- PTAB · Mar 17, 2023 · IPR2022-01604 · APJ William A Capp · IPR · Institution
The Board instituted IPR on claims 1–19 after finding a reasonable likelihood that claim 1 is unpatentable over King and Rokkaku.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION Invata has shown a reasonable likelihood of prevailing on its challenge that claim 1 is unpatentable over King and Rokkaku. Under prevailing law, a determination that any one claim is reasonably likely to be shown unpatentable in an IPR warrants institution of a trial on all challenged claims. SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1356 (2018). We have not, however, made a final determination with respect to the patentability of any challenged claim or the construction of any claim term. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review is hereby instituted as to claims 1–19 of the ‘144 patent on the following grounds of unpatentability: A. Claims 1–3, 5, and 9–19 under 35 U.S.C. § 103(a) as obvious over King and Rokkaku;” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Whether a person of ordinary skill in the art would have been motivated to modify or combine teachings in the prior art, and whether he would have had a reasonable expectation of success, are questions of fact.” Regents of Univ. of Cal. v. Broad Inst., Inc., 903 F.3d 1286, 1291 (Fed. Cir. 2018) (quoting In re Stepan Co., 868 F.3d 1342, 1346 (Fed. Cir. 2017)). Given that we are at the Preliminary Response stage of these proceedings, we are not inclined to engage in an exercise of weighing evidence, particularly on an incomplete record. We determine, on the current record, that Petitioner sufficiently demonstrates at this stage of the proceeding that a person having ordinary skill in the art would have had reason to combine King and Rokkaku. Resolution of the combinability issues in this case will be reserved for trial following discovery and more extensive briefing by the parties. slip op. at 9
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“An investigation into secondary considerations of non-obviousness can frequently be particularly fact intensive. It almost invariably requires discovery into matters that are outside of the scope and content of the prior art presented in an IPR petition. Considering that Invata is the Petitioner and has only now, for the first time in this proceeding, been presented with an outline of OPEX’s secondary considerations case and has not yet been given an opportunity for discovery, much less present evidence at a trial in response to OPEX’s case, we are disinclined to hinge the outcome of a Decision to Institute on the incomplete record before us. Resolution of this issue must await discovery and a presentation of evidence at trial.” slip op. at 10
§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,192,144 - Ericsson, Inc. v. Dali Wireless, IncInstitutedPTAB · Mar 9, 2023 · IPR2022-01419 · APJ Sharon Fenick · IPR · Institution
The Board instituted inter partes review of claims 1–19 on all petition grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. As discussed below, we have considered our whether to exercise our discretion to deny pursuant to 35 U.S.C. § 314(a) and determined not to exercise this discretion. Accordingly, we institute an inter partes review of the challenged claims on all grounds raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“other information defining or describing the way data is being transmitted by a wireless access point because Petitioner only maps “radio resources” to analog downlink RF carriers. Pet. 37–40. Thus, whether “radio resources” encompass other information defining or describing the way data is being transmitted by a wireless access point is not at issue here. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“2. Analysis Petitioner argues that Sabat-552 teaches a baseband unit communicatively coupled to another baseband unit, or receiving radio resources from another baseband unit, as claimed in claims 6, 12, and 17, or the indirect connection to yet another baseband unit, as claimed in claim 7. Pet. 52–56 (citing Ex. 1008, 6:55–61, Fig. 1; Ex. 1012 ¶¶ 107, 109, 110, 113). Petitioner argues that the combination would be motivated by Sabat- 552’s teaching of easily sharing the system among service providers to reduce costs, and that one of ordinary skill in the art would have expected success. Id. at 54–55 (citing Ex. 1008, 2:48–58, 3:65–4:5; Ex. 1012 ¶ 110).” slip op. at 25
- PTAB / AIA Trials › §315(e) estoppelNot reached
“Patent Owner responds that “it is well settled law . . . that 37 C.F.R. § 42.73(d)(3) does not apply to a patent owner defending the validity of issued claims in IPR proceedings because the patent owner is not ‘obtaining’ a patent in this post-issuance proceeding as required by the language of § 42.73(d)(3).” Prelim. Resp. 2–3. Patent Owner also asserts that “the claims of the ’499 patent are also materially different from the claims of the ’178 patent such that Patent Owner is not taking any positions inconsistent with the prior IPR proceeding.” Id. at 3, 17–20. of institution as discussed above, we do not reach alleged estoppel under 37 C.F.R. § 42.73(d)(3).” slip op. at 26
