throbber
Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________________________
`
`In re U.S. Patent No. 6,947,882
`
`Filed:
`
`Sept. 24, 1999
`
`
`
`Trial Number: IPR 2012-00041
`
`Sept. 20, 2005
`
`Issued:
`
`Inventors: Frederic Reblewski
`
`
`Olivier Lepaps
`
`
`Jean Barbier
`
`Assignee: Mentor Graphics Corporation
`
`REGIONALLY TIME MULTIPLEXED
`Title:
`EMULATION SYSTEM
`
`
`____________________________________________________________
`
`
`
`Mail Stop Patent Board, PTAB
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`PETITIONER’S REQUEST FOR REHEARING ON DECISION NOT TO
`INSTITUTE INTER PARTES REVIEW UNDER 37 C.F.R. § 42.71
`
`
`
`
`
`

`
`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`EXHIBIT LIST .......................................................................................................... 1
`I.
`BASES FOR REHEARING ............................................................................ 1
`II.
`THE BOARD ERRED IN CONSTRUING THE “INDEPENDENT”
`CLOCKING/ CLOCK SIGNAL LIMITATIONS ......................................... 2
`A.
`Legal Standard ....................................................................................... 2
`B.
`The Board’s Construction of the “Independent” Clocking/
`Clock Signal Limitations is Not the Broadest Reasonable
`Interpretation ......................................................................................... 3
`1.
`The Board Erroneously Relied on a Narrow Dictionary
`Definition of “Independent” ....................................................... 3
`The Board’s Construction Of “Independent” Is
`Inconsistent With The Surrounding Claim Language ................ 5
`The Board’s Construction Of “Independent” Is
`Inconsistent With The Specification ........................................... 5
`III. APPLYING THE CORRECT CONSTRUCTION, THE ’191
`PATENT ANTICIPATES THE CLAIMS OF THE ’882 PATENT .............. 8
`IV. EVEN APPLYING THE BOARD’S NARROW CONSTRUCTION,
`THE ‘191 PATENT ANTICIPATES ............................................................ 12
`CONCLUSION .............................................................................................. 14
`
`2.
`
`3.
`
`V.
`
`
`
`
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`

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`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`In re Am. Acad. of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ........................................................................ 6, 8
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) ............................................................................ 7
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ............................................................................ 5
`
`In re Trans Texas Holdings Corp.,
`498 F.3d 1290 (Fed. Cir. 2007) .................................................................... 2, 4, 6
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 4
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.71 ....................................................................................................... 1
`
`37 C.F.R. § 42.71(c) and (d) ...................................................................................... 1
`
`37 C.F.R. § 42.71(d) .................................................................................................. 3
`
`77 Fed. Reg. 48756, 48766 (Aug. 14, 2012) ............................................................. 2
`
`Board Erroneously Relied on a Narrow Dictionary Definition ............................. 3, 4
`
`http://www.merriam-webster.com/dictionary/independent ....................................... 4
`
`PETITIONER’S REQUEST FOR REHEARING ON DECISION NOT
`TO INSTITUTE INTER PARTES .................................................................... 1
`
`U.S. Patent No. 5,960,191 .................................................................................passim
`
`U.S. Patent No. 6,947,882 .................................................................................passim
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`

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`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
`
`Previously Filed
`
`EXHIBIT LIST
`
`SYNOPSYS
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`SYNOPSYS
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`SYNOPSYS
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`SYNOPSYS
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`SYNOPSYS
`
`SYNOPSYS
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`SYNOPSYS
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`SYNOPSYS
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`SYNOPSYS
`
`SYNOPSYS
`
`SYNOPSYS
`
`SYNOPSYS
`
`SYNOPSYS
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`SYNOPSYS
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`Currently Filed
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
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`1011
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`1012
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`1013
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`1014
`
` U.S. Pat. 6,947,882 (the “’882 patent”)
`
` U.S. Pat. 5,960,191 (the “’191 patent”)
`
` U.S. Pat. 5,475,830 (“Chen”)
`
` U.S. Pat. 6,020,760 (the “’760 patent”)
`
` U.S. Pat. 5,761,484 (“Agarwal”)
`
` U.S. App. Ser. No. 09/404,920 dated Sept. 24,
`1999
`
` Office Action dated Nov. 8, 2002
`
` Office Action Response dated Dec. 24, 2002
`
` Office Action dated Feb. 10, 2003
`
` RCE and Amendment dated July 10, 2003
`
` Office Action dated Aug. 25, 2003
`
` Response to Restriction Requirement dated
`Sept. 17, 2003
`
` Office Action dated Dec. 5, 2003
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` Office Action Response dated March 3, 2004
`
`SYNOPSYS
`
`1015
`
` Merriam-Webster Definition of “Independent”
`
`
`
`

