Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 7
`
`Entered: March 30, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01944
`Patent 5,812,789
`____________
`
`
`
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`DECISION
` Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`571-272-7822
`
`
` Paper No. 7
`
`Entered: March 30, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01944
`Patent 5,812,789
`____________
`
`
`
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`DECISION
` Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`IPR2015-01944
`Patent 5,812,789
`
`
`I. INTRODUCTION
`
`Petitioner, Samsung Electronics Company, Limited and Samsung
`Electronics America, Incorporated (collectively “Samsung”), filed a Petition
`requesting an inter partes review of claims 1, 3–6, 11, and 13 of U.S. Patent
`No. 5,812,789 (Ex. 1001, “the ’789 patent”). Paper 2 (“Pet.”). Patent
`Owner, Parthenon Unified Memory Architecture Limited Liability
`Corporation (“Parthenon”), filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the Petition shows “there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” Taking into account the arguments
`presented in Parthenon’s Preliminary Response, we conclude that the
`information presented in the Petition establishes that there is a reasonable
`likelihood that Samsung would prevail in challenging claims 1, 3, 5, 11, and
`13 of the ’789 patent as unpatentable under 35 U.S.C. § 102(e), and claims 4
`and 6 of the ’789 patent as unpatentable under 35 U.S.C. § 103(a). Pursuant
`to § 314, we hereby institute an inter partes review as to these claims of the
`’789 patent.
`
`A. Related Matters
`
`The ’789 patent is involved in the following district court cases: (1)
`
`Parthenon Unified Memory Architecture LLC v. Huawei Techs. Co., No.
`2:14-cv-00687-JRG-RSP (E.D. Tex.); (2) Parthenon Unified Memory
`Architecture LLC v. Motorola Mobility, Inc., No. 2:14-cv-00689-JRG-RSP
`(E.D. Tex.); (3) Parthenon Unified Memory Architecture LLC v. HTC Corp.,
`
`2
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`No. 2:14-cv-00690-RSP (E.D. Tex.); (4) Parthenon Unified Memory
`Architecture LLC v. LG Elecs., Inc., No. 2:14-cv-00691-JRG-RSP (E.D.
`Tex.); (5) Parthenon Unified Memory Architecture LLC v. Samsung Elecs.
`Co., No. 2:14-cv-00902-JRG-RSP (E.D. Tex.); (6) Parthenon Unified
`Memory Architecture LLC v. Qualcomm Inc., No. 2:14-cv-00930-JRG-RSP
`(E.D. Tex.); (7) Parthenon Unified Memory Architecture LLC v. ZTE Corp.,
`No. 2:15-cv-00225-JRG-RSP (E.D. Tex.); (8) Parthenon Unified Memory
`Architecture LLC v. Apple, Inc., No. 2:15-cv-00621-JRG-RSP (E.D. Tex.);
`and (9) STMicroelectronics, Inc. v. Motorola Inc., No. 4:03-cv-00276-LED
`(E.D. Tex.). Pet. 1–2; Paper 5, 2.
`In addition to this Petition, Samsung filed other petitions challenging
`the patentability of a certain subset of claims in the following patents owned
`by Parthenon: (1) U.S. Patent No 7,321,368 B2 (Case IPR2015-01500); (2)
`U.S. Patent No. 7,777,753 B2 (Case IPR2015-01501); (3) U.S. Patent No.
`7,542,045 B2 (Case IPR2015-01502); (4) U.S. Patent No. 8,054,315 B2
`(Case IPR2015-01494); (5) U.S. Patent No. 8,681,164 B2 (Case IPR2015-
`01503); and (6) U.S. Patent No. 5,960,464 (Case IPR2015-01946). Pet. 2.
`
`B. The ’789 Patent
`
`The ’789 patent, titled “Video and/or Audio Decompression and/or
`Compression Device That Shares a Memory Interface,” issued September
`22, 1998, from U.S. Patent Application No. 08/702,911, filed on August 26,
`1996. Ex. 1001, at [54], [45], [21], [86]. Because the application that led to
`the ’789 patent was filed August 26, 1996, the ’789 patent is set to expire on
`August 26, 2016.
