IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753 
`
`
`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.
`PETITIONERS
`
`V.
`
`Parthenon Unified Memory Architecture LLC
`PATENT OWNER
`___________
`Case IPR No: 2015-01501
`Patent No. 7,777,753
`Title: ELECTRONIC SYSTEM AND METHOD FOR SELECTIVELY ALLOWING ACCESS TO
`A SHARED MEMORY
`____________
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. §42.107
`
`
`
`
`
`

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`IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753
`
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ..................................................................................................... 1
`I.
`II. THE `753 PATENT .............................................................................................. 3
`III. THE PROPOSED GROUNDS ARE REDUNDANT ..................................................... 4
`IV. PETITIONER DOES NOT ESTABLISH A REASONABLE LIKELIHOOD THAT ANY
`CHALLENGED CLAIM IS INVALID ................................................................................. 9
`1. The MPEG Standard Was Considered During the Prosecution of the `753
`Patent ....................................................................................................................... 9
`2. Proposed Combinations Fail to Disclose All Claim Limitations ................... 10
`A. Gulick, the MPEG Standard, and Shanley (claims 1-4 and 7-10) ................. 10
`a. The proposed combination does not disclose the video circuit and the
`processor sharing the main memory (claim 1) ................................................... 10
`b. The proposed combination does not disclose storing the current video
`image to be displayed in the main memory (claim 1) or memory (claim 7) ..... 11
`c. The proposed combination does not disclose the processor retrieving non-
`image data from the main memory (claim 1) .................................................... 16
`d. The proposed combination does not disclose the decoder receiving data
`from the main memory (claim 2)/memory (claim 7) corresponding to a
`previously decoded video image (claim 2)/ image (claim 7) ............................ 17
`B. Gulick, MPEG Standard, Shanley and Gove (claim 12) ................................ 20
`C. Bowes and the MPEG Standard (claims 1 and 2) .......................................... 20
`a. The proposed combination does not disclose the decoder receiving an
`image to be decoded and a previously decoded image from the memory ........ 21
`b. The proposed combination does not disclose an arbiter that controls access
`to the main memory ........................................................................................... 26
`c. The proposed combination does not disclose an arbiter that receives
`requests to access the memory from the processor ........................................... 28
`d. No motivation to combine Bowes and the MPEG Standard ....................... 31
`
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`IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753
`D. Bowes, the MPEG Standard and Stearns (claim 3) ........................................ 37
`E. Bowes, the MPEG Standard and Shanley (claim 4) ....................................... 38
`F. Bowes, the MPEG Standard and Whai (claims 7-8) ...................................... 38
`G. Bowes, the MPEG Standard, Whai and Shanley (claims 9 and 10) ........... 40
`H. Bowes, the MPEG Standard, Whai and Gove (claim 12) ........................... 40
`V. CONCLUSION ....................................................................................................... 41
`
`
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`iii
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`IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Abbott Labs. v. Sandoz, Inc.,
`544 F.3d 1341 (Fed. Cir. 2009) ............................................................................ 15
`
`
`Amkor Tech., Inc. v. Tessera, Inc.,
`No. IPR2013-00242, 2013 WL 5653117 (P.T.A.B. Oct. 11, 2013) ....................... 7
`
`
`Berk-Tek LLC v. Belden Tech. Inc.,
`No. IPR2013-00057, 2013 WL 5947699 (P.T.A.B. May 14, 2013) ...................... 7
`
`
`C.R Bard, Inc. v. M3 Sys., Inc.,
`157 F.3d 1350 (Fed. Cir. 1998) ............................................................................ 30
`
`
`CONOPCP, Inc. v. The Procter & Gamble Co.,
`No. IPR2013-00505, 2014 WL 1253037 (P.T.A.B. Feb. 12, 2014)....................... 7
`
`
`Epistar, et al. v. Trustees Of Boston University,
`No. IPR2013-00298, Decision Not To Institute, Paper No. 18 (P.T.A.B.
`November 15, 2103) ............................................................................................. 34
`
`
`Illumina, Inc. v. Trustees of Columbia Univ.,
`No. IPR2012-00006, Paper 43 (P.T.A.B. May 10, 2013) ..................................4, 5
`
`
`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988) .................................................................... passim
`
`
`In re ICON Health & Fitness, Inc.
