Trials@uspto.gov
`571-272-7822 
`
` Paper 17
`Entered: February 17, 2016
`
`  
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION,
`HTC AMERICA, INC.,
`LG ELECTRONICS, INC.,
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01501
`Patent 7,777,753 B2
`____________
`
`
`
`Before JAMES B. ARPIN, MATTHEW R. CLEMENTS, and
`SUSAN L. C. MITCHELL, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
` 
`
` 
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`
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`

`
`IPR2015-01501
`Patent 7,777,753 B2 
`
` 
`
`I.
`INTRODUCTION
`HTC Corporation; HTC America, Inc.; LG Electronics, Inc.; Samsung
`Electronics Co., Ltd.; and Samsung Electronics America, Inc. (collectively,
`“Petitioner”) filed a Petition requesting inter partes review of claims 1–4, 7–10,
`and 12 (“the challenged claims”) of Patent No. US 7,777,753 B2 (Ex. 1001, “the
`’753 patent”). Paper 1 (“Pet.”), 1. Parthenon Unified Memory Architecture LLC
`(“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314, we instituted inter partes review with respect to
`claims 1–4 of the ’753 patent, but denied institution of inter partes review with
`respect to claims 7–10 and 12 of the ’753 patent. Paper 12 (“Dec.”), 34.
`Pursuant to 37 C.F.R. § 42.71(d), Petitioner filed a Request for Rehearing
`(Paper 14, “Reh’g Req.”), seeking reconsideration of our Decision on Institution
`with respect to claims 7–10 and 12 of the ’753 patent. For the reasons set forth
`below, Petitioner’s Request for Rehearing is denied.
`II. DISCUSSION
`1. Standard for Reconsideration
`
`37 C.F.R. § 42.71(d) provides that
`
`[a] party dissatisfied with a decision may file a single request for
`rehearing, without prior authorization from the Board. The burden of
`showing a decision should be modified lies with the party challenging
`the decision. The request must specifically identify all matters the
`party believes the Board misapprehended or overlooked, and the
`place where each matter was previously addressed in a motion, an
`opposition, or a reply.
`
`(Emphasis added.) When reconsidering a Decision on Institution, the Board
`reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). A request
`for rehearing, however, is not an opportunity merely to disagree with the panel’s
`
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`IPR2015-01501
`Patent 7,777,753 B2 
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`assessment of the arguments or weighing of the evidence, or to present new
`arguments or evidence.
`2. Overview
`Petitioner is dissatisfied with our denial of institution of inter partes review
`of claims 7–10 and 12 of the ’753 patent, with respect to two asserted grounds of
`unpatentability:
`
`References
`
`Basis Claim(s) challenged
`
`Gulick, MPEG, and Shanley
`
`§ 103
`
`7–101
`
`Gulick, MPEG, Shanley, and Gove
`
`§ 103
`
`12
`
`Reh’g Req. 1. In particular, Petitioner asserts two bases for its Request for
`Rehearing. First, Petitioner argues that we erred in concluding that “multimedia
`memory 160 [does not] teach[] or suggest[] the shared . . . ‘memory’ of claim 7”
`because we “improperly read[] into the claims the requirements that there be only
`one shared memory in the system and that such a memory be accessed regularly.”
`Id. at 2–3 (emphases added) (quoting, without citation, Dec. 18); see id. at 4–7.
`Second, Petitioner argues that
`
`in concluding that the Petition had not shown that “a person of
`ordinary skill in the art would have modified Gulick’s system in view
`of MPEG to provide the recited structures for accessing Gulick’s
`‘main memory’ or to perform the functions recited for video decoding
`or decompression,” the Institution Decision misapprehended that
`claim 7 merely requires a “memory,” not a “main memory,” and
`overlooked detailed evidence and argument as to why and how the
`memory of Gulick would have been modified as claimed.
`
`                                                            
`1 Petitioner also asserted this ground against claims 1–4 of the ’753 patent. Pet. 5–
`6. Petitioner does not request reconsideration of our denial of institution of inter
`partes review of claims 1–4 on this ground. See Dec. 20.
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`Id. at 3 (emphasis added); see id. at 7–14. For the reasons set forth below, we are
`not persuaded by Petitioner’s arguments.
