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 IPR2014-01396
`Patent 6,249,825 B1
`
`
`
`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 IPR2014-01396
`Patent 6,249,825 B1
`
`
`
`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
`
`
`
`IPR2014-01396
`Patent 6,249,825 B1
`
`
`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 1–3, 5, 7, 10–13, and 15–20 of U.S.
`
`Patent No. 6,249,825 B1 (“the ’825 patent”) pursuant to 35 U.S.C. §§ 311–
`
`319. A Preliminary Response (Paper 6, “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 1–3, 5, 7, 10–13, 15–17, and 19 of the
`
`’825 patent under 35 U.S.C. § 103(a) and claims 18–20 under 35 U.S.C.
`
`§ 102(e). Pet. 3–4. We institute an inter partes review as to claims 1–3, 5,
`
`7, 10–13, and 15–20 as discussed below.
`
`Related Proceedings
`A.
`The ’825 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
`
`6,012,103 and 6,493,770, which are related to the ’825 patent through
`
`continuation applications, are also asserted in the litigation and are the
`
`subject of concurrently-filed inter partes review proceedings IPR2014-
`
`2
`
`
`
`
`
`IPR2014-01396
`Patent 6,249,825 B1
`
`01386 and IPR2014-01405, respectively. Id.
`
`
`
`B.
`
`The ’825 Patent (Ex. 1001)
`
`The ’825 patent, titled “Universal Serial Bus Interface System and
`
`Method,” is directed to a system and method for reconfiguring a peripheral
`
`device having a first configuration connected by a computer bus and port to
`
`a host computer. Ex. 1001, Abstr. A first circuit can be configured to
`
`download information for a second configuration from the host computer
`
`and a second circuit can be configured to electronically simulate a physical
`
`disconnection and reconnection of the peripheral device. Id. Reconfiguring
`
`the peripheral device without physically disconnecting it is solved by a
`
`switch connected to a data line in the peripheral device. Id. at 6:51–55,
`
`6:66–7:15. 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 6:18–21, 6:66–7:12.
`
`C.
`Illustrative Claims
`Independent claims 1, 11, and 18 are illustrative of the claims at issue:
`
`1. A system for reconfiguring a peripheral device having
`a first configuration connected by a computer bus and a port to
`a host computer, the system comprising:
`
`a first circuit configured to download information for a
`second configuration from the host computer into the peripheral
`device over the computer bus; and
`
`a second circuit configured to electronically simulate a
`physical disconnection and reconnection of the peripheral
`device over said computer bus to reconfigure the peripheral
`device to said second configuration.
`
`3
`
`
`
`
`
`IPR2014-01396
`Patent 6,249,825 B1
`
`
`11. A method for reconfiguring a peripheral device
`having a first configuration connected by a computer bus and
`port to a host computer, the method comprising the steps of:
`
`(A) downloading information for a second configuration
`from the host computer into the peripheral device over the
`computer bus; and
`
`(B) electronically simulating a physical disconnection
`and reconnection of the peripheral device over said computer
`bus to reconfigure the peripheral device to said second
`configuration.
`
`18. A system for simulating a disconnection and
`reconnection of a peripheral device connected by a computer
`bus and a port to a host computer, the system comprising:
`
`a first circuit configured to detect the peripheral device
`connected to the port; and
`
`a second circuit configured to electronically simulate a
`physical disconnection and reconnection of the peripheral
`device over said computer bus.
`
`D.
`The Prior Art
`Petitioner relies on the following prior art in addition to asserted
`
`admitted prior art in the ’825 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).
`
`E.
`The Asserted Grounds
`Petitioner challenges claims 1–3, 5, 7, 10–13, and 15–20 of the ’825
`
`patent on the following grounds:
`
`4
`
`
`
`
`
`IPR2014-01396
`Patent 6,249,825 B1
`
`
`
`
`Claims Challenged
`1, 5, 7, 10, 11, 15–17
`2, 3, 12, 13
`1–3, 10–13, 17
`5, 7, 15, 16
`18–20
`18, 20
`19
`
`
`
`Reference(s)
`Basis
`APA and Yap
`§ 103(a)
`APA, Yap, Michelson
`§ 103(a)
`Michelson, PCCextend, Davis
`§ 103(a)
`§ 103(a) Michelson, PCCextend, Davis, APA
`§ 102(e)
`Yap
`§ 102(e)
`Davis
`§ 103(a)
`Davis and APA
`
`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 a construction for the claim term “electronically
`
`[simulate/simulating] a physical disconnection and reconnection of the
`
`peripheral device” (claims 1 and 11) that is broad enough not to exclude the
`
`reset circuit of dependent claims 10 and 17. Pet. 7–8. Patent Owner does
`
`not address the proposed claim construction in the Preliminary Response.
