloses that the base station
   broadcasts a header that includes a list of mobile
   users that will be receiving data packets from the
   base station in the current frame, the order in
   which the mobile users will receive the data
   packets, and the bandwidth allocated to each user.
6                                 DSS TECH. MGMT.   v. APPLE INC.



Id. at *9 (citing Natarajan at col. 4, ll. 45–53).
Accordingly, “a mobile unit that is not included in the
header from the base station can turn its receiver ‘OFF’
for the duration of the current subframe.” Id. (citing
Natarajan at col. 4, ll. 64–67). The PTAB further
observed, in explaining its findings, that
    the adapter of each receiving mobile unit can
    compute exactly when it should be ready to
    receive packets from the base station by adding up
    the slots allocated to all receiving units that
    precede it, power ‘ON’ during that time slot to
    receive its data, and go back to sleep for the
    remainder of the subframe.
Id. (citing Natarajan at col. 4, l. 67–col. 5, l. 6).
    With respect to communications from the mobile units
to the base station, the PTAB explained that:
    Natarajan similarly discloses that the base station
    broadcasts a header that includes an ordered list
    of users that will be allowed to transmit packets
    to the base station in the current frame and the
    bandwidth allocated to each.
Id. (citing Natarajan at col. 5, ll. 9–19). The PTAB found
that each mobile unit can use the information broadcast
in the header to compute exactly when the mobile unit
should transmit to the base station, shutting down both
the transmitter and receiver of the mobile units when not
in use. Id. (citing Natarajan at col. 5, ll. 23–29).
    The PTAB’s written decision also recited the DSS ar-
gument that Natarajan’s base unit’s transmitter “encap-
sulate data and control information in an HDLC (high-
level data link control) packet structure and provide the
packet in serial form to the RF transceiver 54;” DSS
stated that “HDLC involves continuous transmissions in
which special bit sequences—i.e. idle words—are trans-
DSS TECH. MGMT.   v. APPLE INC.                        7



mitted when no data transmission is required.” Apple I at
*12 (quoting DSS Patent Owner Response at 20–21).
     The PTAB summarized the DSS arguments that
“[t]he HDLC packet structure disclosed in Natarajan is
inconsistent with a server transmitter being energized in
low duty cycle RF bursts” and “[i]t is well-known in the
art that HDLC is an example of a bit-oriented framing
that involves a continuous outbound transmission rather
than operation in low duty cycle RF bursts.” Apple I at
*12 (quoting DSS Patent Owner Response at 20). Howev-
er, the PTAB found that Apple persuasively refuted these
arguments, referring to Apple’s explanation that Nata-
rajan’s HDLC protocol was actually consistent with low
duty cycle RF bursts, and pointed out that the preferred
embodiment of the ’290 patent utilized the HDLC proto-
col. Apple I at *13–14.
    Apple also explained that a reference cited by Nata-
rajan in discussing the HDLC protocol, Mischa Schwartz,
Telecommunication Networks: Protocols, Modeling and
Analysis, Addison–Wesley (1988) (“Schwartz”) supports
the conclusion that Natarajan’s HDLC protocol is con-
sistent with both low duty cycle communication and RF
transmissions occurring in bursts. Apple I at *14.
    The PTAB referred to Schwartz’s explanation that
“[w]hen the transmitter reaches its maximum sequence
number it is forced to stop transmitting until a frame in
the reverse direction is received, acknowledging an out-
standing packet.” Apple I at *14. The PTAB also referred
to Apple’s citation of Figure 4-13, which showed the
HDLC protocol having the transmitter idle between
frames. Id.
    The PTAB discussed this evidence in the bigger pic-
ture of applying a low duty cycle to Natarajan’s base
unit’s transmitter. “Apple argue[d] that a person of
ordinary skill in the art would have understood from
Natarajan that, when Natarajan’s base station is not
8                             DSS TECH. MGMT.   v. APPLE INC.



transmitting, its transmitter is powered off.” Apple I at
*13. This point was uncontested, for DSS conceded that
Natarajan’s base unit transmitter would be powered down
when not transmitting. J.A.409 (Patent Owner Response
at 22 n.3) (“Patent Owner acknowledges that the opera-
tion of the base transmitter is not continuous over the
entire frame because the base transmitter is powered
down during inbound traffic in Period B.”). Hence, the
parties (and the PTAB) focused on the power and trans-
mission status of Natarajan’s base unit transmitter
during Period A.
    The PTAB’s finding that it would have been obvious
for “said server and peripheral transmitters being ener-
gized in low duty cycle RF bursts” was buttressed by
Natarajan’s explanation that “[m]ost users are very likely
to be inactive (both Transmit-Inactive and Receive-
Inactive) most of the time for most applications. This is
primarily due to the bursty nature of data communication
traffic.” Natarajan at col. 6, ll. 41–44. The PTAB cited
this passage in its discussion of Apple’s argument that “a
person of ordinary skill in the art would have understood
from Natarajan that, when Natarajan’s base station is not
transmitting, its transmitter is powered off.” Apple I at
*13.
    The PTAB also cited the declaration of Apple’s expert,
Dr. Hu, which discussed this passage and relied upon it to
opine that “the base station will not have information to
transmit most of the time,” and concluded that this met
the “low duty cycle RF bursts” limitation because “when it
is not transmitting, it will be powered off.” Id. (citing
J.A.1994 (Declaration of Dr. Hu)). 3 Likewise, the PTAB