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,334,499 - PTAB · Mar 9, 2023 · IPR2022-01293 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–19 and all petition grounds, finding a reasonable likelihood of unpatentability based on Wu grounds and compelling merits despite Fintiv factors favoring denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“f) Conclusion – Initial Fintiv Analysis We have considered the circumstances and facts before us in view of the first five Fintiv factors. Because our analysis is fact driven, no single factor is determinative of our conclusion. Considering these five Fintiv factors, we determine that they favor a discretionary denial. 2. Assessment of the Compelling Merits As we have found that the first five Fintiv factors favor discretionary denial, we proceed to assess whether the record shows that Petitioner has presented a compelling unpatentability challenge.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. As discussed below, we have considered our whether to exercise our discretion to deny pursuant to 35 U.S.C. § 314(a) and determined not to exercise this discretion. Accordingly, we institute an inter partes review of the challenged claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s definition appears generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as systems. For the purpose of institution, we adopt Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art, which does not encompass an open-ended (“at least 3 years”) amount of experience, and which is supported by the testimony of Dr. Acampora. We would reach the same conclusions if we were to remove the open-ended terminology from Patent Owner’s definition and adopt that.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Thus, the record does not support Patent Owner’s proposed construction of “radio resources,” that requires the RF carriers, CDMA codes, TDMA time slots or other information defining and describing the way data is being transmitted cannot include the user payload data that is transmitted. 4. Our Partial Construction For our present purposes, we do not need to completely construe the term “radio resources.” Nidec Motor Corp., 868 F.3d at 1017. However, a partial construction is required, and for the reasons discussed above, for this Decision, we construe “radio resources” to encompass RF carriers, CDMA codes, and TDMA time slots, including those in which underlying data is transmitted.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,334,499 - PTAB · Feb 22, 2023 · IPR2019-01200 · APJ Lynne E Pettigrew · IPR · Remand
The Board granted the parties’ joint motion and terminated the remanded proceedings concerning claim 20 because the Board had not yet decided the remanded merits.
RulingsRemand decision- RemandGranted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, unless the Board already has decided the merits of the proceeding. PTAB Consolidated Trial Practice Guide, 86 (Nov. 2019).6 Here, although the Board already has issued a Final Written Decision, the Federal Circuit reversed the part of that decision addressing claim 20 of the ’552 patent and remanded to the Board for further proceedings regarding claim 20. The Board has not issued a decision on remand and, thus, has not decided the merits of the issues that were remanded to the Board. Under these circumstances, we determine it is appropriate to grant the Motion and terminate the proceedings.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“The parties also jointly request that the Agreement be treated as business confidential information and be kept separate from the files of the ’552 patent and these proceedings. Req. 2. We have reviewed the Agreement, which contains confidential business information regarding the settlement terms, and we determine that good cause exists to treat the Agreement as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and keep it separate from the files of the ’552 patent and these proceedings. Accordingly, we grant this aspect of the parties’ Joint Request. The parties also “request that the Board order that in the event a person or entity makes a written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for access to the settlement agreement, that any such written request be served upon Patent Owner and Petitioner on the day the written request is provided to the Board.” Req. 2. However, neither the statute nor the regulation provides for any such notification, and the parties have not provided any reason or special circumstance that would justify issuing an order that purports to impose an additional requirement. Accordingly, we deny that portion of the parties’ Joint Request.” slip op. at 4
NonePatents in suitUS 7,247,552 - PTAB · Feb 22, 2023 · IPR2019-01199 · APJ Lynne E Pettigrew · IPR · Remand
On remand, the Board terminated the proceedings after settlement because it had not decided the remanded merits concerning claim 20.