`
`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
`
`PETITIONER’S REQUEST FOR REHEARING ON DECISION NOT TO
`INSTITUTE INTER PARTES REVIEW UNDER 37 C.F.R. § 42.71
`
`Synopsys respectfully requests rehearing of the Board’s Decision not to
`
`institute an inter partes review trial. Synopsys’ Petition for Inter Partes Review
`
`identified specific references that constitute prior art to U.S. Patent No. 6,947,882
`
`(the “’882 patent”). This prior art anticipates claims 1-14 and 17-20 of the ’882
`
`patent. After improperly adding a limitation to the claims, the Board disagreed,
`
`finding that there was not a reasonable likelihood that at least one of the challenged
`
`claims was unpatentable. Synopsys submits that the Board’s decision constitutes
`
`legal error and an abuse of discretion.
`
`I.
`
`BASES FOR REHEARING
`
`This request is authorized by 37 C.F.R. § 42.71(c) and (d). The Board
`
`acknowledged in its decision that it must always interpret claims using the
`
`“broadest reasonable interpretation” standard, yet did not do so in this instance.
`
`Instead, the Board made an erroneous conclusion of law when it construed the
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`“independent” clocking/ clock signal limitations. Specifically, the Board construed
`
`those limitations to require separate clock sources, even though the source of the
`
`clocking/ clock signals is nowhere mentioned in the claims. Based on this
`
`erroneous construction, the Board rejected Synopsys’ Petition.
`
`The Board also misapprehended the prior art when applying its narrow
`
`construction. The Board erroneously found that the prior art did not teach
`
`
`
`

`
`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
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`independent user clock signals and routing clock signals generated by separate
`
`sources. Figure 19 of U.S. Patent No. 5,960,191 clearly shows multiple clock
`
`generators for generating user clock signals and Figure 3 shows a routing clock,
`
`labeled “MUXCLK,” that is independent of those user clocks.
`
`Synopsys respectfully requests that the Board reconsider (1) its construction
`
`of the “independent” clocking/ clock signal limitations; (2) whether the ’191 patent
`
`teaches “separate clock sources” under the Board’s construction; and (3) whether
`
`the ’191 patent anticipates the claims under the correct construction of those
`
`limitations.
`
`II. THE BOARD ERRED IN CONSTRUING THE “INDEPENDENT”
`CLOCKING/ CLOCK SIGNAL LIMITATIONS
`A. Legal Standard
`
`The instant petition applied the broadest reasonable interpretation of the
`
`claim language. Petition at 5 (quoting 42 C.F.R. § 42.100(b)). See also Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012); In re
`
`Trans Texas Holdings Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007). While in its
`
`decision the Board agreed that it was required to give the claims their broadest
`
`possible construction, based on the plain and ordinary meaning of their terms in the
`
`context of the specification, its decision in fact narrowed the claims in a way that is
`
`not supported by the claim language or the specification.
`
`
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`