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`3
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`
`The ’789 patent generally relates to an electronic system having a
`video or audio decompression/compression device and, in particular, to
`sharing a memory interface between such a device and another device in the
`electronic system. Ex. 1001, 1:18–23. In the Background section, the ’789
`patent discloses advantages associated with using encoders and decoders to
`compress and decompress video and audio sequences, respectively. See id.
`at 1:32–2:3. The ’789 patent then proceeds to disclose the architecture of a
`conventional encoder/decoder prior to asserting that there are a number of
`problems associated with such an architecture. See id. at 2:4–25, Figs. 1a,
`1b. According to the ’789 patent, one of the problems includes dedicating
`memory to the both the encoder and decoder, thereby increasing the cost of
`adding these components to an electronic system. Id. at 2:29–37.
`The ’789 patent purportedly solves this problem because the disclosed
`video or audio decompression/compression device does not need its own
`dedicated memory, but instead may share memory with another device and
`still operate in real time. Ex. 1001, 4:30–34. Figure 2 of the ’789 patent,
`reproduced below, illustrates a diagram of an electronic system containing a
`device having a memory interface, as well as an encoder and decoder. Id. at
`5:1–3.
`
`4
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`Patent 5,812,789
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`As shown in Figure 2, electronic system 40 includes first device 42,
`
`decoder 44, encoder 46, memory interface 48, and memory 50. Ex. 1001,
`5:23–26. Each of first device 42, decoder 44, and encoder 46 access
`memory 50 through memory interface 48. Id. at 5:15–19. Memory interface
`48 further includes arbiter 54 that is configured to arbitrate between first
`device 42, decoder 44, and encoder 46, when these components request
`access to memory 50. Id. at 6:15–18, 9:43–49
`
`C. Illustrative Claim
`
`Of the challenged claims, claim 1 is independent. Independent claim
`
`1 is directed to an electronic system coupled to a memory. Claims 3–6, 11,
`and 13 directly or indirectly depend from independent claim 1. Independent
`claim 1 is illustrative of the challenged claims and is reproduced below:
`1.
`An electronic system coupled to a memory,
`comprising:
`a first device that requires access to the memory;
`a decoder that requires access to the memory sufficient to
`maintain real time operation; and
`a memory interface for coupling to the memory, and
`coupled to the first device and to the decoder, the memory
`interface having an arbiter for selectively providing access for
`the first device and the decoder to the memory and a shared bus
`coupled to the memory the first device, and the decoder, the bus
`having a sufficient bandwidth to enable the decoder to access
`the memory and operate in real time when the first device
`simultaneously accesses the bus.
`
`Ex. 1001, 12:29–41.
`
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`
`D. Prior Art Relied Upon
`
`Ex. 1036
`
`Ex. 1032
`
`Samsung relies upon the following prior art references:
`Artieri
`
`US 5,579,052
`Nov. 26, 1996
`
`
`
`
`
`
`
`(filed May 24, 1994)
`Lambrecht
`US 5,682,484
`Oct. 28, 1997
`
`
`
`
`
`
`
`(filed Nov. 20, 1995)
`
`Gordon E. Moore, Cramming more components onto integrated circuits,
`ELECTRONICS, Vol. 38, No. 8 (1965) (Ex. 1035, “Moore”).
`
`Gerrit Slavenburg, The TriMedia VLIW-Based PCI Multimedia
`Processor, 8th ANNUAL MICROPROCESSOR FORUM 12-1–12-10 (1995)
`(Ex. 1034, “Slavenburg”).
`
`Selliah Rathnam & Gert Slavenburg, An Architectural Overview of the
`Programmable Multimedia Processor, TM-1, IEEE PROCEEDINGS OF
`COMPCON ’96 319–26 (1996) (Ex. 1005, “Rathnam”).
