Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 8
`Entered: February 9, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`LG ELECTRONICS U.S.A., INC., and
`LG ELECTRONICS MOBILECOMM U.S.A., INC.,
`Petitioner,
`
`v.
`
`CYPRESS SEMICONDUCTOR CORP.,
`Patent Owner.
`____________
`
`Case IPR2014-01386
`Patent 6,012,103
`
`
`
`Before SALLY C. MEDLEY, DONNA M. PRAISS, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`PRAISS, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`Paper 8
`Entered: February 9, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`LG ELECTRONICS U.S.A., INC., and
`LG ELECTRONICS MOBILECOMM U.S.A., INC.,
`Petitioner,
`
`v.
`
`CYPRESS SEMICONDUCTOR CORP.,
`Patent Owner.
`____________
`
`Case IPR2014-01386
`Patent 6,012,103
`
`
`
`Before SALLY C. MEDLEY, DONNA M. PRAISS, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`PRAISS, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2014-01386
`Patent 6,012,103
`
`
`LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
`
`Mobilecomm U.S.A., Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to
`
`institute an inter partes review of claims 14–16, 18–20, and 23–27 of U.S.
`
`Patent No. 6,012,103 (“the ’103 patent”) pursuant to 35 U.S.C. §§ 311–319.
`
`A Preliminary Response (Paper 7, “Prelim. Resp.”) was filed by Cypress
`
`Semiconductor Corporation (“Patent Owner”). We have jurisdiction under
`
`35 U.S.C. § 314. For the reasons that follow, we authorize institution of an
`
`inter partes review.
`
`
`
`I.
`
`BACKGROUND
`
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`
`inter partes review may be authorized 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).
`
`Petitioner challenges claims 14–16, 18–20, and 23–27 of the ’103
`
`patent under 35 U.S.C. § 103(a). Pet. 3. We institute an inter partes review
`
`as to claims 14–16, 18–20, and 23–27 as discussed below.
`
`Related Proceedings
`A.
`The ’103 patent was asserted in a complaint filed in the U.S. District
`
`Court for the Northern District of California in Cypress Semiconductor,
`
`Corp. v. LG Electronics, Inc., No. 4:13-cv-04034. Id. at 2. U.S. Patents
`
`6,249,825 and 6,493,770, which are related to the ’103 patent through
`
`continuation applications, are also asserted in the litigation and are the
`
`subject of concurrently-filed inter partes review proceedings IPR2014-
`
`01396 and IPR2014-01405, respectively. Id.
`
`2
`
`
`
`
`
`IPR2014-01386
`Patent 6,012,103
`
`
`
`
`B.
`The ’103 Patent (Ex. 1001)
`The ’103 patent, titled “Bus Interface System and Method,” is directed
`
`to a system and method for emulating a physical disconnection and
`
`reconnection of a peripheral device connected by a computer bus and port to
`
`a host computer to reconfigure the bus and port for a particular peripheral
`
`device. Ex. 1001, Abstr. The need to physically disconnect and reconnect a
`
`peripheral device to reconfigure the device is solved by a switch connected
`
`to a data line in the peripheral device. Id. at 6:54–62, 6:65–7:11. The switch
`
`changes the voltage state of the data lines, which the host computer monitors
`
`and uses to detect the connection of a peripheral device. Id. at 6:17–20, 7:1–
`
`11.
`
`C.
`Illustrative Claims
`Independent claims 14 and 24 are illustrative of the claims at issue:
`
`14. A method for reconfiguring a peripheral device
`connected by a computer bus and port to a host computer, the
`method comprising the steps of:
`
`detecting the peripheral device connected to the port,
`wherein the peripheral device has a first configuration;
`
`downloading a second set of configuration information
`from the host computer into the peripheral device over the
`computer bus; and
`
`electronically simulating a physical disconnection and
`reconnection of the peripheral device to reconfigure the
`peripheral device to a second configuration based on the second
`set of configuration information.
`
`24. A peripheral interface device for a computer
`peripheral bus and port, comprising:
`
`3
`
`
`
`
`
`IPR2014-01386
`Patent 6,012,103
`
`
`means for physically connecting a peripheral device to a
`computer system through the computer peripheral bus, wherein
`the peripheral device has a first configuration;
`
`means for receiving a second set of configuration
`information from a computer system over the computer
`peripheral bus and port; and
`
`means for electronically simulating a physical
`disconnection and reconnection of the peripheral device to
`reconfigure the peripheral device to a second configuration
`based on the second set of configuration information.