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`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
`
`As the party requesting rehearing, in the sections below Petitioner
`
`“specifically identif[ies] all matters [it] believes the Board misapprehended or
`
`overlooked, and the place where each matter was previously addressed in a motion,
`
`an opposition, or a reply.” 37 C.F.R. § 42.71(d).
`
`B.
`
`The Board’s Construction of the “Independent” Clocking/ Clock
`Signal Limitations is Not the Broadest Reasonable Interpretation
`
`The only term ostensibly construed by the Board was “independent.”
`
`Decision at 5. This term appears in both independent claims 1 and 5. Neither
`
`claim specifies a source of clocking or a source of clock signals. Nonetheless, the
`
`Board construed “independent” to require that certain clock signals are derived
`
`from different physical clock generators. Id. at 6-7. By adding an additional
`
`structural requirement of separate clock sources, not expressly contained in either
`
`of the independent claims, the Board incorrectly read a limitation into those claims
`
`and did not afford the claims their broadest reasonable interpretation.
`
`1.
`
`The Board Erroneously Relied on a Narrow Dictionary
`Definition of “Independent”
`
`The Board consulted Merriam-Webster’s online dictionary for a “plain and
`
`ordinary meaning” of “independent.” Decision at 6. Although the dictionary
`
`included five definitions, the Board chose a single definition – “not affiliated with
`
`a larger controlling unit” – for its construction. Id. Relying on that definition, the
`
`Board construed the independent clocking/ clock signal limitations to “require[]
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`

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`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
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`that the two independent clock signals are not affiliated with one controlling clock
`
`and instead the signals originate from separate clocks.” Id. The Board did not
`
`explain why it chose this particular dictionary definition of “independent,” or why
`
`it disregarded the other four definitions included in the dictionary. See Id., see
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`http://www.merriam-webster.com/dictionary/independent, attached as Ex.
`
`SYNOPSYS 1015.
`
`Dictionaries may be appropriate sources of extrinsic evidence if they do not
`
`conflict with the claims and specification. See In re Trans Texas Holdings, 498
`
`F.3d at 1299; Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en
`
`banc). Here, however, the Board selected a definition of “independent” that
`
`narrowed the claims to require separate clock sources in conflict with the plain
`
`language of the claims and the specification.
`
`The dictionary also provided a broader reasonable definition of
`
`“independent” that the Board did not adopt. This alternative definition is: “not
`
`requiring or relying on something else: not contingent”. Ex. SYNOPSYS 1015
`
`(2nd definition, 1(b)(1)). This definition has no separate structural requirement and
`
`only requires that each clock signal not rely on the other clock signal – i.e., there is
`
`no required relationship between the two clock signals. It was legal error for the
`
`Board to rely on the narrower definition of independent to limit the claims to
`
`arrangements where the two required signals must derive from two different
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`- 4 -
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`

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`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
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`physical sources.
`
`2.
`
`The Board’s Construction Of “Independent” Is Inconsistent
`With The Surrounding Claim Language
`
`The definition of “independent” adopted by the Board is also erroneous
`
`when viewed in light of the surrounding claim language. See In re NTP, Inc., 654
`
`F.3d 1279, 1288 (Fed. Cir. 2011). Claim 5 requires only that the “signal routing
`
`clock signal” used to clock the input/output circuitry is independent of the “first”
`
`and “second” clock signals used to clock the logic devices (also referred to as
`
`“user” clock signals in the patent). ’882 patent, 12:23-39. In other words, the
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`express language of the claim requires that those clock signals are independent of
`
`each other, not that the sources of the clock signals are structurally independent of
`
`each other or some “larger controlling unit,” as the Board required. See ’191
`
`patent at 20:4-19, FIG. 19 (showing that multiple independent clock signals could
`
`be generated by a single clock source).
`
`Similarly, claim 1 only requires that the “clocking” of one time multiplexed
`
`interconnection is independent of the “clocking” of the other. ’882 patent at 11:59-
`
`12:6. Claim 1 does not require independent “clock signals,” nor that such signals
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`come from physically different clock sources.
`
`3.
`
`The Board’s Construction Of “Independent” Is Inconsistent
`With The Specification
`
`The use of the term “independent” in the specification of the ’882 patent is
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`