`
`
`D. Asserted Grounds of Unpatentability
`Samsung challenges claims 1, 3–6, 11, and 13 of the ’789 patent
`
`based on the asserted grounds of unpatentability (“grounds”) set forth in the
`table below. Pet. 3–4, 10–48.
`Reference(s)
`Lambrecht
`Lambrecht and Artieri
`Lambrecht and Moore
`Rathnam and Lambrecht
`Rathnam, Lambrecht, and
`Moore
`Rathnam, Lambrecht, and
`Slavenburg
`
`Challenged Claim(s)
`Basis
`§ 102(e) 1, 3, 5, 11, and 13
`§ 103(a) 4
`§ 103(a) 6
`§ 103(a) 1, 3–5, and 11
`§ 103(a) 6
`
`§ 103(a) 13
`
`6
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`IPR2015-01944
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`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, we generally construe claims by applying
`the broadest reasonable interpretation in light of the specification. 37 C.F.R.
`§ 42.100(b). This case, however, presents an interesting procedural issue
`because, as we explained above, the ’789 patent will expire on August 26,
`2016. Samsung acknowledges as much when it asserts that the ’789 patent
`will expire in August 2016. Pet. 9–10. Parthenon does not dispute that the
`’789 patent will expire in August 2016. We are unlikely to issue a Final
`Written Decision as to the patentability of the challenged claims before
`August 2016.
`In order to determine if Samsung has demonstrated a reasonable
`likelihood that it would prevail in this proceeding, given the ’789 patent’s
`pending expiration, we analyze Samsung’s arguments through the lens of the
`claim construction standard that will apply to our Final Written Decision.
`Thus, we construe the claims in accordance with the principles set forth in
`Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc).1 37
`C.F.R. § 42.5(b); see Toyota Motor Corp. v. Cellport Sys., Inc., Case
`IPR2015-00633, slip op. at 8–10 (PTAB Aug. 14, 2015) (Paper 11); cf. In re
`Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (“While claims are generally
`given their broadest possible scope during prosecution, the Board’s review
`of the claims of an expired patent is similar to that of a district court’s
`
`
`1 On the current record, however, our construction of the disputed claim
`terms set forth below would have been the same had we applied the broadest
`reasonable interpretation standard.
`
`7
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`review.”) (internal citation omitted). Samsung argues that its proposed
`construction will remain the same even if we apply the principles set forth in
`Phillips. Pet. 9–10 (citing Phillips, 415 F.3d at 1314).
`“In determining the meaning of the disputed claim limitation, we look
`principally to the intrinsic evidence of record, examining the claim language
`itself, the written description, and the prosecution history, if in evidence.”
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
`(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). The words of a
`claim generally are given their ordinary and customary meaning, and that is
`the meaning the term would have to a person of ordinary skill at the time of
`the invention, in the context of the entire patent, including the specification.
`See Phillips, 415 F.3d at 1312–13. Claims are not interpreted in a vacuum,
`but are a part of and are read in light of the specification. See Slimfold Mfg.
`Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116 (Fed. Cir. 1987). Although
`it is improper to read a limitation from the specification into the claims, the
`claims still must be read in view of the specification of which they are a part.
`See Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1347 (Fed. Cir.
`2004).
`
`In its Petition, Samsung proposes constructions for the following
`claim phrases: (1) “video decoder” (claim 3); and (2) “real time” (all
`challenged claims). Pet. 7–9. Parthenon does not propose alternative
`constructions for these claim phrases. See generally Prelim. Resp. 1–31.
`We address Samsung’s proposed constructions for each claim phrase in turn.
`1. “video decoder” (claim 3)
`In its Petition, Samsung proposes to construe the claim phrase “video
`
`decoder” to mean “hardware and/or software that translates data streams into
`
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`Patent 5,812,789
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`video information.” Pet. 7. To support its construction, Samsung directs us
`to various disclosures in specification of the ’789 patent, as well as a
`dictionary definition of “decoder.” Id. at 7–8 (citing Ex. 1001, 1:46–51,
`5:43–45, 5:50–56, 12:23–27; Ex. 1014, 3).