`
`D.
`The Prior Art
`Petitioner relies on the following prior art in addition to asserted
`
`admitted prior art in the ’103 patent (“APA”):
`
`Reference
`Michelson
`Davis
`Yap
`PCCextend
`
`Date
`Publication
`May 6, 1997
`US 5,628,028
`Jan. 19, 1999
`US 5,862,393
`June 6, 2000
`US 6,073,193
`PCCextend 100 User’s Manual Apr. 3, 1995
`
`Exhibit
`1003
`1005
`1002
`1004
`
`Petitioner also relies on the Declaration of Geert Knapen dated August 26,
`
`2014 (“Knapen Declaration” Ex. 1012).1
`
`E.
`The Asserted Grounds
`Petitioner challenges claims 14–16, 18–20, and 23–27 of the ’103
`
`patent on the following grounds:
`
`Claims Challenged
`14, 18–20, 23–27
`15, 16
`14–16, 18, 23–26
`19, 20, 27
`
`
`Reference(s)
`Basis
`APA and Yap
`§ 103(a)
`APA, Yap, and Michelson
`§ 103(a)
`Michelson, PCCextend, and Davis
`§ 103(a)
`§ 103(a) Michelson, PCCextend, Davis, and APA
`
`
`1 Citations herein to the Knapen Declaration are to the Corrected Knapen
`Declaration.
`
`4
`
`
`
`
`
`IPR2014-01386
`Patent 6,012,103
`
`
`F.
`Claim Interpretation
`As a first step in our analysis, we determine the meaning of the
`
`claims, for purposes of this decision, using the “broadest reasonable
`
`construction in light of the specification of the patent in which [they]
`
`appear[].” 37 C.F.R. § 42.100(b). Under that standard, claim terms are
`
`given their ordinary and customary meaning, as would be understood by one
`
`of ordinary skill in the art in the context of the entire disclosure. In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`Petitioner proposes constructions for the claim terms “electronically
`
`simulating a physical disconnection and reconnection of the peripheral
`
`device” (claim 14), “means for physically connecting a peripheral device to
`
`a computer system through the computer peripheral bus” (claim 24), “means
`
`for receiving a second set of configuration information from a computer
`
`system over the computer peripheral bus and port” (claim 24), and “means
`
`for electronically simulating a physical disconnection and reconnection of
`
`the peripheral device to reconfigure the peripheral device to a second
`
`configuration based on the second set of configuration information” (claim
`
`24). Pet. 7–9. Patent Owner does not address these proposed claim
`
`constructions in the Preliminary Response.
`
`Regarding the claim term “electronically simulating a physical
`
`disconnection and reconnection of the peripheral device,” we determine at
`
`this preliminary stage that the broadest reasonable interpretation includes the
`
`reset operation of dependent claim 23. Accordingly, based on the current
`
`record, we construe this term to mean “using an electronic circuit to perform
`
`an action, such as an electronic reset, associated with physical disconnection
`
`and reconnection of a peripheral device” as proposed by Petitioner.
`
`5
`
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`
`
`IPR2014-01386
`Patent 6,012,103
`
`
`Regarding the means plus function terms of independent claim 24,
`
`Petitioner identifies the function and corresponding structure disclosed in the
`
`’103 patent. Id. at 8–9. Accordingly, based on the current record, we
`
`conclude that the broadest reasonable construction of the means plus
`
`function terms encompasses structures equivalent to those identified in the
`
`Specification of the ’103 patent. Specifically “means for physically
`
`connecting a peripheral device to a computer system through the computer
`
`peripheral bus” encompasses a connector (Ex. 1001, 1:39–54) and
`
`equivalents thereof, “means for receiving a second set of configuration
`
`information from a computer system over the computer peripheral bus and
`
`port” encompasses a peripheral device interface (id. at 5:12, Fig. 2) and
`
`equivalents thereof, and “means for electronically simulating a physical
`
`disconnection and reconnection of the peripheral device to reconfigure the
`
`peripheral device to a second configuration based on the second set of
`
`configuration information” encompasses an electronic circuit (id. at 6:48–
`
`7:11, Fig. 4) and equivalents thereof.
`
`
`
`II. ANALYSIS
`
`We turn now to Petitioner’s asserted grounds of unpatentability under
`
`35 U.S.C. § 103(a) to determine whether Petitioner has met the threshold
`
`standard of 35 U.S.C. § 314(a). We first consider Petitioner’s grounds based
`
`on Michelson as the primary reference.