`496 F.3d 1374 (Fed. Cir. 2007) ..................................................................... 16, 34
`
`
`In re Wilson,
`424 F.2d 1382 (CCPA 1970) ................................................................................ 20
`
`
`Kinetic Tech., Inc. v. Skyworks Solutions, Inc.,
`IPR2014-00530, 2014 WL 4925282 (Patent Tr. & App. Bd. Sep. 29, 2014) ...... 31
`
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................. 30
`
` 
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`IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753
`
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`No. CBM-2012-00003, Paper No. 8 (P.T.A.B. Oct. 25, 2012) .............................. 4
`
`
`Oracle Corp. v. Clouding IP, LLC,
`No. IPR 2013-00088, 2013 WL 5970180 (P.T.A.B. Jun 13, 2013) ...................6, 7
`
`
`OSRAM Sylvania, Inc. v. Am Induction Techs., Inc.,
`701 F.3d 698 (Fed. Cir. 2012) .............................................................................. 35
`
`
`Teleflex, Inc. v. Ficos N. America Corp.,
`299 F.3d 1313 (Fed. Cir. 2002) ............................................................................ 31
`
`
`Trintec Indus., Inc. v. Top- U.S.A. Corp.,
`295 F.3d 1292 (Fed. Cir. 2002) ............................................................................ 17
`
`
`United States v. Adams,
`383 U.S. 39 (1966) ......................................................................................... 13, 34
`
`
`RULES
`35 U.S.C. § 314(a) ..................................................................................................... 1
`
`37 C.F.R § 42.1(b) ..................................................................................................... 5
`
`
`
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`IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753
`
`
`
`TABLE OF EXHIBITS
`
`Exhibit Description
`
`DSP3210 Information Manual
`
`
`Exhibit
`No.
`
`2001
`
` 
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`vi
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`I.
`
`INTRODUCTION
`
`IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753
`
`The patent owner Parthenon Unified Memory Architecture LLC (“Patent
`
`Owner”) respectfully requests that the Board deny the Petition for Inter Partes
`
`review (“Petition”) filed by HTC Corp., HTC America, Inc., LG Electronics,
`
`Inc., Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.
`
`(collectively, “Petitioner”) regarding certain claims of U.S. Patent No.
`
`7,777,753 (“`753 Patent”) because the Petition fails to demonstrate a reasonable
`
`likelihood that the Petitioner would prevail as to at least one of the challenged
`
`claims, as required under 35 U.S.C. § 314(a).
`
`The Petition proposes eight grounds challenging claims 1-4, 7-10, and 12
`
`(“challenged claims”) of the `753 Patent. Specifically, the Petitioner contends
`
`that the challenged claims are invalid as obvious in view of Gulick and the
`
`MPEG Standard, further in view of Shanley (Ground A) and Gove (Ground B).
`
`The Petitioner further contends that certain challenged claims are obvious in
`
`view of Bowes and the MPEG Standard (Ground C), further in view of Stearns
`
`(Ground D), Shanley (Ground E) or Whai (Ground F). Finally, the Petitioner
`
`contends that certain challenged claims are invalid in view of Bowes, the MPEG
`
`Standard and Whai, further in view of Shanley (Ground G) or Gove (Ground
`
`H).
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`1
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`IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753
`
`Grounds A-B fail at least because the proposed combination does not
`
`disclose all limitations of independent claims 1 and 7. By extension, the
`
`challenged dependent claims are also not obvious in view of the proposed
`
`combinations based on Gulick and the MPEG Standard for at least the same
`
`reasons. Therefore, there is no reasonable likelihood that the Petitioner would
`
`prevail with respect to any of the claims challenged in Grounds A-B.
`
`Similarly, Grounds C-H fail at least because the combination of Bowes
`
`and the MPEG Standard does not disclose all limitations of independent claim 1
`
`and the combination of Bowes, the MPEG Standard and Whai does not disclose
`
`all limitations of independent claim 7. Moreover, one of ordinary skill in the art
`
`would not have been motivated to combine Bowes with the MPEG Standard as
`
`the Petitioner proposes because the combination would be inoperable. At least
`
`for these reasons, the proposed combinations based on Bowes and the MPEG
`
`Standard fail to disclose all limitations of independent claims 1 and 7 and do not
`
`render those claims obvious. By extension, the challenged dependent claims are
`
`also not obvious for at least the same reasons. Therefore, there is no reasonable
`
`likelihood that the Petitioner would prevail with respect to any of the claims
`
`challenged in Grounds C-H.