`Upon reviewing the specification of the ’789 patent, we do not find an
`explicit definition for the claim phrase “video decoder.” We, therefore, refer
`to its ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art, in the context of the ’789 patent, including the
`specification. See Phillips, 415 F.3d at 1312–13. In our view, Samsung’s
`proposed construction is consistent with the ordinary and customary
`meaning of “video decoder,” as would be understood by one of ordinary
`skill in the art, in light of the specification of the ’789 patent. See, e.g.,
`Ex. 1001, 5:43–45 (disclosing that “decoding can be performed . . . through
`software”), 12:23–27 (disclosing that “[a]ny conventional decoder including
`a decoder complying to the MPEG-1, MPEG-2, H.261, or H.261 standards,
`or any combination of them, or any other conventional standard can be used
`as the decoder/encoder”). Samsung’s proposed construction also is
`consistent with at least one dictionary definition of “decoder.” Ex. 1014, 3
`(defining a “decoder” as “any hardware or software system that translates
`data streams into video or audio information”). Consequently, for purposes
`of this decision, we adopt Samsung’s construction of the claim phrase
`“video decoder” as “hardware and/or software that translates data streams
`into video information.”
`2. “real time” (all challenged claims)
`In its Petition, Samsung contends that the description of “real time” in
`the ’789 patent, and the description of this same phrase in related U.S. Patent
`
`9
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`No. 8,681,164 B2 (Ex. 1015, “the ’164 patent”), would have caused one of
`ordinary skill in the art not to be informed, with reasonable certainty, about
`the scope of the “real time” requirement in these patents. Pet. 8–9 (citing
`Ex. 1001, 3:13–21; Ex. 1015, 5:36–43, 7:59–8:2, 8:13–21). Samsung then
`asserts that, in the related district court case, Parthenon proposes to construe
`the claim phrase “real time” as “fast enough to keep up with an input data
`stream.” Id. at 9 (citing Ex. 1011, 18; Ex. 1012, 16). Samsung argues that,
`although it believes the claim phrase “real time” is indefinite as used in the
`challenged claims of the ’789 patent, it nonetheless submits that Parthenon’s
`proposed construction of “real time” from the related district court case
`should be applied for purposes of this proceeding. Id.
`As an initial matter, we understand Samsung to argue that the claim
`phrase “real time” as recited in the challenged claims of the ’789 patent is
`indefinite. We decline to reach the merits of Samsung’s indefiniteness
`argument because it is outside the scope of an inter partes review. See 35
`U.S.C. § 311(b) (limiting the scope of an inter partes review to “ground[s]
`that could be raised under section 102 or 103 and only on the basis of prior
`art consisting of patents or printed publications”).
`Turning to Parthenon’s proposed construction of the claim phrase
`“real time” in the related district court case, we decline Samsung’s invitation
`to adopt this construction for purposes of this proceeding because Samsung
`does not explain adequately how it comports with the standards set forth in
`Phillips. Rather, given that the claim phrase “real time” is a commonly
`understood word, we consult a dictionary to ascertain its meaning. See Agfa
`Corp. v. Creo Prods., Inc., 451 F.3d 1366, 1376 (Fed. Cir. 2006). The
`MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS
`
`10
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`Patent 5,812,789
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`(4th ed. 1989) defines “real-time” as “[p]ertaining to a data-processing
`system that controls an ongoing process and delivers its outputs (or controls
`its inputs) not later than the time when these are needed for effective
`control.” Ex. 3001. For purposes of this proceeding, we adopt this
`definition because it is consistent with the usage of the claim phrase “real
`time” in the specification of the ’789 patent. See, e.g., Ex. 1001, 6:43–46
`(disclosing that “[t]o operate in real time the decoder/encoder 45 should
`decode[] and/or encode images fast enough so that any delay in decoding
`and encoding cannot be detected by a human viewer”), 10:28–31 (disclosing
`that “[t]o operate in real time, the decoder/encoder 45 has to decode an
`entire image in time to be able to display it the next time the screen is
`refreshed, which is typically every 1/30 of a second”).
