Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 7
`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 IPR2014-01405
`Patent 6,493,770 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 7
`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 IPR2014-01405
`Patent 6,493,770 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
`
`
`
`IPR2014-01405
`Patent 6,493,770 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. 6,493,770 B1 (“the ’770 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, 15–20 of the ’770
`
`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 ’770 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 6,249,825 B1, which are related to the ’770 patent through
`
`continuation applications, are also asserted in the litigation and are the
`
`
`
`
`2
`
`
`
`IPR2014-01405
`Patent 6,493,770 B1
`
`subject of concurrently-filed inter partes review proceedings IPR2014-
`
`01386 and IPR2014-01396, respectively. Id.
`
`
`
`B.
`
`The ’770 patent (Ex. 1001)
`
`The ’770 patent, titled “System for Reconfiguring a Peripheral Device
`
`by Downloading Information from a Host and Electronically Simulating a
`
`Physical Disconnection and Reconnection to Reconfigure the Device,” is
`
`directed to a system and method for reconfiguring, from a first configuration
`
`to a second manufacturer specific configuration through an electronic reset,
`
`a peripheral device connected by a computer bus and port to a host
`
`computer. Ex. 1001, Abstr. A peripheral interface device for a standardized
`
`computer peripheral device bus and port emulates 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 6:59–7:6, 7:12–22. 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 6:27–43.
`
`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 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 to reconfigure the peripheral device to said
`
`
`
`
`3
`
`
`
`IPR2014-01405
`Patent 6,493,770 B1
`
`
`second configuration while supplying electrical power to
`said peripheral device.
`
`11. A method for reconfiguring a peripheral device
`having a first configuration connected by a computer bus 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 to reconfigure the
`peripheral device to said second configuration while supplying
`electrical power to said peripheral device.
`
`18. A system for reconfiguring a peripheral device
`having a configuration connected by a computer bus to a host
`computer, the system comprising:
`
`a first circuit configured to detect the peripheral device
`connected to the computer bus; and
`
`a second circuit configured to electronically simulate a
`physical disconnection and reconnection of the peripheral
`device to reset said configuration of said peripheral device
`while supplying electrical power to said peripheral device.
`
`D.
`The Prior Art
`Petitioner relies on the following prior art in addition to asserted
`
`admitted prior art in the ’770 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 27,
`
`2014 (“Knapen Declaration,” Ex. 1012).
`
`
`
`
`4
`
`
`
`IPR2014-01405
`Patent 6,493,770 B1
`
`
`E.
`The Asserted Grounds
`Petitioner challenges claims 1–3, 5, 7, 10–13, and 15–20 of the ’770
`
`patent on the following grounds:
`
`Reference(s)
`Basis
`Claims Challenged
`APA and Yap
`§ 103(a)
`1, 5, 7, 10, 11, 15–17
`APA, Yap, Michelson
`§ 103(a)
`2, 3, 12, 13
`Michelson, PCCextend, Davis
`1–3, 10–13, 16–18, 20 § 103(a)
`5, 7, 15, 19
`§ 103(a) Michelson, PCCextend, Davis, APA
`18–20
`§ 102(e)
`Yap
`
`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 operation of dependent claims 10 and 17.
`
`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,
`
`
`
`
`5
`
`
`
`IPR2014-01405
`Patent 6,493,770 B1
`
`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, 16–18, and 20
`
`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, 16–18, and 20 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. 37–38.
`
`Petitioner further asserts that the peripheral device has a first configuration
`
`that is a generic configuration and a second configuration that comprises a
`
`unique manufacturer configuration. Id. at 33–35, 38. Michelson also
`
`discloses programming data from the host computer is received by the
`
`interface chip through a standard PCMCIA bus, which Petitioner contends is
`
`an example of “information for a second configuration” recited in claim 1.
`
`
`
`
`6
`
`
`
`IPR2014-01405
`Patent 6,493,770 B1
`
`Id. at 39–40 (citing Ex. 1003, 4:13–15, Ex. 1012 ¶ 145.) Petitioner argues
`
`that “a second circuit configured to electronically simulate a physical
`
`disconnection and reconnection of the 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 40–41. 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 41–43. 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 43–44. 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 40–44; Ex. 1012 ¶¶ 147–
`
`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 independent claim 18, Petitioner contends that Michelson
`
`teaches a system for reconfiguring a peripheral device having a
`
`configuration connected by a computer bus to a host computer for the same
`
`reasons provided with respect to claim 1. Id. at 51. Petitioner contends that
`
`the PCMCIA adapter in the host computer of Michelson is the first circuit
`
`required by claim 18 and detects the insertion of the PCMCIA card by
`
`
`
`
`7
`
`
`
`IPR2014-01405
`Patent 6,493,770 B1
`
`recognizing the insertion. Id. (citing Ex. 1003, Fig. 2, step 44, 3:34–37, Ex.