`
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`IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753
`The weakness of the proposed grounds is further underscored by the fact
`
`that the MPEG Standard was before the Examiner during the original
`
`prosecution of the `753 Patent.
`
`The Petition should be denied because there is no reasonable likelihood
`
`that the Petitioner would prevail as to any of the challenged claims.
`
`II. THE `753 PATENT
`
`The `753 Patent is generally directed to sharing a memory interface
`
`between a video decoder and another device contained in an electronic system.
`
``753 Pat. [Ex. 1001], Abstract; independent claims 1 and 7. Accordingly, the
`
`electronic system includes a bus and a main memory coupled to the bus. Id. at
`
`claim 1. The main memory has stored therein data corresponding to video
`
`images to be decoded. Id. A video circuit is coupled to the bus and receives data
`
`from the main memory corresponding to a video image to be decoded. Id. The
`
`video circuit outputs decoded video data corresponding to the current video
`
`image to be displayed on a display device. Id. The current video image to be
`
`displayed is stored in the main memory. Id. In addition to the video circuit, the
`
`electronic system includes another device such as, for example, a processor that
`
`is coupled to the main memory. Id. An arbiter circuit is coupled to the processor
`
`and the video circuit and is configured to receive requests for access to the main
`
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`IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753
`memory from the video circuit and the processor and control access to the main
`
`memory. Id.
`
`III. THE PROPOSED GROUNDS ARE REDUNDANT
`
`The Petitioner proposed two sets of grounds of rejection: Grounds A-B
`
`using Gulick as the primary reference for obviousness, and Grounds C-H using
`
`Bowes as the primary reference for obviousness. Pet. at 12-57. The Petitioner’s
`
`proposed grounds have horizontal redundancy, which has been prohibited by the
`
`Board. Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., No. CBM-
`
`2012-00003, Paper No. 8 (P.T.A.B. Oct. 25, 2012). Horizontal redundancy
`
`“involves a plurality of prior art references applied not in combination to
`
`complement each other but as distinct and separate alternatives.” Id. at 3. The
`
`Petition has horizontal redundancy because it includes grounds proposing the
`
`rejection of claims 1-4, 7-10 and 12 as i) rendered obvious using Gulick as the
`
`primary reference; and ii) rendered obvious using Bowes as the primary
`
`reference. Pet. at 12-57.
`
`The Board has made clear that in order to ensure “the just, speedy, and
`
`inexpensive resolution of every proceeding,” it will not institute inter partes
`
`review proceedings on cumulative grounds. Illumina, Inc. v. Trustees of
`
`Columbia Univ., No. IPR2012-00006, Paper 43 (P.T.A.B. May 10, 2013) (citing
`
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`IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753
`37 C.F.R § 42.1(b)). Indeed, the Board has instructed parties that it will not
`
`“authorize inter partes review on certain unpatentability challenges . . . [where]
`
`the challenges appear to rely on the same prior art facts as other challenges for
`
`which inter partes review had been authorized.” Id. “In other words,
`
`considering multiple rejections for the same unpatentability issue would
`
`unnecessarily consume the time and resources of all parties involved.” Id.
`
`To avoid dismissal of a proposed ground of unpatentability, a petitioner
`
`must “provide a meaningful distinction between the different, redundant
`
`rejections.” Id. Where multiple references have been cited for the same facts, it
`
`is not enough for a petitioner to argue that the cited references are not identical,
`
`or to “speculate[] that in certain publications an element may be more clearly set
`
`forth in one publication rather than another.” Id. Rather, a petitioner must
`
`provide an adequate explanation as to the differences between the references
`
`and “how this difference would impact the unpatentability challenge.” Id.
