UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ASUSTEK COMPUTER, INC. and ASUS COMPUTER INTERNATIONAL,
`Petitioners
`
`v.
`
`AVAGO TECHNOLOGIES GENERAL IP (SINGAPORE) PTE. LTD.,
`
`Patent Owner
`
`
`
`Case: IPR2016-00646
`
`U.S. Patent No. 5,870,087
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE UNDER
`37 C.F.R. § 42.107 TO PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,870,087
`
`
`
`

`
`TABLE OF CONTENTS
`
`I.
`II.
`
`V.
`
`INTRODUCTION ........................................................................................... 1
`BACKGROUND ............................................................................................. 2
`A.
`Procedural History ................................................................................. 2
`B.
`The ’087 Patent ..................................................................................... 3
`C.
`Petitioners’ Cited References ................................................................ 6
`III. CLAIM CONSTRUCTION ............................................................................ 6
`A.
`Legal Standard ....................................................................................... 6
`B.
`Each of the Identified Claim Terms Has a Plain and Ordinary
`Meaning and Need Not Be Construed .................................................. 7
`IV. LEGAL STANDARDS ................................................................................. 11
`Inter Partes Review............................................................................. 11
`A.
`B.
`Anticipation ......................................................................................... 12
`C.
`Obviousness ......................................................................................... 13
`PETITIONERS’ ALLEGATIONS FAIL FOR LACK OF SUPPORT ........ 15
`A.
`The Petition Does Not Properly Define Applicable Legal Standards
`for Anticipation and/or Obviousness .................................................. 15
`Count 1: Lam Does Not Teach or Suggest Each and Every
`Limitation of Claims 1, 5, 10, 11, and 16 of the ’087 Patent .............. 16
`Count 2: Fujii Does Not Teach or Suggest Each and Every
`Limitation of Claims 1, 7, 10, 11, and 16 of the ’087 Patent .............. 20
`Count 3: Claims 1, 5, 7-11, and 16 of the ’087 Patent Are Not
`Unpatentable Under 35 U.S.C. § 103(a) Over Fujii in View of Lam . 24
`Count 4: Dependent Claims 7-9 of the ’087 Patent Are Not
`Unpatentable Under 35 U.S.C. § 103(a) Over Lam in View of
`Cloutier ................................................................................................ 29
`Count 5: Dependent Claims 7-9 of the ’087 Patent Are Not
`Unpatentable Under 35 U.S.C. § 103(a) Over Fujii in View of
`Cloutier ................................................................................................ 33
`Count 6: Dependent Claims 7-9 of the ’087 Patent Are Not
`Unpatentable Under 35 U.S.C. § 103(a) Over Fujii in View of Lam
`and Further in View of Cloutier .......................................................... 35
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`
`
`i
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`

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`VI.
`
`CONCLUSION ............................................................................................ ..37
`
`VI. CONCLUSION .............................................................................................. 37
`VII. CERTIFICATION PURSUANT TO 37 C.F.R § 42.24(d) ........................... 38
`VII. CERTIFICATION PURSUANT TO 37 C.F.R § 42.24(d) ......................... ..38
`
`
`
`
`ii
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`

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`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`2001
`
`LIST OF EXHIBITS
`
`U.S. Patent No. 5,870,087 (“the 087 patent”)
`
`Prosecution History of U.S. Patent No. 5,870,087
`
`Declaration of Richard Kramer (“Kramer Decl.”)
`
`U.S. Patent No. 5,960,464 (“Lam”)
`
`U.S. Patent No. 5,898,695 (“Fujii”)
`
`U.S. Patent No. 5,847,771 (“Cloutier”)
`
`ITU-T Recommendation H.222.0, approved July 10, 1995, available at
`
`http://www.itu.int/rec/T-REC-H.222.0-199507-S/en (“07/95 H.222.0”)
`
`Excerpts from Academic Press Dictionary of Science and Technology
`
`(Academic Press, Inc., 1992)
`
`Excerpts from Jack, Keith, Video Demystified, Second Edition, 1996
`
`VESA Unified Memory Architecture (VUMA) Standard Hardware
`
`Specification, Version 1.0, March 8, 1996
`
`Datasheet for Samsung KM416S1120AT
`
`Excerpts of In re Certain Audiovisual Components and Products
`
`Containing the Same, Inv. No. 337-TA-837, Initial Determination
`
`(Public Version) (Aug. 13, 2013).
`
`
`
`iii
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`