`3. Improper Reading of Limitations of the Specification into Claim 7
`With regard to its first basis, Petitioner challenges our conclusion that
`“[b]ecause multimedia memory 160 exists in addition to main memory 110 and
`because CPU 102 uses multimedia memory 160 only in exceptional circumstances,
`we are not persuaded that multimedia memory 160 teaches or suggests the shared
`‘main memory’ of claim 1 or ‘memory’ of claim 7.” Id. at 2 (quoting Dec. 18). In
`particular, Petitioner argues that we improperly read two additional limitations into
`the language of claim 7: (1) that there is a “single” shared memory; and (2) that
`the sharing of the memory must be “regular or all the time.” Id. at 4 (emphases
`added). However, we did not read either of these limitations into the language of
`claim 7; Petitioner misunderstands our Decision on Institution.
`With regard to the first, allegedly improperly imported limitation, claim 7
`recites that an electronic system comprises “a bus coupleable [sic] to a memory,” a
`decoder “configured to receive data from the memory corresponding to at least one
`previously decoded image and to a current image to be decoded,” “a central
`processing unit coupled to the bus for accessing the memory,” and an arbiter
`“configured to control access to the memory by determining a priority for requests
`to access the memory.” Ex. 1001, col. 16, ll. 16–33 (emphases added). Generally,
`the indefinite article “a” means “‘one or more’ in open-ended claims containing the
`transitional phrase ‘comprising.’” Harari v. Lee, 656 F.3d 1331, 1341 (Fed. Cir.
`2011) (quoting Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342
`(Fed. Cir. 2008)). Consistent with this principle of claim construction, we did not
`construe claim 7 to require a single shared memory. See Dec. 8–11.
`
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`Nevertheless, Petitioner argues that the Decision on Institution describes a
`“single shared memory.” Reh’g Req. 4. In particular, Petitioner notes that we
`state that
`
`[t]he ’753 patent describes decoder/encoder 80 and a first device using
`a single memory. See, e.g., Ex. 1001, Figs. 2–4. Gulick, in contrast,
`describes main memory 110 in addition to multimedia memory 160.
`Ex. 1017, Figs. 1, 4, and 6. The system described in Gulick does not,
`therefore, realize the advantage of sharing a single memory described
`by the ’753 patent. Ex. 1001, col. 5, ll. 13–15, 47–51.
`Reh’g Req. 4 (quoting Dec. 17 (emphasis added)). The reference to “a single
`memory” here refers to the embodiments depicted in Figures 2–4 of Exhibit 1001,
`and was not recited to define the memories recited in claims 1 and 7. Neither party
`sought construction of the terms: “main memory” (claim 1) or “memory” (claim
`7),2 and we did not provide an express construction of either term. Dec. 11; see
`Pet. 8–10. Instead, Petitioner misunderstands our analysis of Gulick, regarding
`whether Gulick taught that these memories are shared, as required by claims 1 and
`7.
`The memory or memories recited in claim 7 must satisfy the requirements of
`
`the claim language, as understood in the context of the entire patent, including the
`Specification. Dec. 8–10. An indispensable attribute of both the “main memory”
`of claim 1 and the “memory” of claim 7 is that these memories are shared. Dec.
`16 (citing Ex. 1001, col. 15, ll. 36–45 (Claim 1), col. 16, ll. 17–35 (Claim 7)).
`Referring to the memories described in the ’753 patent, the Specification of the
`’753 patent states that “[a]n advantage of the present invention is the significant
`cost reduction due to the fact that the video and/or audio decompression and/or
`compression device does not need its own dedicated memory but can share a
`
`                                                            
`2 We could not have overlooked or misapprehended an argument not made or
`evidence not presented. See 37 C.F.R. § 42.71(d)
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`memory with another device and still operate in real time.”  Ex. 1001, col. 5,
`ll. 47–51. Although this disclosure speaks of the video and/or audio
`decompression and/or compression device, e.g., the decoder, operating in real time
`using the shared memory, the Specification makes clear that other devices sharing
`the memory also must be able to operate in real time, “without starving other
`components of the system.” Id. at col. 6, ll. 47–62. In particular, the Specification
`describes that arbiter 82 may apply a priority scheme that ensures decoder/encoder
`80 gets access to memory 50 often enough to operate properly, but does not starve
`entirely other devices sharing the memory. Id. at col. 13, ll. 31–37; but see Ex.