`
`Petitioner acknowledges that Grounds A-B and Grounds C-H both
`
`challenge the same claims. Pet. at 7. However, the petitioner contends that the
`
`proposed grounds are not redundant because: (1) Grounds C-H use secondary
`
`references that are not used in Grounds A-B; and (2) the primary reference
`
`relied upon in Grounds A-B and the primary reference relied upon in Grounds
`
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`IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753
`C-H address the claimed “arbiter” and “processor coupled to the main memory”
`
`in different ways. Pet. at 7.
`
`Using secondary references in Grounds C-H that are merely different than
`
`the secondary references used in Grounds A-B is insufficient to show that the
`
`proposed grounds are not redundant. See, e.g., Oracle Corp. v. Clouding IP,
`
`LLC, No. IPR 2013-00088, 2013 WL 5970180, *1 (P.T.A.B. Jun 13, 2013)
`
`(“The proper focus of a redundancy designation is not on whether the applied
`
`prior art disclosures have differences, for it is rarely the case that the disclosures
`
`of different prior art references will be literally identical. Instead, … the focus is
`
`on whether Petitioner articulated a meaningful distinction in terms of relative
`
`strengths and weaknesses with respect to application of the reference disclosures
`
`to one or more claim limitations.”) (internal citations omitted).
`
`Moreover, Petitioner’s conclusory statement that Gulick and Bowes
`
`address the “arbiter” and “processor coupled to the main memory” limitation in
`
`“different ways” is insufficient to establish lack of redundancy. See Pet. at 7.
`
`The Board has recognized that “absent some explanation as to why differences
`
`between a set of prior art references are relevant (e.g., why reference A is a
`
`stronger reference with respect to claim element X than reference B), the fact
`
`that references disclosed slightly different things does not demonstrate that
`
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`IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753
`asserted grounds are not cumulative to each other.” Amkor Tech., Inc. v.
`
`Tessera, Inc., No. IPR2013-00242, 2013 WL 5653117, *17 (P.T.A.B. Oct. 11,
`
`2013). Because the Petition makes “no meaningful distinction” between
`
`Grounds A-B and Grounds C-H, the Patent Owner respectfully submits that the
`
`proposed grounds are cumulative and redundant. See Berk-Tek LLC v. Belden
`
`Tech. Inc., No. IPR2013-00057, 2013 WL 5947699, *3 (P.T.A.B. May 14,
`
`2013) (“If petitioner makes no meaningful distinction between certain grounds,
`
`the Board may exercise discretion by acting on one or more grounds and regard
`
`the others as redundant”); Oracle Corp. v. Clouding IP, LLC, No. IPR2013-
`
`00088, 2013 WL 5970180, *3 (P.T.A.B. Jun. 13, 2013) (“[I]n the absence of the
`
`Petitioner identifying meaningful distinctions in terms of relative strengths and
`
`weaknesses of the different prior art references, it is within the discretion of the
`
`Board to conclude that even with different facts in different grounds,
`
`multiple grounds may
`
`nevertheless
`
`be redundant”)
`
`(emphasis
`
`added);
`
`CONOPCP, Inc. v. The Procter & Gamble Co., No. IPR2013-00505, 2014 WL
`
`1253037, *10 (P.T.A.B. Feb. 12, 2014) (finding the grounds redundant where
`
`petitioner did not identify “strengths or weaknesses in the prior art disclosures
`
`as they relate to the limitations of those claims”) (emphasis added).
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`IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753
`The Petitioner failed to explain how Bowes differs from Gulick or how
`
`any consideration of the grounds that use Bowes as the primary reference for
`
`claims 1-4, 7-10, and 12 would impact these proceedings differently than a
`
`consideration of the grounds that use Gulick as a primary reference. See, e.g., id.
`
`The Petitioner also failed to explain why the primary reliance on Bowes for
`
`these claims may be the stronger assertion as applied in certain instances and
`
`why the primary reliance on Gulick may be the stronger assertion in other
`
`instances. See Pet. at 12-57.
`
`That is, nothing in the Petitioner’s analysis of the claims suggests that the
`
`grounds using Bowes and the secondary references would (or even could) be
`
`more determinative of an outcome of these proceedings than the grounds using
`
`Gulick and the secondary references. Id. Instead, all the Petitioner has done is to
`
`propose redundant grounds of rejections, and request institution of a patent trial
`
`on all proposed rejections. Id. As indicated above, the Board has consistently
`
`held that such a request will not suffice to preclude dismissal of proposed
`
`challenges on grounds of redundancy.