RulingsRemand decision- RemandGranted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, unless the Board already has decided the merits of the proceeding. PTAB Consolidated Trial Practice Guide, 86 (Nov. 2019).6 Here, although the Board already has issued a Final Written Decision, the Federal Circuit reversed the part of that decision addressing claim 20 of the ’552 patent and remanded to the Board for further proceedings regarding claim 20. The Board has not issued a decision on remand and, thus, has not decided the merits of the issues that were remanded to the Board. Under these circumstances, we determine it is appropriate to grant the Motion and terminate the proceedings.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“The parties also jointly request that the Agreement be treated as business confidential information and be kept separate from the files of the ’552 patent and these proceedings. Req. 2. We have reviewed the Agreement, which contains confidential business information regarding the settlement terms, and we determine that good cause exists to treat the Agreement as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and keep it separate from the files of the ’552 patent and these proceedings. Accordingly, we grant this aspect of the parties’ Joint Request. The parties also “request that the Board order that in the event a person or entity makes a written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for access to the settlement agreement, that any such written request be served upon Patent Owner and Petitioner on the day the written request is provided to the Board.” Req. 2. However, neither the statute nor the regulation provides for any such notification, and the parties have not provided any reason or special circumstance that would justify issuing an order that purports to impose an additional requirement. Accordingly, we deny that portion of the parties’ Joint Request.” slip op. at 4
NonePatents in suitUS 7,247,552 - PTAB · Feb 22, 2023 · IPR2019-01198 · APJ Lynne E Pettigrew · IPR · Remand
The Board granted the parties’ joint motion and terminated the remanded proceedings; it also granted in part their request to protect the settlement agreement.
RulingsRemand decision- RemandGranted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, unless the Board already has decided the merits of the proceeding. PTAB Consolidated Trial Practice Guide, 86 (Nov. 2019).6 Here, although the Board already has issued a Final Written Decision, the Federal Circuit reversed the part of that decision addressing claim 20 of the ’552 patent and remanded to the Board for further proceedings regarding claim 20. The Board has not issued a decision on remand and, thus, has not decided the merits of the issues that were remanded to the Board. Under these circumstances, we determine it is appropriate to grant the Motion and terminate the proceedings.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“business confidential information and be kept separate from the files of the ’552 patent and these proceedings. Req. 2. We have reviewed the Agreement, which contains confidential business information regarding the settlement terms, and we determine that good cause exists to treat the Agreement as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and keep it separate from the files of the ’552 patent and these proceedings. Accordingly, we grant this aspect of the parties’ Joint Request.” slip op. at 4
NonePatents in suitUS 7,247,552 - Ericsson Inc. v. Dali Wireless Inc.InstitutedPTAB · Feb 1, 2023 · IPR2022-01212 · APJ Karl D Easthom · IPR · Institution
Instituted IPR on claims 1–12 because Ericsson showed a reasonable likelihood that claims would be unpatentable under the asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of claims 1–12 of the ’338 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites /default/files/documents/interim_proc_discretionary_denials_aia_parallel_di strict_court_litigation_memo_20220621_.pdf (the “Interim Procedure”). The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. Petitioner “adopts the identical stipulation from Sotera, namely, that if the IPR is instituted, . . . Petitioner will not pursue in the District Court Litigation any ground raised or that could have been reasonably raised in an IPR for the challenged patent.” Pet. 81.” slip op. at 55
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the assessment offered by Patent Owner as it is consistent with the ’338 patent and the asserted prior art. Even if we were to adopt Petitioner’s similar assessment, it would not alter our decision to institute.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Turning to the claim language, limitation vii recites “reconfiguring each remote radio unit by: determining a load percentage for each remote radio unit.” Claim 1 simply does not specify how to determine the load percentage for each remote radio unit and “load percentage” is a broad term. Stated differently, claim 1 does not specify the numerator or denominator to be used in determining the load percentage, but the parties agree that the numerator is the amount of load used in an RRU, as indicated above. On this preliminary record, Petitioner’s interpretation of “available capacity” as including “a single radio, a group of radios or the entire DAS system, [able to] be determined using throughput, number of connections, number of users, number of carriers, or power,” is sufficient for purposes of institution. See Pet. Reply 3 (citing Ex. 1005, 4:24–27; 5:13–15; 6:1–4; Ex. 1003 ¶¶ 104–06). On this preliminary record, as Petitioner argues (Pet. Reply 2) and contrary to Patent Owner’s construction, the claim language and the specification do not support limiting available capacity to a single RRU, or similarly, limiting the scope of “load percentage” to a load consumed by a remote radio unit divided by the assigned available capacity for that remote radio unit.6” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,682,338 - Nichia Corporation v. Document Security Systems, Inc.Adverse judgmentPTAB · Nov 18, 2022 · IPR2018-01165 · APJ Barbara A Benoit · IPR · Adverse judgment