`
`Regarding the claim term “electronically [simulate/simulating] a
`
`physical disconnection and reconnection of the peripheral device,” we
`
`determine at this preliminary stage that the broadest reasonable
`
`interpretation includes the reset circuit operation of the dependent claims.
`
`Accordingly, based on the current record, we construe this term to mean
`
`5
`
`
`
`
`
`IPR2014-01396
`Patent 6,249,825 B1
`
`“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.
`
`
`
`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 1–3, 10–13, and 17
`
`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
`
`to claims 1–3, 10–13, and 17 over the combination of Michelson,
`
`PCCextend, and Davis.
`
`Regarding independent claim 1, 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. 36–38.
`
`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 1. Id.
`
`at 38–39. Petitioner argues that “a second circuit configured to
`
`electronically simulate a physical disconnection and reconnection of the
`
`6
`
`
`
`
`
`IPR2014-01396
`Patent 6,249,825 B1
`
`peripheral device” recited in claim 1 is also taught by Michelson’s electronic
`
`circuit that operates in response to an electrical reset signal. Id. at 39–41.
`
`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 41–42. 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 42–43.
`
`Petitioner supports its analysis of the combination of Michelson,
`
`PCCextend, and Davis, as applied to claim 1, 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 39–43; Ex. 1012 ¶¶ 148–154.
`
`Regarding independent claim 11, Petitioner contends the claimed
`
`method is equivalent to the system of independent claim 1, and, therefore,
`
`would have been obvious over the combination of Michelson, PCCextend,
`
`and Davis for the same reasons explained with respect to claim 1. Pet. 45.
`
`Regarding claims 2, 3, 10, 12, 13, and 17, which depend directly or
`
`indirectly from claim 1 or 11, Petitioner identifies where these further
`
`limitations also are disclosed in Michelson, PCCextend, or Davis. Id. at 43–
`
`47.
`
`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 (and the
`
`ground based on Davis under § 102(e)). Prelim. Resp. 2, 22. Patent Owner
`
`does not make arguments, at this time, regarding the merits of these grounds
`
`of unpatentability against the challenged claims.
`
`7
`
`
`
`
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`IPR2014-01396
`Patent 6,249,825 B1
`
`
`Based on the cited disclosures, Petitioner persuades us that, on the
`
`current record, there is a reasonable likelihood it would prevail in showing
`
`that claims 1–3, 10–13, and 17 would have been obvious over the
`
`combination of Michelson, PCCextend, and Davis.
`
`B.
`
`Claims 5, 7, 15, and 16
`
`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
`
`to dependent claims 5, 7, 15, and 16, over the combination of Michelson,
`
`PCCextend, Davis, and APA. The claims require that the peripheral device
`
`use a universal serial bus and port (claims 5 and 15) and that the second set
`
`of configuration information comprises configuration data and executable
`
`code (claims 7 and 16).
`
`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. 47–48, 50–51. Petitioner relies
`
`on the background section of the ’825 patent as an admission that the
`
`advantages of USB were known, and provides further evidence with the
`
`Knapen Declaration. Id. The Knapen Declaration further supports the
`
`substitution being routine. Ex. 1012 ¶¶ 173–174, 180.
`
`Petitioner also asserts that the programming data file disclosed in
`
`Michelson is a combination of both “configuration data” and “executable
`
`code” recited in dependent claims 7 and 16. Pet. 48–50, 51. 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
`
`8
`
`
`
`
`
`IPR2014-01396
`Patent 6,249,825 B1
`
`peripheral device, and, therefore, known substitutes that yielded predictable
`
`results. Id. at 49. 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. at
`
`49–50.
`
`In the Preliminary Response, Patent Owner contends that a prima
`
`facie case of obviousness has not been 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. 18–
`
`22. Patent Owner also argues that “the ’825 patent does not provide the
`
`prior art admissions that Petitioner alleges.” Id. at 12. Regarding
`
`Petitioner’s challenge to claims 5, 7, 15, and 16, Patent Owner contends that
`
`the need to physically disconnect and reconnect a USB cable to the host
`
`computer in order to alter the configuration of a peripheral device “is
`
`actually a recognition of [a] previously unknown problem with the USB
`
`standard.” Id. at 16.
`
`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
`
`supports its arguments with both the APA and the Knapen Declaration.
`
`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 5, 7, 15, and 16 would have been obvious in view of the
`
`combination of Michelson, PCCextend, Davis, and APA.
`
`9
`
`
`
`
`
`IPR2014-01396
`Patent 6,249,825 B1
`
`
`
`
`
`
`C.
`
`Claims 18–20
`
`Petitioner contends that Davis anticipates the system recited in
`
`independent claim 18 as well as the solid state switch required by dependent
`
`claim 20. Pet. 54–58. Petitioner further asserts that dependent claim 19,
`
`which requires that the computer bus and port be a Universal Serial Bus and
`
`port, would have been obvious over Davis in view of the APA. Id. at 58.
