[below is part 4, follow the links for related part 1, part 2 and part 3]
Today we'll look at the decision, denying institution of a trial for the '492 patent. Again, the decision at this point in the proceeding is basically saying that the arguments aren't even worthy of having a trial for the issues presented.
We're still just talking about the prior art and how it applies to the claim limitation of "scalable address." The reason why oversight is needed for the PTAB Trials Board is because of how differences of opinion, at the pre-institution stage, should be resolved.
Let's look at the Decision in this proceeding. For some reason, the Decision focuses on the idea of padding an address.
So what. Even if "scalability" refers to the size of the address in a frame, the claim recites only a scalable address. Even more bizarre is an earlier reliance on the specification that discusses how an address is used, not what is the address. Importantly, the idea of a global address - that's not really an address as recited in the claim - think of the global address as a way to spam all receivers. Here's the excerpt:
The claim simply recites "a receiver address comprising a scalable address of at least one remote device" - seems like the prior art need only disclose a "receiver address" of a remote device such that the address has some relationship to being "scalable." The specification relied upon in the decision states that the "to" address is scalable, not the receiver address; and the specification is discussing the address frame, not a device address. The claim does not concern how the address appears in a frame. At the very least, this would seem to be an issue that should be decided post-institution in the context of a trial. Right in the specification the answer is clear as day - bytes three through six can be used for the unique transceiver address - meaning there's no debate that the transceiver needs to have a unique address.
The real problem is not as much with the Board Decision, except that the conclusion was wrong, but rather the claim is complete junk. The claim should be written differently. What was probably intended was something such as
a scalable address comprising a receiver address of at least one remote device
The specification is quite clear that the receiver address is NOT scalable. The address is fixed and unique. An issue that could be addressed in the context of a TRIAL. But instead, the Decision concludes that no trial is warranted because of the erroneous focus on how the prior art does not reach the use of an address in a frame of a message; an issue that is not found in the adopted interpretation of the phrase "scalable address."
That's why oversight is needed. To correct misunderstandings. There's enough in the Petition describing the prior art that a trial should be held, i.e., a trial should be instituted to see who is correct. The prior art shows the the receiver address is not only distinct, but also that the number of address characters can vary for different devices. That should be enough to show a "scalable address" within the confines of the statute.
The conclusion of the Decision makes little sense even after all this time:
“We agree with Patent Owner that padding a fixed-length address with different zeroes does not meet the scalable address recited in claim 1.”