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`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
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`consistent with the broader definition of “independent” rather than the definition
`
`adopted by the Board. See In re Trans Tex. Holdings Corp., 498 F.3d at 1298; In
`
`re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (“claims are
`
`to be given their broadest reasonable interpretation consistent with the
`
`specification”) (citation and internal quotation omitted). Throughout the
`
`specification, “independent” is used to indicate that there is no required
`
`relationship between two clock signals, not that separate physical structures are
`
`used to generate those signals. This is plainly demonstrated by several passages
`
`wherein a relationship between the signals is specified as an “exception” to
`
`“independent.” ’882 patent 4:16-19 (“[e]xcept for the relationship that each of
`
`signal routing clock 117 having a higher frequency than an associated user clock
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`118, signal routing clocks 117 are independent of user clocks 118.”); 6:18-22
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`(“except for clock signal 509 (clk2) being of a higher frequency than clock signal
`
`508, clock signals 508 and 509 (clk2) are independent of one another”). Because
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`independent clock signals have no required relationship, it was necessary to
`
`characterize a relationship between the signals as an exception to the requirement
`
`of independence. This exception is nonsensical under the Board’s construction of
`
`“independent.” No exception for a frequency relationship between independent
`
`clock signals would be necessary if the term “independent” necessarily requires
`
`that the signals originate from separate clocks.
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`

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`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
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`Other disclosures in the specification negate reading a requirement of
`
`separate clock sources into the claims. In re Bigio, 381 F.3d 1320, 1325-26 (Fed.
`
`Cir. 2004) (“Absent claim language carrying a narrow meaning, the PTO should
`
`only limit the claim based on the specification or prosecution history when those
`
`sources expressly disclaim the broader definition.”) To begin, the specification
`
`does not discuss or depict any clock source, let alone the use of separate clock
`
`sources to generate the claimed clock signals. Rather, the patent only teaches the
`
`use of different clock signals to transfer signals at different rates. ’882 patent,
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`4:13-36; 5:52-60. The sources used to generate these clock signals are irrelevant to
`
`the invention described and claimed in the ’882 patent. Although different transfer
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`rates could be achieved using clock signals generated by separate clock sources, it
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`could just as readily (and perhaps more easily) be accomplished in many other
`
`ways, including by different clock signals generated by the same clock source.
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`Such alternative structures were known at the relevant time frame. ’191 patent at
`
`20:4-19, FIG. 19.
`
`The Board misapprehended Figure 5 as illustrating the use of separate
`
`structural clock sources, when in fact it only shows a schematic with different
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`clock signals provided to different components. That Figure 5 depicts the clock
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`signals received by the logic devices and routing chip and not a clock source
`
`further demonstrates that it is the received clock signals that are independent and
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`

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`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
`
`not their physical sources. Notably, the Chen reference, which the Board agrees
`
`constitutes part of the ’191 patent for the purposes of anticipation, also discusses
`
`clock signals in terms of where that signal is received and not where it is
`
`generated. ’830 patent (“Chen”) at 6:65-7:1 (“A Clock Signal is a signal, other
`
`than a power signal, which is connected to a clock input terminal of a storage
`
`instance (e.g. a register) either directly or by a ‘singular path.’”) By focusing on
`
`sources, the Board’s construction allows the nonsensical result that two clock
`
`signals from different sources with the same phase and frequency would satisfy the
`
`claim term, but two out-of-phase, different frequency clock signals that originate
`
`from the same source would not.
`
`Even if the Board’s interpretation of Figure 5 were correct, it would not
`
`justify reading a separate structural clock source limitation into the claims. A
`
`preferred embodiment, even if it is the only embodiment, cannot be read into the
`
`claims absent a clear disclaimer in the specification. In re. Am. Acad. Sci. Tech.
`
`Ctr., 367 F.3d at 1369 (citing Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313,
`
`1325 (Fed. Cir. 2002)). It was legal error for the Board to conclude that because
`
`one embodiment does not explicitly show that the different clock signals are
`
`“derived from a single controlling clock,” the claims necessarily require separate
`
`structural clock sources. See Decision at 7.
`
`
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`