The Board granted adverse judgment against Patent Owner as to claims 16–19 after their statutory disclaimer and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Moreover, under 37 § C.F.R. 42.73(b), a “party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include . . . disclaimer of a claim such that the party has no remaining claim in the trial.” The only claims before us on remand have been disclaimed. Accordingly, we construe Patent Owner’s disclaimer to be a request for adverse judgment as to those claims which remain before us, which we now grant.” slip op. at 3
- RemandOther
“Written Decision to the United States Court of Appeals for the Federal Circuit. Papers 31, 32. The court issued its decision affirming our findings as to all claims except claims 15–19. Nichia Corp. v. Document Sec. Sys., Inc., Nos. 2020-2261, 2020-2287, 2022 WL 1218036, at *1 (Fed. Cir. Apr. 26, 2022). Specifically, the court reversed our determination that Petitioner had not shown independent claim 15 to be unpatentable and remanded for further proceedings regarding dependent claims 16–19. Id. On June 14, 2022, the court issued the formal mandate. Paper 33. On June 23, 2022, Patent Owner statutorily disclaimed claims 16–19 of the ’087 patent. Thus, claims 16–19 are no longer part of this proceeding and no issues remain for us to consider on remand. See Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367, 1373 (Fed. Cir. 2019) (noting that disclaiming claims effectively eliminates those claims from the patent as though the disclaimed claims had never existed (internal quotations and citations omitted)); see also Asetek Danmark A/S v. CoolIT Sys., Inc., IPR2020-00747, Paper 42 at 6 (PTAB Sept. 30, 2021) (determining that a proceeding); cf. 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”).” slip op. at 2
NonePatents in suitUS 7,524,087 - Xilinx, Inc. / Taiwan Semiconductor Manufacturing Co. Ltd. v. Arbor Global Strategies LLCAll claims unpatentablePTAB · Mar 2, 2022 · IPR2020-01571 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–30 are unpatentable as obvious: claims 1–6 over Zavracky, Chiricescu, and Akasaka; claims 7–12 with Satoh; and claims 13–30 with Trimberger.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Relying on the testimony of Dr. Franzon, Petitioner contends that [t]he person of ordinary skill in the art (“POSITA”) at the time of the alleged invention of the ’226 patent would have been a person with a Bachelor’s Degree in Electrical Engineering or Computer Engineering, with at least two years of industry experience in integrated circuit design, packaging, or fabrication. Pet. 5 (citing Ex. 1002 ¶¶ 58–60). Patent Owner asserts that [a] person of ordinary skill in the art (“POSITA”) around December 5, 2001 (the earliest effective filing date of the ’226 Patent) would have had a Bachelor’s degree in Electrical Engineering or a related field, and either (1) two or more years of industry experience; and/or (2) an advanced degree in Electrical Engineering or related field. PO Resp. 10 (citing Ex. 2006 ¶ 25). As we did in the Decision on Institution, we adopt Petitioner’s proposed level of ordinary skill in the art, which comports with the teachings of the ’226 patent and the asserted prior art. See Dec. on Inst. 21. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level, the outcome would remain the same. C.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“Both of these limitations listed above recite “means” and further recite a function, thus creating a presumption that 35 U.S.C. § 112, ¶ 6 applies. See 35 U.S.C. § 112, ¶ 6 (“An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc in relevant part) (quoting Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703 (Fed. Cir. 1998)) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”). We agree with the parties that these limitations are means-plus-function limitations subject to 35 U.S.C. § 112, ¶ 6. Pet. 11, 13; PO Resp. 11.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner, in focusing on this portion of the ’226 patent disclosure, does not adequately explain why buffer cells and configuration memory cells must be included in the proper construction of “wide configuration data port,” and seeks to import a functional description of the use of a wide configuration data port (“that allows parallel updating of logic cells in a programmable array through use of buffer cells”) into the claim construction. PO Resp. 15–17; PO Sur-reply 2–4. While the discussion in the ’226 patent describes an example of a wide configuration data port used in a specific way that aligns with Patent Owner’s proposal (Ex. 1001, 4:45– 59), other examples of the use of a wide configuration data port are included (id. at 4:59–65), and therefore we do not agree that one of ordinary skill would understand this use to be part of the construction of the term. We agree with Petitioner