    3   The panel majority characterizes Dr. Hu’s testi-
mony, and the PTAB’s citation to ¶¶ 44–45 of Dr. Hu’s
declaration, as “conclusory” and “unspecific.” Maj. Op. at
14. However, in the context of the PTAB’s construction of
DSS TECH. MGMT.   v. APPLE INC.                            9



cited the cross-examination of Apple’s expert, Dr. Grimes,
who explained that during Natarajan’s Period A, the base
unit transmitter “only transmits during those periods
when there’s a receiver that’s allocated to receive the
information” and that “the transmitter is off when it’s not
transmitting.” Id. (citing Deposition of Dr. Grimes at
68:5–7, 75:21–22).
    The panel majority does not discuss or review the evi-
dence cited by the PTAB in its decision. This evidence
well supports the PTAB’s conclusion that “Natarajan’s
disclosure of the HDLC protocol is consistent with Nata-
rajan’s base units being energized in low duty cycle RF
bursts, as that term is properly construed.” Apple I at
*15. To teach the limitation at issue, Natarajan need only
have taught a base unit wherein the “transmitter is not
energized continuously over the course of network opera-
tion, but is depowered during at least two time periods of
each communication cycle: first, in time slots in which the
unit that includes the transmitter is assigned to receive
data; and second, in time slots, if any, when the unit is
assigned to transmit data but has no data to transmit.”
See Apple I at *7. 4



the disputed limitation, Apple I at *7, the testimony is
directly on the point for which it was cited.
    4    The panel majority argues that I read too much
into this sentence, and that if “[t]aken out of context, this
passage contradicts the Board’s own explicit claim con-
struction.” Maj. Op. at 15 n.5. I agree that we should
read statements in PTAB decisions in their proper con-
text, including statements concerning the parties’ argu-
ments, cited evidence, and what was found to be
persuasive. I also agree that we should interpret the
PTAB’s statements correctly. The majority’s example, in
its n.5, illustrates this point. A hypothetical transmitter
that continuously transmits data and is never assigned to
10                            DSS TECH. MGMT.   v. APPLE INC.



    DSS conceded at the PTAB that during Period B, Na-
tarajan’s base unit transmitter would be powered down.
DSS has maintained this position on appeal. DSS Br. at
25 (“[D]uring Period B, the base unit transmitter is not
energized at all—in bursts or otherwise—at any time
outside of Header BH.”). This meets the first time period
for depowering referred to in the PTAB’s construction.
    Natarajan’s teachings about the “Receive-Inactive”
status of most mobile units most of the time during Period
A, particularly as explained by Apple’s expert witnesses,
meets the second time period for depowering referred to in
the PTAB’s construction. Accepting that the technology is
complex, as my colleagues state, this court held in Ariosa
Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365
(Fed. Cir. 2015), that “[w]e may affirm an agency ruling if
we may reasonably discern that it followed a proper path,
even if that path is less than perfectly clear.” The PTAB



receive data could not satisfy the minimum two time
period depowering requirement explicitly referred to in
the PTAB’s explanation of the meaning of “energized in
low duty cycle RF bursts” and quoted by the majority.
First, such a transmitter could not be depowered “in time
slots in which the unit that includes the transmitter is
assigned to receive data,” per the PTAB’s explanation, for
no such time slots exist as the majority’s transmitter “is
never assigned to receive data.” Second, such a transmit-
ter could not be depowered “in time slots, if any, when the
unit is assigned to transmit data but has no data to
transmit,” per the PTAB’s explanation, for the majority’s
transmitter “is continuously transmitting data” and
“always has data to transmit.” The majority reaches the
wrong conclusion from its hypothetical, for its transmitter
is not “depowered during at least two time periods of each
communication cycle,” as the PTAB’s explanation re-
quires.
DSS TECH. MGMT.   v. APPLE INC.                          11