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`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
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`III. APPLYING THE CORRECT CONSTRUCTION, THE ’191 PATENT
`ANTICIPATES THE CLAIMS OF THE ’882 PATENT
`
`As set forth in Synopsys’ Petition, the ’191 patent anticipates claims 1-14
`
`and 17-20 of the ’882 patent. In denying the Petition, the Board focused on
`
`whether the clocking limitations of claim 1 and 5 were disclosed by the ’191
`
`patent. Contrary to the Board’s Decision, the ’191 patent discloses claim 1’s
`
`independent clocking of interconnects as well as claim 5’s independent signal
`
`routing and user clock signals when the broadest reasonable interpretation of
`
`“independent” is applied.
`
`For example, claim 5 of the ’882 patent merely requires that the clock signal
`
`used to clock the input/output circuitry of a logic device be independent of the
`
`clock signals used to clock the logic elements within the device. The ’191 patent
`
`discloses each of these elements. As set forth on page 24 of the Petition, the ’191
`
`patent discloses a Mux Clock Signal that is divided to produce a Divided Clock
`
`Signal. See also ’191 patent at 7:60-8:1. These signals are used to multiplex
`
`internal logic Signals A and B onto a single output signal. Id. In other words, they
`
`are “signal routing clock signals” as required by the ’882 patent.
`
`As set forth on page 22 of the Petition, the ’191 patent also discloses the
`
`generation and distribution of user clocks to the logic devices in the emulation
`
`system. See also ’191 patent at 19:15-20:36. A Mux chip is used to select a
`
`combination of clocks from many different clock sources, eight of which may be
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`

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`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
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`used on each pair of emulation boards. Id. at 19:57-64. The Board agreed that this
`
`described at least two independent clock signals. Decision at 11-12. The ’191
`
`patent further discloses a clock generator logic chip that may also generate thirty-
`
`two clock signals. ’191 patent at 20:4-19. These user clock signals are “first” and
`
`“second clock signals” as required by the ’882 patent.
`
`The ’191 patent discloses no required relationship between the clocks used
`
`to clock the logic elements (i.e, the user clocks) and the clocks used for clocking
`
`the inputs and outputs. Accordingly, these clocks are independent. The ’191
`
`patent never teaches – in its discussion of clocks and timing diagrams – that the
`
`Mux Clock or Divided Clock (“signal routing clocks”) and the user clocks (“first
`
`and second clock signals”) depend on one another. See, e.g., Petition at 27; ’191
`
`patent at Figure 19 (illustrating the generation and distribution of user clocks but
`
`making no reference to the Mux Clock or Divided Clock).
`
`The fact that the Divided Clock is used to sample the internal logic Signals
`
`A and B shows that the Divided Clock and user clocks are independent of one
`
`another. Petition at 24; ’191 patent at 7:60-8:13 and FIG. 2. Internal logic signals
`
`A and B are created using at least one user clock signal in the logic device. As
`
`discussed in the ’191 patent, and as shown in Figure 2, Mux Clock Signal may be
`
`asynchronous to Signal A and Signal B. Id. These excerpts, and others, show that
`
`the user clocks and signal routing clocks are independent. Id.; see also, Petition at
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`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
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`24-25; ’191 patent at 11:22-14:5; FIGS. 8-10.
`
`Similarly, with regard to claim 1, the ’191 patent teaches that the clocking of
`
`the first time multiplexed interconnection is independent of the clocking of the
`
`second. For example, the ’191 patent discloses several methods for multiplexing
`
`multiple bits of information onto a single physical wire. Petition at 23-25, 33; see
`
`also ’191 patent at 10:38-48. These methods may use a Mux Clock, Divided
`
`Clock, or Asynchronous Clock Signal to clock the I/O circuitry. See, e.g., Petition
`
`at 23-24; ’191 patent at 7:60-8:13, 11:40-50, and FIG. 2. According to the ’191
`
`patent, an “important aspect to consider when choosing an encoding scheme is the
`
`ability to have interconnections which operate asynchronously to each other or
`
`asynchronously to a master multiplexing clock.” Petition at 33; ’191 patent at
`
`10:66-11:2. And the Asynchronous Clock Signal need not be synchronized
`
`between any two chips in the system. Petition at 23; ’191 patent at 11:44-46.
`
`Because the clock signals allow the asynchronous operation of the interconnections
`
`between chips, they are “independent” as that term is used in the ’882 patent.
`
`Moreover, the ’191 patent discloses several types of time-division
`
`multiplexing cells, like that shown in Figure 3. Petition at 17, 23-25; ’191 patent at
`
`8:13-44, 34:27-62. The logic chips group the i/o pins into sets of four or two pins
`
`for time-division multiplexing, and other pins may not be multiplexed at all. Id. at
`
`34:27-62. Four-to-one multiplexing, two-to-one multiplexing, and no multiplexing
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`