`
`1012 ¶¶ 180-181). Petitioner also asserts that Michelson teaches the
`
`required “second circuit configured to electronically simulate a physical
`
`disconnection and reconnection of the peripheral device to reset said
`
`configuration of said peripheral device” because the FPGA programming
`
`data file that is downloaded through the PCMCIA adapter to the PCMCIA
`
`interface chip is “reset” to enable reprogramming. Id. at 51–52 (citing Ex.
`
`1003, 4:17–22, Ex. 1012 ¶ 183).
`
`Petitioner further argues that if the required second circuit requires a
`
`switch to simulate disconnection and reconnection, such a switch is taught
`
`by PCCextend to simulate card removal and insertion for PCMCIA cards to
`
`be reprogrammed. Id. at 52 (citing Ex. 1003, 3–4, Ex. 1012 ¶ 185).
`
`Alternatively, Petitioner argues that if the claim requires an electronic
`
`switch, Davis discloses a field effect transistor (FET) that electronically
`
`simulates a physical disconnection and reconnection of a peripheral device.
`
`Id. (citing Ex. 1005, 8:31–34, Ex. 1012 ¶ 187). According to Petitioner and
`
`the Knapen Declaration, it would have been obvious for one of ordinary skill
`
`to substitute the FET switch in Davis for the manual switch in PCCextend
`
`for the reasons that Davis teaches the need for avoiding physically
`
`disconnecting and reconnecting, either type of switch would be a design
`
`choice, and it would cause the device to be reconfigured. Id. at 43–44
`
`(citing Ex. 1012 ¶¶ 153–154).
`
`Petitioner further contends that “while supplying electrical power to
`
`said peripheral device” as recited in claim 18 is also taught by Michelson
`
`because a circuit in the peripheral device drives the reset line to reprogram
`
`the device. Id. at 44 (citing Ex. 1003, 4:17–22, 5:45–51, Fig. 3, Ex. 1012 ¶
`
`
`
`
`8
`
`
`
`IPR2014-01405
`Patent 6,493,770 B1
`
`157). Additionally, PCCextend is cited by Petitioner for disclosing that
`
`power is supplied to the PCCextend100 board, which is part of the
`
`peripheral device, through VCC supply pins, and that power optionally may
`
`be removed from the socket when the card is removed. Id. at 45 (citing Ex.
`
`1004, 3, 15–16, Ex. 1012 ¶ 158).
`
`Regarding claims 2, 3, 10, 12, 13, 16, 17, and 20, which depend
`
`directly or indirectly from claims 1, 11, or 18, Petitioner identifies where
`
`these further limitations also are disclosed in Michelson, PCCextend, or
`
`Davis. Id. at 45–53.
`
`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. Prelim.
`
`Resp. 2. 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 would prevail in showing
`
`that claims 1–3, 10–13, 16–18, and 20 would have been obvious over the
`
`combination of Michelson, PCCextend, and Davis.
`
`B.
`
`Claims 5, 7, 15, and 19
`
`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 19, which require that the peripheral device
`
`use a universal serial bus (claims 5, 15, and 19) and that the second set of
`
`configuration information comprises configuration data and executable code
`
`(claim 7).
`
`
`
`
`9
`
`
`
`IPR2014-01405
`Patent 6,493,770 B1
`
`
`Petitioner asserts that the substitution of a USB for a PCMCIA bus
`
`would have involved only routine engineering and that the advantages of a
`
`USB were known. Pet. 54, 55–57. Petitioner relies on the background
`
`section of the ’770 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 ¶¶ 201, 206, 207.
`
`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 7. Pet. 55 (citing Ex. 1012 ¶ 203, Pet. 48–
`
`49). 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. at 48–49. In support of its argument,
`
`Petitioner relies on the Knapen Declaration. Id. (citing Ex. 1012 ¶ 171).
`
`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 ’770 patent does not provide the
`
`prior art admissions that Petitioner alleges.” Id. at 12. Regarding
`
`Petitioner’s challenge to claims 5, 7, 15, and 19, 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
`
`
`
`
`10
`
`
`
`IPR2014-01405
`Patent 6,493,770 B1
`
`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
`
`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 5, 7, 15, and 19 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:
`
`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. 19–37, 57–59. 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
`
`
`
`
`11
`
`
`
`IPR2014-01405
`Patent 6,493,770 B1
`
`Petitioner would prevail in establishing the unpatentability of claims 1–3, 5,
`
`7, 10–13, and 15–20 of the ’770 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, 16–18, and 20 as obvious over Michelson,
`
`PCCextend, and Davis under 35 U.S.C. § 103(a); and
`
`(2) claims 5, 7, 15, and 19 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 ’770 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.
`
`
`
`
`12
`
`
`
`IPR2014-01405
`Patent 6,493,770 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
`
`
`
`
`
`
`13
`
`
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