`
`Accordingly, the Petitioner’s proposed grounds of unpatentability using
`
`Bowes with secondary references (i.e., Grounds C-H) are redundant over the
`
`proposed ground of unpatentability using Gulick with secondary references (i.e.,
`
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`IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753
`Grounds A-B). For this reason alone, the Board should deny Grounds C-H as
`
`redundant.
`
`IV. PETITIONER DOES NOT ESTABLISH A REASONABLE LIKELIHOOD THAT
`ANY CHALLENGED CLAIM IS INVALID
`
`The Petition does not establish a reasonable likelihood that any
`
`challenged claim is invalid because (1) the proposed combinations rely upon
`
`disclosure or teaching that was already before the Office during prosecution of
`
`the `753 Patent; (2) the proposed combinations based on Gulick and the MPEG
`
`Standard fail to disclose all claim limitations; (3) the proposed combinations
`
`based on Bowes and the MPEG Standard fail to disclose all claim limitations;
`
`and (4) one of ordinary skill in the art would not have been motivated to
`
`combine the references as the Petition proposes.
`
`1. The MPEG Standard Was Considered During the Prosecution of the
``753 Patent
`
`The Examiner was well aware of the MPEG Standard during prosecution
`
`of the `753 Patent. More than 30 references considered by the Examiner during
`
`prosecution of the `753 Patent were directed to the MPEG Standard. `753 Pat.
`
`[Ex. 1001], pp. 1-4. In fact, the MPEG Standard was incorporated by reference
`
`into the specification of the `753 Patent. Id. at 14:66-15:3.
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`IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753
`2. Proposed Combinations Fail to Disclose All Claim Limitations
`
`
`
`A. Gulick, the MPEG Standard, and Shanley (claims 1-4 and 7-10)
`
`a. The proposed combination does not disclose the video circuit
`and the processor sharing the main memory (claim 1)
`
`Independent claim 1 recites a video circuit “configured to receive data
`
`from the main memory.” The Petition identifies the multimedia memory (160)
`
`of Gulick as the recited “main memory.” Pet. at 12. However, the multimedia
`
`memory (160) is not the recited “main memory.”
`
`As discussed in the `753 Patent one of the drawbacks of prior art systems
`
`was the added cost resulting from the need to have a dedicated memory for the
`
`decoder. `753 Pat. [Ex. 1001], 2:43-51 (“The memory interface 18 is coupled to
`
`a memory 22. … Memory 22 is dedicated to the MPEG decoder 10 and
`
`increases the price of adding a decoder 10 to the electronic system. In current
`
`technology, the cost of this additional dedicated memory 22 can be a significant
`
`percentage of the cost of the decoder.”). The `753 Patent proposes a solution
`
`where “[t]he decoder memory is part of the main memory of the computer.” Id.
`
`at 5:25-26. Accordingly, independent claim 1 recites a “main memory” that is
`
`accessed by the video circuit and the processor.
`
`In contrast, as shown in Figure 1 (reproduced below) Gulick includes a
`
`multimedia memory (160) (indicated in blue) in addition to the main memory
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`IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753
`(110) (indicated in red). Therefore, the Gulick system suffers from the same
`
`drawbacks as the prior art systems identified in the `753 Patent.
`
`Accordingly, the multimedia memory (160) of Gulick cannot be the
`
`recited main memory which is evident from Gulick’s identification of the
`
`multimedia memory (160) as a component separate from the main memory
`
`
`
`(110).
`
`b. The proposed combination does not disclose storing the
`current video image to be displayed in the main memory (claim
`1) or memory (claim 7)
`
`Independent claim 1 recites “a video circuit … configured to … output
`
`decoded video data corresponding to the current video image to be displayed …
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`IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753
`the current video image to be displayed adapted to be stored in the main
`
`memory.” Similarly, independent claim 7 recites “outputting decoded data
`
`corresponding to a current image to be displayed, the current image being
`
`output for storing in the memory.” Accordingly, both independent claims
`
`require that the decoded image that is to be displayed be stored in the memory
`
`that is shared by the video circuit/decoder and the processor/central processing
`
`unit. Gulick, the MPEG Standard and Shanley, alone or in combination, fail to
`
`disclose this limitation.