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`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
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`may be present on a chip at the same time. Id. The ’191 patent’s different
`
`methods for multiplexing and use of different routing clocks for multiplexing
`
`further illustrates the ’191 patent’s disclosure of independently clocking two
`
`interconnections between pluralities of logic devices. Id.; Petition at 17, 23-25;
`
`’191 patent at 7:60-8:13; 10:39-47; 11:37-14:5.
`
`Finally, the Board stated in its Decision that the ’191 patent did not disclose
`
`the use of independent clocks in the emulation of a single circuit design. Decision
`
`at 12. Petitioner respectfully submits that this conclusion is flawed. The ’191
`
`patent describes having thirty-two distinct clock sources, eight of which may be
`
`used on each pair of emulation boards, which “allows different pairs of emulation
`
`boards 200 to have different clocks as might be required, for example, when more
`
`than one chip design was being emulated in a single hardware emulation system.”
`
`Petition at 17; ’191 patent at 19:54-66. It does not state that the emulation system
`
`cannot use multiple boards and different clocks to emulate a single circuit.
`
`For at least the reasons stated above, the ’191 patent discloses independent
`
`clocking of interconnects as required by claim 1 and independent signal routing
`
`and user clock signals as required by claim 5 of the ’882 patent. Thus, the ’191
`
`patent anticipates the claims-at-issue of the ’882 patent.
`
`IV. EVEN APPLYING THE BOARD’S NARROW CONSTRUCTION,
`THE ‘191 PATENT ANTICIPATES
`
`Under the Board’s flawed construction, claim 5 requires that the signal
`
`- 12 -
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`

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`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
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`routing clock signal and user clock signals originate from separate sources.
`
`Decision at 6-7. Interpreting the ’191 patent in the same manner should lead to a
`
`conclusion that it likewise teaches separate clock sources for the signal routing and
`
`user clock signals. The ’191 patent refers to the signal routing clock as the “Mux
`
`Clock Signal.” ’191 patent, 7:60-8:13. Like the ’882 patent, the ‘191 patent does
`
`not describe any source for this clock signal, but rather it depicts simply a signal
`
`input to the “logic chip” or “mux chip.” ’191 patent at FIGS. 3-4. The ‘191 patent
`
`describes how user clock signals are distributed in the emulation system. ’191
`
`patent at 19:16-29, FIG. 19. User clocks are shown to enter the system through a
`
`clock connector (620), a multi-box clock connector (630) or through connector
`
`510. ’191 patent at 19:30-34. Nowhere in the ’191 patent is it shown, or even
`
`suggested, that the “Mux Clock Signal” and the user clock signals are derived from
`
`a single controlling clock source. Following the rationale the Board applied in
`
`analyzing the ’882 patent, the clock signals disclosed in the ’191 patent must
`
`therefore originate from different sources.
`
`Comparisons of the Mux Clock Signal and the user clock signals in the ‘191
`
`patent support this conclusion. For example, the patent states that “the time-
`
`multiplexing frequency (and hence the frequency of the Mux Clock Signal) is
`
`typically much higher than the average switching rate of the component signals
`
`(i.e., the frequency of the user clock signals).” ’191 patent at 7:19-22. This is
`
`- 13 -
`
`