`
`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 challenge to claims 18–20
`
`based on Davis alone or in combination with APA.
`
`Regarding claim 18, Petitioner contends that Davis teaches a system
`
`for simulating the disconnection and reconnection of a peripheral device
`
`connected to a host computer by a computer bus and port where the
`
`peripheral device is a PCMCIA device, the port is a PCMCIA socket, and
`
`the wires connecting the device to the computer constitutes a PCMCIA
`
`computer bus. Id. at 54–55 (citing Ex. 1012 ¶ 194, Ex. 1005, 4:16–23, 6:15–
`
`20, Fig. 1). Petitioner relies on the disclosure in Davis of simulating a
`
`disconnection and reconnection of the peripheral device “by ‘tricking [a]
`
`device controller to take actions in response to [an] apparent removal of the
`
`device 12.’” Pet. 54 (citing Ex. 1012 ¶ 194 quoting Ex. 1005, 9:47–48).
`
`Petitioner identifies as the required “first circuit configured to detect the
`
`peripheral device” the disclosure in Davis of a pair of card detect lines that
`
`connect the device to a device controller when the device is properly
`
`connected to the socket. Id. at 55–57 (citing Ex. 1012 ¶ 197, Ex. 1005,
`
`6:14–54). Petitioner also identifies the circuit in Davis including FET
`
`10
`
`
`
`
`
`IPR2014-01396
`Patent 6,249,825 B1
`
`transistors configured to communicate device insertion or removal events to
`
`the card controller as the required “second circuit configured to
`
`electronically simulate a physical disconnection and reconnection of the
`
`peripheral device over said computer bus.” Id. at 57 (citing Ex. 1012 ¶¶
`
`199–200, Ex. 1005, 7:23–35, 8:29–34, 9:18–32, 45–52, Fig. 3). The
`
`transistor taught by Davis is said to be a solid state switch as required by
`
`dependent claim 20. Id. at 58 (citing Ex. 1012 ¶ 202, Ex. 1005, 7:31–34).
`
`Regarding claim 19, Petitioner contends that the known advantages of
`
`a USB connection system would have motivated one of ordinary skill in the
`
`art of interfacing peripheral devices to substitute a USB for a PCMCIA bus
`
`and the substitution would have involved routine engineering. Id. (citing Ex.
`
`1012 ¶ 203, Ex. 1001, 1:39–58).
`
`Patent Owner asserts that the challenge to claim 19 based on Davis
`
`and the APA is insufficient to establish a prima facie case of obviousness for
`
`the same reasons discussed above with respect to the challenge to claims 5,
`
`7, 15, and 16. Prelim. Resp. 21–22. We are not persuaded by Patent
`
`Owner’s arguments for the same reasons explained above.
`
`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 18 and 20 would have been anticipated by Davis and claim 19
`
`would have been obvious over Davis and the APA.
`
`
`
`11
`
`
`
`
`
`IPR2014-01396
`Patent 6,249,825 B1
`
`
`D.
`
`Other Grounds
`
`Petitioner also asserts the following grounds of unpatentability:
`
`1.
`
`Claims 1, 5, 7, 10, 11, and 15–17 under 35 U.S.C. § 103(a) over APA
`
`and Yap;
`
`2.
`
`Claims 2, 3, 12, and 13 under 35 U.S.C. § 103(a) over APA, Yap, and
`
`Michelson; and
`
`3.
`
`Claims 18–20 under 35 U.S.C. § 102(e) over Yap.
`
`Pet. 19–36, 51–54. We exercise our discretion and decline to institute
`
`review based on these grounds. See 37 C.F.R. § 42.108(a).
`
`
`
`E.
`
`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 1–3, 5,
`
`7, 10–13, and 15–20 of the ’825 patent.
`
`The Board has not made a final determination on the patentability of
`
`any challenged claim.
`
`
`
`Accordingly, it is
`
`III. ORDER
`
`ORDERED that inter partes review is instituted with respect to the
`
`following grounds of unpatentability:
`
`(1) claims 1–3, 10–13, and 17 as obvious over Michelson, PCCextend,
`
`and Davis under 35 U.S.C. § 103(a);
`
`(2) claims 5, 7, 15, and 16 as obvious over Michelson, PCCextend,
`
`Davis, and APA under 35 U.S.C. § 103(a);
`
`12
`
`
`
`
`
`IPR2014-01396
`Patent 6,249,825 B1
`
`
`(3) claims 18 and 20 as anticipated by Davis under 35 U.S.C.
`
`§ 102(e); and
`
`(4) claim 19 as obvious over 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 ’825 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.
`
`13
`
`
`
`
`
`IPR2014-01396
`Patent 6,249,825 B1
`
`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
`
`
`
`14
`
`
`
`
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