`
`B. Anticipation by Lambrecht
`
`Samsung contends that claims 1, 3, 5, 11, and 13 of the ’789 patent
`
`are anticipated under § 102(e) by Lambrecht. Pet. 10–23. Samsung explains
`how Lambrecht describes the subject matter of each challenged claim (id.),
`and relies upon the Declaration of Harold S. Stone, Ph.D. (Ex. 1030 ¶¶ 78–
`82) to support its positions. At this stage of the proceeding, we are
`persuaded by Lambrecht’s explanations and supporting evidence.
`
`We begin our analysis with the principles of law that generally apply
`to a ground based on anticipation, followed by a brief overview of
`Lambrecht, and then we address the parties’ contentions with respect to
`independent claim 1.
`
`11
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`IPR2015-01944
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`
`1. Principles of Law
`To establish anticipation, “all of the elements and limitations of the
`claim must be shown in a single prior reference, arranged as in the claim.”
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`2001). “[A] reference can anticipate a claim even if it ‘d[oes] not expressly
`spell out’ all the limitations arranged or combined as in the claim, if a person
`of skill in the art, reading the reference, would ‘at once envisage’ the
`claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting
`Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301
`F.2d 676, 681 (CCPA 1962)). We analyze this asserted ground based on
`anticipation with the principles stated above in mind.
`
`2. Lambrecht Overview
`
`Lambrecht generally relates to a computer system that includes a
`system expansion bus, such as the Peripheral Component Interconnect
`(“PCI”) bus, as well as a real time or multimedia bus that transfers periodic
`and/or multimedia stream data for real time and multimedia applications in
`order to increase system performance. Ex. 1032, 1:8–13. Figure 21 of
`Lambrecht, reproduced below, illustrates one embodiment of a computer
`system having a PCI bus capable of operating in different modes, one of
`which is a multimedia mode for high speed multimedia transfers. Id. at
`6:59–61, 26:48–51.
`
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`
`
`As shown in Figure 21, the computer system includes central
`
`processing unit (“CPU”) 102 coupled through CPU local bus 104 to PCI
`bridge chipset 106. Ex. 1032, 26:64–66. PCI bridge chipset further includes
`various bridge logic, peripheral logic, and arbitration logic 107. Id. at
`26:66–27:1. PCI bridge chipset 106 is coupled to main memory 110 through
`memory bus 108. Id. at 27:4–5. Main memory 110 is preferably dynamic
`random access memory, extended data out memory, or other types of
`memory, as desired. Id. at 27:5–8. PCI bridge chipset 106 also interfaces
`with PCI bus 120. Id. at 27:10–11. In this particular embodiment,
`multimedia bus 130 (not illustrated in Figure 21) may optionally augment or
`supplement PCI bus 120 when it is in multimedia mode. Id. at 27:29–31;
`see also id. at 27:62–65 (disclosing the same).
`As further shown in Figure 21, one or more multimedia devices 142D,
`144D, and 146D are coupled to PCI bus 120 and multimedia bus 130.
`Ex. 1032, 27:32–34. Multimedia devices 142D–146D are similar to
`multimedia devices 142–146 illustrated Figure 1 and may include, among
`other things, encoder or decoder devices. Id. at 27:43–50; see also 8:13–19
`(disclosing that various types of devices that may constitute multimedia
`devices 142–146 illustrated in Figure 1).