`1017, col. 8, ll. 9–13 (describing a “starvation period”).3 Thus, the decoder and the
`central processing unit, recited in claim 7, share one or more memories, so as to
`permit real time usage without “starvation” of either the decoder or the central
`processing unit. Consequently, access to a shared memory need not necessarily be
`“regular or all the time,” but it cannot be limited, such that a sharing device is
`unable to operate in real time and without being starved for memory. See Dec. 17–
`20.
`
`Contrary to Petitioner’s assertion, we did not construe the term “memory” as
`limited to a “single” memory (Reh’g Req. 4–6) or as requiring that access be
`“regular or all the time” (id. at 6–7). Instead, we determined that Gulick’s
`disclosure that multimedia memory 160 sometimes may be accessed by CPU 102
`under limited circumstances is insufficient to demonstrate that Gulick’s multimedia
`memory 160 teaches or suggest a memory shared by the decoder (i.e., “the decoder
`configured to receive data from the memory” (Ex. 1001, col. 16, ll. 19–20
`(emphasis added))) and by the CPU (i.e., “a central processing unit coupled to the
`bus for accessing the memory” (id. at col. 16, ll. 26–27 (emphasis added))), as
`                                                            
`3 In the Decision on Institution, we incorrectly cited to Ex. 1001, rather than Ex.
`1017, as describing a “starvation period.” Dec. 5.
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`required by claim 7. See Dec. 17 (“We are not persuaded, however, that Gulick’s
`multimedia memory 160 is shared by the processing and video decoding
`components of claims 1 and 7.” (emphasis added)). Therefore, we are not
`persuaded that Petitioner has shown that we misapprehended or overlooked
`argument or supporting evidence, or both, presented in the Petition, such that it
`amounted to an abuse of discretion.
`4. Why and How Gulick’s Memory Would Have Been Modified
`With regard to its second basis, Petitioner argues (1) that we
`misapprehended claims 7–10 and 12 to require a “main memory,” as recited in
`independent claim 1, rather than a “memory,” as recited in independent claim 7;
`and (2) that we overlooked Petitioner’s evidence explaining why one of ordinary
`skill in the art would have had reason to combine Gulick with MPEG to provide
`the recited features of these claims. Reh’g Req. 7. We disagree.
`First, Petitioner argues that
`the Institution Decision appears to have not instituted inter partes
`review, at least in part, on its conclusion that Petitioner did not explain
`why “a person of ordinary skill in the art would equate Gulick’s
`multimedia memory 160 with main memory 110 for purposes of
`implementing MPEG standards on Gulick’s system.”
`Id. at 8 (quoting Dec. 19 (emphasis added)). As noted in the Decision on
`Institution, however, we did not require that Gulick’s multimedia memory 160
`equate to its main memory 110 in order to combine the teachings of MPEG (Ex.
`1004) and Gulick (Ex. 1017). Instead, in the Decision on Institution, we noted that
`[b]ecause multimedia memory 160 exists in addition to main memory
`110 and because CPU 102 uses multimedia memory 160 only in
`exceptional circumstances, we are not persuaded that multimedia
`memory 160 teaches or suggests the shared “main memory” of claim
`1 or “memory” of claim 7.
`Even assuming that multimedia memory 160 is shared, we still
`are not [] persuaded that modifying Gulick’s multimedia engine 112
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`to perform MPEG video decoding would have been obvious. Pet. 14–
`15.
`Dec. 18 (emphases added). Consequently, we denied institution because Petitioner
`failed to demonstrate that Gulick’s multimedia memory 160 is a shared memory.
`To the extent that multimedia memory 160 is not a shared memory, in that sense, it
`is not equivalent to main memory 110. Dec. 16–17. Further, even assuming
`multimedia memory 160 is a shared memory, we were not persuaded that
`Petitioner had shown “that modifying Gulick’s multimedia engine 112 to perform
`MPEG video decoding would have been obvious.” Id. at 18 (citing Pet. 14–15);
`see supra Section II.3.
`
`Similarly, we did not overlook Petitioner’s evidence explaining why one of
`ordinary skill in the art would have had reason to combine Gulick with MPEG to
`provide the recited features of these claims; we simply were not persuaded by
`Petitioner’s arguments or evidence regarding the asserted combination. See id. at
`19–20. In particular, we found Petitioner’s arguments to be conclusory (id.) and
`inadequately supported (id. at 20).