`
`The Petition identifies the multimedia memory (160) of Gulick as the
`
`recited “main memory” of independent claim 1 and the recited “memory” of
`
`independent claim 7. Pet. at 12, 28. First, as discussed in Section IV.2.A.a,
`
`supra, the multimedia memory (160) is not the “main memory” recited in
`
`independent claim 1. Moreover, even if the multimedia memory (160) is
`
`deemed to be analogous to the “main memory” recited in independent claim 1
`
`(which it is not) or the “memory” recited in independent claim 7, this limitation
`
`is not met.
`
`The Petitioner concedes that Gulick does not disclose this limitation. Pet.
`
`at 14, 29. The Petitioner then makes a conclusory statement that the
`
`combination of Gulick and the MPEG Standard discloses this limitation:
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`IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753
`In MPEG video decoding, MPEG Standard teaches, some currently
`
`decoded video images are stored for decoding subsequent video
`
`images. Thus, when implementing the MPEG video decoding, one
`
`of ordinary skill in the art would have understood that Gulick’s
`
`multimedia engine 112 would be configured to … output video data
`
`corresponding to the current video image to be displayed on video
`
`monitor 114 via video port 172, the current image to be displayed
`
`adapted to be stored in multimedia memory 160.
`
`Pet. at 15 (internal citations omitted). The conclusion drawn by the Petitioner is
`
`incorrect for at least two reasons.
`
`First, nothing in Gulick would motivate one of ordinary skill in the art to
`
`store decoded images (i.e., images to be displayed) in the multimedia memory
`
`(160). In fact, Gulick teaches away from such an implementation. See, e.g.,
`
`United States v. Adams, 383 U.S. 39, 52 (1966) (upholding nonobviousness
`
`where references teaching away from the claimed combination would “deter any
`
`investigation into such a combination”); DePuy Spine, Inc. v. Medtronic
`
`Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (“an inference of
`
`nonobviousness is especially strong where the prior art’s teachings undermine
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`IPR2015-01501
`Patent Owner Preliminary Response
`U.S. Patent No. 7,777,753
`the very reason being proffered as to why a person of ordinary skill would have
`
`combined the known elements”).
`
`Specifically, Gulick discloses a system where the images processed by the
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`multimedia engine (112) are either directly output to a monitor or transferred
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`from the multimedia engine (112) out through the video port (172) to a logic
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`circuit for processing and display. Gulick [Ex. 1017], 2:58-61 (“The multimedia
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`engine includes video ports for coupling to a video monitor, audio ports for
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`coupling to an audio DAC or speakers, and one or more communication ports”);
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`5:50-61 (“In the preferred embodiment, the multimedia engine 112 includes
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`video processing circuitry and/or firmware, including a random access memory
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`digital to analog converter (RAMDAC), for converting video data into
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`appropriate analog signals, preferably red, green and blue (RGB) signals, for
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`output directly to video monitor 114. In an alternate embodiment, the DSP
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`engine 210 provides digital video pixel data through I/O channel 220A to the
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`video port 172, and a separate RAMDAC and associated logic circuitry (not
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`shown) receives the video pixel data from the video port 172 and generates the
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`appropriate RGB signals to drive the display monitor 114.”); 6:49-53 (“In the
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`preferred embodiment, the high level instructions provided from the CPU 102
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`also include the actual graphical and/or audio commands used by the DSP
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`engine 210 to process the video or audio data and to produce the appropriate
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`signals at the video and audio ports 172 and 174.”) (emphasis added).
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`Therefore, nothing in Gulick suggests storing a decoded image in the
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`multimedia memory (160).
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`Moreover, like Gulick, the MPEG Standard does not disclose storing a
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`decoded video image in a “main memory” (independent claim 1)/“memory”
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`(independent claim 7) that is shared by a video circuit/decoder and a
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`processor/central processing unit. Similarly, the Petition has not identified a
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`teaching of this limitation in Shanley. Accordingly, the Petition cannot identify
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`any portion of Gulick, the MPEG Standard or Shanley that discloses this
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`limitation. Therefore, the proposed combination does not render this limitation
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`obvious. See, e.g., Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir.