`
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`
`3. Claim 1
`In its Petition, Samsung relies upon Lambrecht’s main memory 110,
`
`multimedia device 142D, multimedia device 144D, PCI bridge chipset 106
`and PCI bus 120 to account for the “memory,” “first device,” “decoder,”
`“memory interface,” and “shared bus,” respectively, as recited in
`independent claim 1. Pet. 12–19. In particular, Samsung argues that
`Lambrecht’s PCI bus 120 constitutes the claimed “shared bus” because it is
`of “sufficient bandwidth to enable the decoder to access the memory and
`operate in real time when the first device simultaneously accesses the bus,”
`as recited in independent claim 1. Id. at 17 (citing Ex. 1032, 5:33–48,
`27:66–28:11; Ex. 1030 ¶ 78). Samsung asserts that Lambrecht’s PCI bus
`120 operates in a “byte sliced mode,” which allows for simultaneous, real
`time video and audio transfers and, as a result, provides sufficient bandwidth
`for both a first device and decoder to access the shared memory. See id. at
`17–19 (citing Ex. 1032, 5:33–48, 19:39–54, 26:48–63, 27:66–28:11;
`Ex. 1030 ¶ 78).
`In response, Parthenon contends that Lambrecht’s PCI bus 120 does
`not transfer data between multimedia device 144D and main memory 110.
`Prelim. Resp. 8. Instead, Parthenon argues that, when PCI bus 120 operates
`in multimedia mode, it transfers data from one multimedia device to another.
`Id. Parthenon supports its position by arguing that PCI bus 120 illustrated in
`Figure 21 of Lambrecht operates in the same fashion as real time bus 130
`illustrated in Figure 1 of Lambrecht. Id. at 9–10. That is, Parthenon asserts
`that real time bus 130 is not connected to PCI bridge chipset 106 and main
`memory 110 and, as a result, cannot transfer data from multimedia device
`144 to main memory 110. Id. at 10–11 (citing Ex. 1032, 8:8–28, Fig. 1).
`
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`
`On the current record, we are not persuaded by Parthenon’s argument
`that, when Lambrecht’s PCI bus 120 is placed in multimedia mode, it is
`incapable of transferring data between multimedia device 144D and main
`memory 110. Lambrecht discloses that, “as is well known in the art,”
`multimedia devices 142D–146D communicate with each other, CPU 102,
`and main memory 110 via PCI bus 120. Ex. 1032, 27:57–59, Fig. 21. We
`recognize that Lambrecht also discloses that multimedia devices 142D–
`146D communicate data therebetween using PCI bus signals when the PCI
`bus 120 is in multimedia mode. Id. at 27:59–62. We, however, do not share
`Parthenon’s view that, when PCI bus 120 is placed in multimedia mode, the
`aforementioned communication between multimedia devices 142D–146D
`somehow prevents communication between multimedia device 144D and
`main memory 110. Absent evidence to the contrary, we view Lambrecht’s
`disclosure of communicating via PCI bus signals as just one example of
`communication between multimedia devices 142D–146D.
`Next, Parthenon contends that, even if Lambrecht’s PCI bus 120
`operating in multimedia mode did facilitate data transfer from multimedia
`device 144D to main memory 110, multimedia device 144D, nevertheless,
`would not be able to access main memory 110 and operate in real time.
`Prelim. Resp. 12. Parthenon argues that Figure 21 of Lambrecht illustrates
`that any data transfer from multimedia device 144D and main memory 110
`must pass through at least three different components: (1) PCI bus 120; (2)
`PCI bridge chipset 106; and (3) memory bus 108. Id. at 12–13. Parthenon
`further argues that, because Samsung does not identify any portion in
`Lambrecht disclosing that PCI bridge chipset 106 and memory bus 108 are
`capable of operating in real time, multimedia device 144D cannot access
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`main memory 110 and operate in real time, as required by independent claim
`1. Id. at 13.