`
`A. Claims 14–16, 18, and 23–26
`
`Based on our review of Petitioner’s analysis and supporting evidence,
`
`we are persuaded that Petitioner has shown, on the current record, that there
`
`is a reasonable likelihood that it would prevail in its obviousness challenge
`
`6
`
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`
`
`IPR2014-01386
`Patent 6,012,103
`
`to claims 14–16, 18, and 23–26 over the combination of Michelson,
`
`PCCextend, and Davis.
`
`Regarding independent claim 14, Petitioner asserts that Michelson
`
`teaches reconfiguring a peripheral device connected by a bus to a port of a
`
`host computer where the peripheral device is a Personal Computer Memory
`
`Card International Association (PCMCIA) peripheral device, the bus is a
`
`PCMCIA bus, and the computer includes a PCMCIA adapter circuit
`
`connected to a PCMCIA card connector on the PCMCIA card. Pet. 43–44.
`
`Petitioner further asserts that the host computer detects the peripheral device,
`
`which has a first configuration, and downloads a second set of configuration
`
`information to the peripheral device over the bus, as required by claim 14.
`
`Id. at 44–46. Petitioner argues that the step of “electronically simulating a
`
`physical disconnection and reconnection of the peripheral device” recited in
`
`claim 14 is also taught by Michelson’s electronic circuit that operates in
`
`response to an electrical reset signal. Id. at 46–48. Additionally, Petitioner
`
`asserts that the use of a switch, in particular, to simulate a card removal and
`
`insertion was also known as evidenced by PCCextend. Id. at 48–49. More
`
`specifically, Petitioner asserts that an electronic switch, namely a transistor,
`
`in the card detect line was known to electronically simulate a physical
`
`disconnection and reconnection of a peripheral device over a PCMCIA bus
`
`as evidenced by Davis. Id. at 49–50. Petitioner supports its analysis of the
`
`combination of Michelson, PCCextend, and Davis, as applied to claim 14,
`
`with the Knapen Declaration (Ex. 1012), as evidence that the selection of the
`
`type of switch to simulate a physical disconnection would be within the level
`
`of skill of one of ordinary skill in the art. Id. at 43–50; Ex. 1012 ¶¶ 157–
`
`7
`
`175.
`
`
`
`
`
`IPR2014-01386
`Patent 6,012,103
`
`
`Regarding independent claim 24, Petitioner identifies equivalent
`
`structures required by the recited “means for physically connecting” (Pet.
`
`53), “means for receiving a second set of configuration information” (id. at
`
`54–55), and “means for electronically simulating a physical disconnection
`
`and reconnection of the peripheral device” (id. at 55) in Michelson,
`
`PCCextend, or Davis.
`
`Regarding claims 15, 16, 18, 23, 25, and 26, which depend directly or
`
`indirectly from claim 14 or 24, Petitioner identifies where these further
`
`limitations also are disclosed in Michelson, PCCextend, or Davis. Id. at 50–
`
`52, 56–57.
`
`Patent Owner requests that if the Board determines that trial should be
`
`instituted in this proceeding, it do so on this ground in the Petition alone.
`
`Prelim. Resp. 22. Patent Owner does not make arguments, at this time,
`
`regarding the merits of this ground of unpatentability against the challenged
`
`claims.
`
`Based on the cited disclosures, Petitioner persuades us that, on the
`
`current record, there is a reasonable likelihood it will prevail in showing that
`
`claims 14–16, 18, and 23–26 would have been obvious over the combination
`
`of Michelson, PCCextend, and Davis.
`
`B.
`
`Claims 19, 20, and 27
`
`Based on our review of Petitioner’s analysis and supporting evidence,
`
`we are persuaded that Petitioner has shown, on the current record, that there
`
`is a reasonable likelihood that they would prevail in their obviousness
`
`challenge to dependent claims 19, 20, and 27 over the combination of
`
`Michelson, PCCextend, Davis, and APA. The claims require that the
`
`peripheral device use a universal serial bus and port (claims 19 and 27) and
`
`8
`
`
`
`
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`IPR2014-01386
`Patent 6,012,103
`
`that the second set of configuration information comprises configuration
`
`data and executable code (claim 20).