followed an appropriate, discernable pathway to reach its
conclusion that the challenged claims would have been
obvious. Again, the panel majority does not discuss or
critically consider the evidence cited by the PTAB in its
decision.
    The principle established in Chenery requires that
“the orderly functioning of the process of review requires
that the grounds upon which the administrative agency
acted be clearly disclosed and adequately sustained.”
SEC v. Chenery Corp., 318 U.S. 80, 94 (1943); see also
Timken U.S. Corp. v. United States, 421 F.3d 1350, 1355
(Fed. Cir. 2005) (“[A]n agency must explain its action with
sufficient clarity to permit ‘effective judicial review.’”);
Mullins v. U.S. Dep’t of Energy, 50 F.3d 990, 992 (Fed.
Cir. 1995) (“[A]gencies have a duty to provide reviewing
courts with a sufficient explanation for their decisions so
that those decisions may be judged against the relevant
statutory standards . . . .”).
    The PTAB in its decision explained the meaning of
the disputed limitation in the context of the teachings of
Natarajan, and presented an analysis with the evidence
that supported its conclusion.      The requirements of
Chenery were met. In stating that this court “cannot”
itself decide the question of obviousness based on Nata-
rajan, my colleagues state that “a more reasoned explana-
tion than that provided by the PTAB can[not] be gleaned
from the record.” That statement is not in accord with the
PTAB’s decision, for the record is heavy with testimony,
briefing, and argument, presented by the Petitioner Apple
and the Patent Owner DSS, and the PTAB’s decision cites
and explains the resources on which it reached its conclu-
sion, presenting the arguments and evidence on both
sides, and explaining its conclusion. The factual findings
that underlie that conclusion are supported by substantial
evidence, and the PTAB’s decision of obviousness is fully
supported, and should be sustained.
12                             DSS TECH. MGMT.   v. APPLE INC.



     Reversal is not a Remedy for Inadequate
     Explanation
    If the PTAB’s analysis were indeed deficient, “the
proper course, except in rare circumstances, is to remand
to the agency for additional investigation or explanation.”
Fla. Power & Light Co. v. Lorion, 470 U.S. 729, 744
(1985). “[W]hen the [PTAB]’s action is potentially lawful
but insufficiently or inappropriately explained, we have
consistently vacated and remanded for further proceed-
ings.” In re Van Os, 844 F.3d 1359, 1362 (Fed. Cir. 2017)
(internal quotation marks omitted) (collecting cases).
Deficient adjudication is not grounds for a decision on the
merits. On the majority’s theory that the PTAB’s expla-
nation was inadequate, the appropriate remedy is to
return the matter to the PTAB for better explanation, on
any of the reasons compiled in Outdry. The court errs in
simply reversing the PTAB’s decision.
    My colleagues also criticize the PTAB’s understanding
of the prior art, stating that “the Board failed to consider
that Natarajan’s multi-access protocol imposes different
transmission requirements on the base station and the
mobile units.” Maj. Op. at 15. However, the majority
limits its examination of Natarajan to only a portion of its
disclosure—Period A. Id. Neither Apple nor the PTAB
restricted Natarajan’s disclosure to this Period. See, e.g.,
PTAB Op. at *11 (citing Natarajan’s discussions of Period
B).
    By ignoring Period B, as well as the base unit trans-
mission of header BH, the majority overlooks the segment
of Natarajan’s cycle in which the base unit transmitter
transmits, goes quiet and, as DSS admitted both before
the PTAB and on appeal, would be powered down.
J.A.409 (Patent Owner Response at 22 n.3); DSS Br. at 25
(“[D]uring Period B, the base unit transmitter is not
energized at all—in bursts or otherwise—at any time
outside of Header BH.”).
DSS TECH. MGMT.   v. APPLE INC.                          13



    Moreover, the transmission requirements of the mo-
bile units and the base units are intertwined, for the
mobile units and the base unit are in direct communica-
tion with each other through transmission and reception
in Natarajan’s scheduled multi-access protocol. See, e.g.,
J.A.2331–32 (Deposition of Dr. Grimes).           Natarajan
explains that “[m]ost users are very likely to be inactive
(both Transmit-Inactive and Receive-Inactive) most of the
time for most applications. This is primarily due to the
bursty nature of data communication traffic.” Natarajan
at col. 6, ll. 41–44. Accordingly, “Receive-Inactive” mobile
units suggest a “Transmit-Inactive” base unit. See, e.g.,
J.A.1993–95 (Declaration of Dr. Hu).
    The majority faults the PTAB for failing to discuss
“whether, if the base station transmitter in Natarajan
were modified, its transmissions would be characterized
by ‘short periods of intense RF transmission activity on an
otherwise quiet data channel,’ as required by the Board’s
own claim construction.” Maj. Op. at 15. However, the
evidence is that this is the natural result of Natarajan’s
communication protocol. Apple’s expert witnesses suffi-
ciently explained that if Natarajan’s mobile units are
likely to be “Receive-Inactive” most of the time, Nata-
rajan’s base unit transmitter would operate by transmit-
ting during header AH, followed by very little or no
transmission during Period A, then transmission during
header BH, followed by no transmission during Period B.
See J.A.1993–95, 2013–15 (Declaration of Dr. Hu);
J.A.2331–32 (Deposition of Dr. Grimes); Apple I, Exhibit
1008 at ¶¶ 115, 116 (Declaration of Dr. Grimes).
    This explanation and evidence meet the claim limita-
tion that is in dispute. See Apple I at *7 (“‘[E]nergized in
low duty cycle RF bursts’ simply means that a transmitter
is not energized continuously over the course of network
operation, but is depowered during at least two time
periods of each communication cycle: first, in time slots in
which the unit that includes the transmitter is assigned
14                              DSS TECH. MGMT.   v. APPLE INC.