`On the current record, we are not persuaded by Parthenon’s argument
`that Lambrecht’s multimedia device 144D is incapable of accessing main
`memory 110 and operating in real time. Lambrecht generally describes the
`real time or multimedia mode as being optimized for the transfer of high
`bandwidth real time information. Ex. 1032, 5:47–48. Although Lambrecht
`does not disclose explicitly that PCI bridge chipset 106 and memory bus 108
`operate in real time, it nonetheless discloses that, when operating in
`multimedia mode, multimedia bus 130 augments or supplements PCI bus
`120 to provide real time communication between the components illustrated
`in the computer system of Figure 21, such as multimedia device 144D and
`main memory 110. Id. at 27:23–31, 27:62–65, Fig. 21. Moreover, when
`placing Lambrecht’s PCI bus 120 in multimedia mode, the augmentation
`provided by multimedia bus 130 facilitates real time communication that is
`consistent with our construction of claim phrase “real time.” See supra
`Section II.A.2. We, therefore, are persuaded that Samsung has presented
`sufficient evidence that would support a finding that Lambrecht’s PCI bus
`120, especially when augmented or supplemented with multimedia bus 130,
`constitutes a “bus having a sufficient bandwidth to enable the decoder to
`access the memory and operate in real time,” as recited in independent claim
`1.
`
`At this stage in the proceeding, Parthenon does not address separately
`Samsung’s explanations and supporting evidence regarding the remaining
`limitations recited in independent claim 1. See generally Pet. 12–15. We
`have reviewed Samsung’s explanations and supporting evidence regarding
`
`16
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`these remaining limitations and find them persuasive. Based on the record
`before us, Samsung has demonstrated a reasonable likelihood that it would
`prevail on its assertion that independent claim 1 is anticipated by Lambrecht.
`
`4. Claim 3, 5, 11, and 13
`
`At this stage in the proceeding, Parthenon does not address separately
`Samsung’s explanations and supporting evidence with respect to challenged
`claims 3, 5, 11, and 13. See generally Pet. 19–23. We have reviewed
`Samsung’s explanations and supporting evidence regarding these challenged
`claims and find them persuasive. Based on the record before us, Samsung
`has demonstrated a reasonable likelihood that it would prevail on its
`assertion that dependent claims 3, 5, 11, and 13 are anticipated by
`Lambrecht.
`
`C. Obviousness Based, in Part, on Lambrecht
`Samsung contends that: (1) claim 4 of the ’789 patent is unpatentable
`under § 103(a) over the combination of Lambrecht and Artieri; and (2) claim
`6 of the ’789 patent is unpatentable under § 103(a) over the combination of
`Lambrecht and Moore. Pet. 24–27. Samsung explains how these proffered
`combinations teach the subject matter of each challenged claim, and presents
`rationales to combine their respective teachings. Id. Samsung also relies
`upon the Declaration of Dr. Stone to support its positions. Ex. 1030 ¶¶ 83,
`84. At this stage of the proceeding, we are persuaded by Samsung’s
`explanations and supporting evidence.
`
`In its Preliminary Response, Parthenon relies upon the same
`arguments presented against independent claim 1 to rebut Samsung’s
`explanations and supporting evidence as to how Lambrecht in combination
`
`17
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`with either Artieri or Moore teaches the subject matter of dependent claims 4
`and 6. See Prelim. Resp. 15–16. For the same reasons discussed above with
`respect to independent claim 1, Parthenon’s arguments are not persuasive.
`Based on the record before us, Samsung has demonstrated a reasonable
`likelihood that it would prevail on its assertion that: (1) dependent claim 4
`would have been obvious over Lambrecht and Artieri; and (2) dependent
`claim 6 would have been obvious over Lambrecht and Moore.
`D. Remaining Grounds
`Samsung also contends that: (1) claims 1, 3–5, and 11 are
`unpatentable under § 103(a) over the combination of Rathnam and
`Lambrecht; (2) claim 6 is unpatentable under § 103(a) over the combination
`of Rathnam, Lambrecht, and Moore; and (3) claim 13 is unpatentable under
`§ 103(a) over the combination of Rathnam, Lambrecht, and Slavenburg.