`
`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
`
`precisely the relationship described for the routing and user clocks in the ‘882
`
`patent, ’882 patent at 4:16-19, which the Board concluded were generated by
`
`separate clock sources, even though such sources were not expressly shown in the
`
`patent. Decision at 6-7. The Board also has agreed that even under its narrow
`
`construction, the distributed user clocks of the ’191 patent comprise at least two
`
`independent clock signals. Two user clocks would not be independent under the
`
`Board’s construction if both were derived from the same source as the Mux clock.
`
`For similar reasons, the ’191 patent discloses the use of multiple routing
`
`clock signals generated by different sources as required for claim 1 under the
`
`Board’s construction. The ’191 patent teaches using as a routing clock signal “[a]
`
`High Speed Asynchronous Clock Signal” that “need not be synchronized between
`
`any two chips in the system.” ’191 patent at 11:41-46. The patent does not teach
`
`how to generate asynchronous clock signals from a single clock source, and thus,
`
`under the Board’s reasoning, the asynchronous routing clock signals must have
`
`been created using different clock sources. The Board overlooked these
`
`disclosures in reaching its erroneous conclusion that the ’191 patent does not
`
`anticipate claims 1-14 and 17-20 of the ’882 patent.
`
`V. CONCLUSION
`
`The system disclosed in the ’191 patent is strikingly similar to the system
`
`disclosed in the ’882 patent. Petition at 6-7 (describing invention of ’882 patent),
`
`- 14 -
`
`

`
`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
`
`10 (abstract of the ’191 patent “reads as though written for the ’882 patent”). Both
`
`patents disclose systems for emulating circuit designs comprising multiple logic
`
`chips connected through multiple interconnect devices. Id. Both systems
`
`optimally utilize high density logic by time multiplexing multiple design signals
`
`onto physical logic pins. Petition at 6-7, 10. A stated goal of both inventions is to
`
`enable emulation of asynchronous logic in a system that also uses time
`
`multiplexing. Compare Decision at 3 and ’882 patent at 1: 50-58 with ’191 patent
`
`at 2:9-12, 3:19-24. To accomplish this goal, both patents teach a routing clock
`
`signal that is much faster than the user clock signals. Compare ’882 patent at 4:16-
`
`19 with ’191 patent at 7:19-22. And neither patent provides any discussion of
`
`clock signal sources.
`
`Despite these similarities, the Board construed the claims of ’882 patent to
`
`require separate clock sources, while at the same time concluding that the ’191
`
`patent did not disclose the use of separate clock sources. The Board’s narrow
`
`construction is not supported by the claim language, the specification or the
`
`extrinsic evidence. The ’191 patent clearly teaches independent clock signals if
`
`that claim term is given its plain and ordinary meaning consistent with the claims
`
`and the specification. And even under the Board’s narrow construction, if the
`
`disclosure of the ’191 patent is viewed in the same light as the ’882 patent, it
`
`likewise clearly discloses separate sources for those clock signals.
`
`- 15 -
`
`

`
`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
`
`Dated: March 25, 2013
`
`
`Respectfully submitted,
`
`By: /William H. Wright/
`William H. Wright
`CA Bar No. 161580
`Registration No. 36,312
`wwright@orrick.com
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`777 South Figueroa Street, Suite
`3200
`Los Angeles, California 90017
`Tel: 213-612-2020
`Fax: 213-612-2499
`
`Travis Jensen
`CA Bar No. 259925
`Registration No. 60,087
`tjensen@orrick.com
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`1000 Marsh Road
`Menlo Park, CA 94025-1015
`Tel: 650-614-7400
`Fax: 650-614-7401
`
`Attorneys for Petitioner
`Synopsys, Inc.
`
`
`
`

`
`Request for Rehearing re. Inter Partes Review of U.S. Pat. 6,947,882
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies service on the Patent Owner, pursuant to 37
`C.F.R.§ 42.6(e), by FedEx Standard Overnight delivery, of a true copy of the
`foregoing PETITIONER’S REQUEST FOR REHEARING ON DECISION
`NOT TO INSTITUTE INTER PARTES REVIEW UNDER 37 C.F.R. § 42.71
`to lead counsel of record for Patent Owner as follows:
`
`Christopher L. McKee
`Mentor Graphics Corporation
`c/o Banner & Witcoff, Ltd.
`1100 13th Street, N.W.
`Suite 1200
`Washington, DC 20005
`
`Dated: March 25, 2013
`
`
`
`
`By: /William H. Wright/
`William H. Wright

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