to receive data; and second, in time slots, if any, when the
unit is assigned to transmit data but has no data to
transmit.”).
    My colleagues do not mention this analysis, which al-
so meets the alternative formulation of the claim limita-
tion, namely “energized, in short periods of intense RF
transmission activity on an otherwise quiet data channel,
only to the extent required to satisfy the data transmis-
sion needs over the course of a communication cycle.” Id.
Natarajan’s base unit would be “Transmit-Inactive” most
of the time, for the transmission of headers AH and BH
are taught to “represent a small fraction of the whole
frame length.” Natarajan at col. 6, ll. 39–47. With no
need to send transmissions to mobile units, the base unit
transmitter would be powered down to reduce power
consumption when not transmitting, in accordance with
the unchallenged motivation that the PTAB expressly
found. The PTAB explained in Apple I at *15:
     We are persuaded that a person of ordinary skill
     in the art would have been motivated by Nata-
     rajan to apply the same power-conserving tech-
     niques to base units as it is disclosed with respect
     to mobile units . . . .
Apple’s experts provided a sufficient predicate for the
PTAB to find that this would afford short periods of
intense RF transmissions by Natarajan’s base unit
transmitter on an otherwise quiet data channel. Compare
Declaration of Dr. Hu at ¶¶ 42–45 (J.A.1992–95) with
¶¶ 85–88 (J.A.2015–17); Apple I, Exhibit 1008 at
¶¶ 115, 116 (Declaration of Dr. Grimes).
    The PTAB explained its decision in accordance with
the evidence and the prior art, as presented by the parties
and as analyzed by the PTAB, to support the conclusion
that Natarajan’s base unit’s transmitter would have
operated, or it would have been obvious to operate, by
“short periods of intense RF transmission activity on an
DSS TECH. MGMT.   v. APPLE INC.                           15



otherwise quiet data channel,” the construed words of the
claim.
    The appellate role, on review of the agency decision,
includes “determin[ing] whether it is arbitrary or capri-
cious, or, if bound up with a record-based factual conclu-
sion, to determine whether it is supported by substantial
evidence.” Dickinson v. Zurko, 527 U.S. 150, 164 (1999)
(internal quotation marks omitted).        If the agency’s
presentation is inadequate to demonstrate its reasoning,
the appropriate remedy is not to issue a final judgment on
appeal. See Rovalma, S.A. v. Bohler-Edelstahl GmbH &
Co. KG, 856 F.3d 1019, 1026 (Fed. Cir. 2017) (“The Board
has not provided a sufficiently focused identification of
the relevant evidence or explanation of its inferences for
us to confidently review its decision and avoid usurping
its fact-finding authority. Accordingly, as we have con-
cluded in similar circumstances, these deficiencies call for
a vacatur and remand for further explanation from the
Board.”) (citation omitted) (collecting cases); see also Van
Os, 844 F.3d at 1362; Personal Web Techs., LLC v. Apple,
Inc., 848 F.3d 987, 994 (Fed. Cir. 2017); In re NuVasive,
Inc., 842 F.3d 1376, 1385 (Fed. Cir. 2016); Power Integra-
tions, Inc. v. Lee, 797 F.3d 1318, 1325 (Fed. Cir. 2015); In
re Sang-Su Lee, 277 F.3d 1338, 1346 (Fed. Cir. 2002).
    The Court has so held, see F.T.C. v. Sperry &
Hutchinson Co., 405 U.S. 233, 250 (1972) (“[T]he prefera-
ble course would have been to remand the case to the
Commission for further proceedings.”); Fed. Power
Comm’n v. United Gas Pipe Line Co., 393 U.S. 71, 73
(1968); SEC v. Chenery Corp., 318 U.S. 80, 95 (1943).
    My colleagues’ action in simply reversing the ruling of
the PTAB, producing a final judgment of patentability
that is purportedly subject to estoppel in any district court
proceeding between these parties, is contrary to the body
of precedent, and dilutes the purpose of these post-grant
proceedings. I respectfully dissent from this ruling.