`First, Petitioner argues that
`[a]t the time of the alleged invention of the ’753 patent, the
`MPEG-1 and MPEG-2 standards were “currently in use.” Ex. 1001,
`1:53-58. Indeed, the ’753 patent admits that “[t]he MPEG standards
`[were] currently well accepted standards.” Ex. 1001, 2:6-9. Thus,
`modifying Gulick 983’s multimedia engine 112 to perform MPEG
`video decoding per MPEG Standard would constitute a combination
`of familiar elements according to known methods to yield predictable
`results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007);
`see also Ex. 1030, Stone Decl. ¶¶ 101-02.
`Pet. 15–16 (Section IX.A.1.d.); see also id. at 29 (“Based on information cited
`above for claim elements 1[c] and claim 2, see supra Sections IX.A.1.d, IX.A.2
`. . .”). In order to show that there is a reason to combine the teachings of Gulick
`and the MPEG standard, it is not enough to show that Gulick and the MPEG
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`standard were available at the effective filing date of the ’753 patent. As we
`explained, we found this argument to be conclusory and inadequately supported.
`Dec. 19–20.
`
`Second, Petitioner argues that we overlooked that Gulick teaches the use of
`one or more digital signal processors (“DSPs”) in multimedia engine 112 (Reh’g
`Req. 9–12 (citing Pet. 13, 14, 30); see Ex. 1017, col. 4, ll. 16–18, col. 5, ll. 15–18,
`col. 7, ll. 37–42, Figs. 2, 3, 5) and that “it was well known in the art at the time of
`the alleged invention to employ a DSP for MPEG video processing” (Reh’g Req.
`12 (citing Pet. 16); see Ex. 1017, col. 5, ll. 15–21; Ex. 1007, col. 1, ll. 62–67, Fig.
`5). Essentially, Petitioner argues that because embodiments of Gulick employ
`DSPs (Reh’g Req. 11; Dec. 14–15 (reproducing Ex. 1017, Fig. 2)) and because the
`MPEG standard may be implemented on dedicated DSPs (Reh’g Req. 13 (quoting
`Ex. 1007, col. 6, ll. 56–57)), the common use of DSPs would have been a reason to
`combine the teachings of these references.4 We did not overlook this argument;
`instead, we found the argument and supporting evidence insufficient to
`demonstrate a reason to combine the teachings of Gulick and the MPEG standard
`to achieve the subject matter recited in claim 7. Dec. 20. As noted above, a
`request for rehearing is not an opportunity merely to disagree with our assessment
`of the arguments or weighing of the evidence. See supra Section II.1.
`
`In its Request for Rehearing, Petitioner does not argue that either Shanley or
`Gove supplies any limitations that we found missing from the combined teachings
`of Gulick and the MPEG standard. See Pet. 19–20, 31 (Shanley), 37 (Gove).
`Consequently, the deficiencies in Petitioner’s Request for Rehearing with respect
`
`                                                            
`4 Petitioner reproduces certain evidence allegedly supporting the combination of
`Gulick and the MPEG standard, which was cited to, but not argued fully, in the
`Petition. Reh’g Req. 12–14; see supra Section II.3. n.1
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`to independent claim 7 of the ’753 patent apply equally to claims 8–10 and 12,
`which depend therefrom.
`Therefore, we are not persuaded that Petitioner has shown that we
`misapprehended or overlooked argument or supporting evidence, or both,
`presented in the Petition with respect to claims 7–10 and 12, such that it amounted
`to an abuse of discretion.
`
`III. ORDER
`
`For the reasons given, it is
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`For PETITIONER:
`
`Allan M. Soobert
`Naveen Modi
`PAUL HASTINGS LLP
`Samsung-PUMA-IPR@paulhastings.com
`
`Rajeev Gupta
`Darren M. Jiron
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`LGE_Finnegan_PUMAIPR@finnegan.com
`
`Joseph A. Micallef
`Stephen M. Everett
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`stephen.everett@sidley.com
`
`For PATENT OWNER:
`
`Masood Anjom
`Alisa Lipski
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`manjom@azalaw.com
`alipski@azalaw.com
`
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