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`2009) (confirming “the requirement that each and every claim limitation be
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`found present in the combination of the prior art references before the
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`[obviousness] analysis proceeds”).
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`Further, storing the decoded images in the multimedia memory (160) as
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`proposed by the Petition is contrary to Gulick’s stated goal of directly sending
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`the processed images to an output monitor or the output video port (172). Gulick
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`[Ex. 1017], 2:58-61. Therefore, one of ordinary skill in the art would not have
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`been motivated to modify Gulick as proposed by the Petitioner because Gulick
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`teaches away from the proposed combination which would render it inoperative.
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`See, e.g., DePuy Spine, 567 F.3d at 1326 (noting that a combination is not
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`obvious “if the prior art indicated that the invention would not have worked for
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`its intended purpose or otherwise taught away from the invention”); In re ICON
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`Health & Fitness, Inc. 496 F.3d 1374, 1382 (Fed. Cir. 2007) (“[A] reference
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`teaches away from a combination when using it in that combination would
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`produce an inoperative result”).
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`c. The proposed combination does not disclose the processor
`retrieving non-image data from the main memory (claim 1)
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`Independent claim 1 recites a processor which “retriev[es] non-image data
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`from the main memory.” The Petition identifies the CPU (102) as the recited
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`processor and the multimedia memory (160) of Gulick as the recited main
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`memory. Pet. at 17 (“Thus, Gulick 983 discloses . . . CPU 102 for storing non-
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`image data in multimedia memory 160 and retrieving non-image data from
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`multimedia memory 160”) (emphasis added).
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`Contrary to the petitioner’s assertion, the multimedia memory (160) is not
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`the main memory required by independent claim 1. Pet. at 12. Accordingly,
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`Petitioner does not point to any disclosure in Gulick that discloses (and Gulick
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`does not disclose) the CPU (102) retrieving non-image data from the
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`multimedia memory (160).1 Similarly, the Petition has not identified a teaching
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`of this limitation in the MPEG Standard and/or Shanley.
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`d. The proposed combination does not disclose the decoder
`receiving data from the main memory (claim 2)/memory (claim
`7) corresponding to a previously decoded video image (claim
`2)/ image (claim 7)
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`Dependent claim 2 and independent claim 7 recite that the decoder is
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`configured to “receive data from the [main] memory corresponding to at least
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`one previously decoded [video] image.” The Petition contends that because the
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`MPEG Standard discloses using at least one previously decoded video image,
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`                                                            
`1 The portions of Gulick relied upon by the Petition disclose the CPU (102)
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`executing “applications software and driver software from the main memory
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`110.” Pet. at 16-17 (citing Gulick, 6:13-19). However, the main memory (110)
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`of Gulick is not a shared memory as required by the challenged claims and it is
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`not identified by the Petitioner as the recited “main memory.” Pet. at 12.
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`Instead, the Petition identifies the multimedia memory (160) of Gulick as
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`corresponding to the recited “main memory.” Id. 
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`storing this previously decoded image “could be”2 done by any memory in
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`Gulick, including the multimedia memory 160. (Pet. at 23-24).
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`First, claim 2 depends on independent claim 1. As discussed above,
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`independent claim 1 is not obvious over the proposed combination. Therefore,
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`dependent claim 2 is non-obvious at least for the same reasons. In re Fine, 837
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`F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent claims are nonobvious under §
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`103 if the independent claims from which they depend are nonobvious”).
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`Moreover, claim 2 requires use of main memory and, as discussed in
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`section IV.2.A.a., supra, the multimedia memory (160) is not the main memory
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`recited in independent claim 1 (and dependent claim 2).
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`                                                            
`2 To the extent the Petition intends to imply that this limitation is somehow
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`inherent (a contention not expressly made in the Petition), such an implication is
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`improper. Inherency requires “that missing descriptive material [be] necessarily
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`present, not merely probably or possibly present, in the prior art.” Trintec Indus.,
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`Inc. v. Top- U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (internal citation
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`omitted) (emphasis added). That the previously decoded image “could be” stored
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`in “any memory” underscores that such an implementations was “merely” probable
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`or possible and the limitation is not necessarily pre