that the proper construction of the term does not require buffer cells. See Pet. Reply 4–6. Rather, we note that the specification of the ’226 patent contrasts loading of data to an FPGA in a byte serial fashion through a narrow port, which “results in [] long reconfiguration times,” with the use of a wide configuration data port, and therefore we determine that one of ordinary skill would understand the wide configuration data port, in contrast to the byte serial “relatively narrow” port, to include parallel connections between cells in the dies. See Ex. 1001, 4:3– 9. This additionally is consistent with certain arguments by Patent Owner, for example in the Patent Owner’s Response, which opens with a discussion of the “innovative” processor’s arrangement of die-area contacts, such as through-silicon vias, “into a wide configuration data port” and we find that description more consistent with the proper construction of this term. PO Resp. 1–2; see also PO Sur-reply 2–3 (“Arbor’s experts have been consistent that the word ‘wide’ in this term requires a sufficient number, and appropriate arrangement, of connections between the memory die and the programmable array to permit parallel updating of the array.”)” slip op. at 15
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“While corresponding structure need not include all things necessary to enable the claimed invention to work, it must include all structure that actually performs the recited function.” Default Proof Credit Card Sys. Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir. 2005). Conversely, structural features that do not actually perform the recited function do not constitute corresponding structure and thus do not serve as claim limitations. Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1308–09, (Fed. Cir. 1998); see B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997) (“[S]tructure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.”). Patent Owner’s arguments regarding buffer cells connected with memory configuration cells using die-area interconnections requires that the buffer cells be located on a different die than the memory configuration cells, but the ’226 patent discloses only that “[t]he buffer cells 88 are preferably a portion of the memory die 66” and not that they always are on the memory die, and also that the significantly increased number of connections to the cache memory die may allow the cache memory die to replace configuration bit storage on the FPGA die. Ex. 1001, 4:50–54, 4:59–63. Thus, we decline to require in the corresponding structure that buffer cells or configuration memory are included on any die element. Rather, we find that what is disclosed as actually performing the recited function of “reconfiguring the programmable array within one clock cycle” is “a wide configuration data port and contact points formed throughout the area of the first integrated circuit die element and another integrated circuit die element.” The support for this is found in the ’226 patent’s comparison of the long reconfiguration times through a narrow port (Ex. 1001, 4:3–9) with the time to reconfigure through a wide configuration data port with a significantly increased number of connections (id. at 4:45– 65), and the implementation of this in a module that has multiple dies “which have a number of corresponding contact points, or holes, 70 formed throughout the area of the [die] package” (id. at 4:9–20). The use of a wide configuration data port, as per our construction, implicates two die elements. This was reflected in our preliminary claim construction, for which the corresponding structure described “contact points distributed through the first integrated circuit die element and the third integrated circuit die element.” Dec. on Inst. 29. As the function is “reconfiguring the programmable array within one clock cycle,” one of the die elements is the first integrated circuit die element, which includes the programmable array. slip op. at 19
Patent outcomesUS 6,781,226 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,781,226 - Xilinx, Inc. v. Arbor Global Strategies, LLCAll claims unpatentablePTAB · Mar 2, 2022 · IPR2021-00737 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–38 are unpatentable as obvious under §103(a): claims 1–34, 36, and 38 over Zavracky, Chiricescu, and Akasaka; claim 35 with Satoh; and claim 37 with Alexander.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“4. Petitioner’s Showing, Claims 1–22, 36, and 38 Claim 1’s preamble recites “[a] processor module comprising.”” slip op. at 29
- Expert testimonyOther
“incorporation-by-reference of pages of evidence that Patent Owner attributes to Petitioner. Also, the cited three pages of Exhibit 2014 are in the middle of an industry article, and the pages are densely packed two-column pages that facially appear to have at least the same number of words in some of the complained-about citations to multiple paragraphs that Petitioner provides to Dr. Souri’s Reply Declaration. Here, Patent Owner leaves it to the Board to dig into the cited pages of Exhibit 2014 to find the alleged TSV interconnection issues and place it in context to the background information in the whole article. In reaching our decision, we exercised judgment as to all the evidence cited by the parties for its relevance, context, and substance, and weighed it accordingly.” slip op. at 123
Patent outcomesUS RE42,035 unpatentable§ 103 obviousnesscites KSR · Graham
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.