`Pet. 27–48. Samsung proposes these grounds based on the combination of
`Rathnam and Lambrecht as alternatives to the grounds based on Lambrecht
`alone.2 Pet. 5; see Prelim. Resp. 3–7 (citing Liberty Mutual Ins. Co. v.
`Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 3 (PTAB
`Oct. 25, 2012) (Paper 8) (“[Horizontal redundancy] involves a plurality of
`prior art references applied not in combination to complement each other but
`as distinct and separate alternatives.”)). Nevertheless, Samsung does not
`explain adequately why one set of grounds is preferred over the other.
`Pet. 5; see Prelim. Resp. 6 (citing Conopco, Inc. v. Procter & Gamble Co.,
`
`
`2 Although at least one ground based on Lambrecht alone asserts anticipation
`and all of the grounds based on Rathnam and Lambrecht assert obviousness,
`Samsung does not argue that this distinction warrants institution on multiple
`grounds. See Pet. 5.
`
`18
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`Case IPR2013-00505, slip op. at 17 (PTAB Feb. 12, 2014) (Paper 9)
`(finding grounds redundant where the petitioner did not identify “relative
`strengths or weaknesses in the prior art disclosures as they relate to the
`limitations of th[e] claims”); Oracle Corp. v. Clouding IP, LLC, Case
`IPR2013-00088, slip op. at 6 (PTAB Jun. 13, 2013) (Paper 13) (“[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.”)).
`Although Samsung argues that “the grounds are not redundant
`because of several significant differences” (Pet. 5), Samsung does not argue
`that these “differences” render one set of grounds superior to the other, and
`both sets of asserted grounds cover all of the challenged claims (id. (stating
`that “Grounds A-C and Grounds D-F both challenge claims 1, 3-6, 11 and 13
`of the ’789 patent.”)). No two references present identical disclosures, and
`the mere presence of differences is not a sufficient reason to institute an inter
`partes review on multiple grounds of equivalent scope.
`We have broad discretion to institute an inter partes review as to some
`asserted grounds and not others. 37 C.F.R. § 42.108(a) (“the Board may
`authorize the review to proceed . . . on all or some of the grounds of
`unpatentability asserted for each claim”); see also 35 U.S.C. § 314(a)
`(authorizing institution of an inter partes review under particular
`circumstances, but not requiring institution under any circumstances).
`Indeed, the United States Court of Appeals for the Federal Circuit
`recognized our discretion in this regard when it stated that “under [37 C.F.R.
`§ 42.108(a)], it is clear that the Board may choose to institute some grounds
`
`19
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`and not institute others as part of its comprehensive institution decision.”
`Harmonic Inc. v. Avid Tech., Inc., No. 2015-1072, 2016 WL 798192, at *9
`(Fed. Cir. Mar. 1, 2016).
`This discretion is consistent with the requirement that the statutory
`provisions governing an inter partes review proceeding take into account
`“the efficient administration of the Office” and “the ability of the Office to
`timely complete [instituted] proceedings” (35 U.S.C. § 316(b)), as well as
`the regulatory provisions that mandate these proceedings be “construed to
`secure the just, speedy, and inexpensive resolution of every proceeding”
`(37 C.F.R. § 42.1(b)). Accordingly, faced with this record, we exercise our
`discretion and do not institute an inter partes review as to the remaining
`grounds asserted by Samsung for reasons of administrative necessity and to
`ensure timely completion of this proceeding.
`
`
`III. CONCLUSION
`
`Taking into account the arguments presented in Parthenon’s
`Preliminary Response, we conclude that the information presented in the
`Petition demonstrates that there is a reasonable likelihood that Samsung
`would prevail in challenging claims 1, 3, 5, 11, and 13 of the ’789 patent as
`unpatentable under § 102(e), and claims 4 and 6 of the ’789 patent as
`unpatentable under § 103(a). At this stage of the proceeding, we have not
`made a final determination with respect to the
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