`
`Petitioner asserts that the substitution of a Universal Serial Bus (USB)
`
`for a PCMCIA bus would have involved only routine engineering and that
`
`the advantages of a USB were known. Pet. 58, 60. Petitioner relies on the
`
`background section of the ’103 patent as an admission that the advantages of
`
`USB were known, and provide further evidence with the Knapen
`
`Declaration. Id. The Knapen Declaration further supports the substitution
`
`being routine. Ex. 1012 ¶¶ 211, 217.
`
`Petitioner also asserts that the programming data file disclosed in
`
`Michelson is a combination of both “configuration data” and “executable
`
`code” recited in dependent claim 20. Pet. 59. Petitioner also argues that it
`
`would have been obvious to program the peripheral device in Michelson
`
`with software containing data and code instead of the FPGA programming
`
`data file, because both were known ways of programming a peripheral
`
`device, and, therefore, known substitutes that yielded predictable results. Id.
`
`In support of its argument, Petitioner relies on both the Knapen Declaration
`
`and the APA disclosure of downloading new code or configuration
`
`information into the memory of the peripheral device. Id.
`
`In the Preliminary Response, Patent Owner contends that a prima
`
`facie case of obviousness has not be established because PCMCIA and USB
`
`technology are structurally different and the Petition fails to explain the
`
`difference when combining teachings from these two technologies or why
`
`the combination would involve only routine engineering. Prelim. Resp. 19,
`
`21. Patent Owner also argues that “the ’103 Patent does not provide the
`
`prior art admissions that Petitioner alleges.” Id. at 12.
`
`9
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`
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`IPR2014-01386
`Patent 6,012,103
`
`
`We are not persuaded by Patent Owner’s arguments because if a
`
`person of ordinary skill can implement a predictable variation in either the
`
`same field or a different one, the combination is likely obvious. KSR Int’l
`
`Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Additionally, Petitioner
`
`provides both the APA and the Knapen Declaration as support for the state
`
`of the prior art.
`
`In sum, given the cited disclosures, Petitioner persuades us that, on the
`
`current record, there is a reasonable likelihood it would prevail in showing
`
`that claims 19, 20, and 27 would have been obvious in view of the
`
`combination of Michelson, PCCextend, Davis, and APA.
`
`
`
`C.
`
`Other Grounds
`
`Petitioner also asserts the following grounds of unpatentability under
`
`35 U.S.C. § 103(a):
`
`1.
`
`2.
`
`Claims 14, 18–20, and 23–27 over APA and Yap; and
`
`Claims 15 and 16 over APA, Yap, and Michelson.
`
`Pet. 20–43. We exercise our discretion and decline to institute review based
`
`on these grounds. See 37 C.F.R. § 42.108(a).
`
`
`
`D. Conclusion
`
`For the foregoing reasons, we determine that the information
`
`presented in the Petition establishes that there is a reasonable likelihood that
`
`Petitioner would prevail in establishing the unpatentability of claims 14–16,
`
`18–20, and 23–27 of the ’103 patent.
`
`The Board has not made a final determination on the patentability of
`
`any challenged claim.
`
`10
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`
`
`IPR2014-01386
`Patent 6,012,103
`
`
`
`
`III. ORDER
`
`Accordingly, it is
`
`ORDERED that inter partes review is instituted with respect to the
`
`following grounds of unpatentability:
`
`(1) claims 14–16, 18, and 23–26 as obvious over Michelson,
`
`PCCextend, and Davis under 35 U.S.C. § 103(a); and
`
`(2) claims 19, 20, and 27 as obvious over Michelson, PCCextend,
`
`Davis, and APA under 35 U.S.C. § 103(a);
`
`FURTHER ORDERED that no ground other than those specifically
`
`instituted above is authorized for the inter partes review; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of the ’103 patent is hereby instituted commencing on the
`
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`
`§ 42.4, notice is hereby given of the institution of a trial.
`
`11
`
`
`
`
`
`IPR2014-01386
`Patent 6,012,103
`
`PETITIONER:
`
`Jason M. Shapiro
`Soumya Panda
`ROTHWELL, FIGG, ERNST & MANBECK P.C.
`jshapiro@rothwellfigg.com
`spanda@rothwellfigg.com
`
`PATENT OWNER:
`
`Robert R. Laurenzi
`Robert S. Magee
`KAYE SCHOLER LLP
`Robert.Laurenzi@kayescholer.com
`Robert.Magee@kayescholer.com
`
`
`
`
`
`12
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