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`Excerpts of Rebuttal Witness Statement of Scott T. Acton, Ph.D.,
`
`2002
`
`Submitted March 18, 2013, Inv. No. 337-TA-837.
`
`
`
`iv
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`

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`Patent Owner Avago Technologies General IP (Singapore) Pte. Ltd.
`
`(“Avago”) hereby respectfully submits this Preliminary Response to the Petition
`
`seeking inter partes review in this matter. This filing is timely under 35 U.S.C. §
`
`313 and 37 C.F.R. § 42.107(b), as it is being filed within three months of the
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`February 24, 2016 mailing date of the Notice of Filing Date Accorded to Petition
`
`and Time for Filing Patent Owner Preliminary Response (Paper 4).
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`A trial should not be instituted in this matter as none of the references or
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`combinations of references relied upon by Petitioners gives rise to a reasonable
`
`likelihood of Petitioners prevailing with respect to any challenged claim of U.S.
`
`Patent No. 5,870,087 (the “’087 Patent”).
`
`I.
`
`INTRODUCTION
`The Petition for Inter Partes Review Case No. IPR2016-00646 (the
`
`“Petition”) filed by ASUSTeK Computer, Inc. and ASUS Computer International
`
`(collectively “Petitioners”) challenges the validity of claims 1, 5, 7-11, and 16 of
`
`the ’087 Patent. “The Director may not authorize an inter partes review to be
`
`instituted unless the Director determines that the information presented in the
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`petition filed under section 311 … shows that there is a reasonable likelihood that
`
`the petitioner would prevail with respect to at least 1 of the claims challenged ….”
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`35 U.S.C. § 314(a). The Patent Trial and Appeal Board (the “Board”) should not
`
`institute inter partes review of the ’087 Patent because there is no reasonable
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`likelihood of Petitioners prevailing as to any of these claims of the ’087 Patent. As
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`discussed below, the anticipation rejections proposed in the Petition are deficient
`
`for failing to set forth each and every feature arranged as recited by the respective
`
`claims of the ’087 Patent and, thus, do not establish a prima facie case of
`
`anticipation.
`
`Further, all of the obviousness combinations proposed in the Petition lack
`
`articulated reasoning with a rational underpinning to support a legal conclusion of
`
`obviousness. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In
`
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Indeed, the Petition only provides
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`“mere conclusory statement[s]” (id.) that the claims are obvious, and lacks any
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`cogent reasoning as to why a person of ordinary skill in the art would modify or
`
`combine the cited references in the manner recited by the challenged claims of the
`
`’087 Patent.
`
`II. BACKGROUND
`A.
`Procedural History
`Petitioners make and sell products that infringe the ’087 Patent. Avago has
`
`filed two lawsuits against Petitioners for infringement of the ’087 Patent and six
`
`other patents owned by Avago. See Avago Technologies General IP (Singapore)
`
`Pte. Ltd., v. ASUSTeK Computer Inc. et al., No. 3:15-cv-04525-EMC (N.D. Cal.
`
`filed Feb. 20, 2015) (“ASUS I”) and Avago Technologies General IP (Singapore)
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`Pte. Ltd., v. ASUSTeK Computer Inc. et al., No. 3:16-cv-0451-EMC (N.D. Cal.
`
`filed Jan. 26, 2016) (“ASUS II”) (collectively the “Lawsuits”). Petitioners
`
`challenge claims 1, 5, 7-11, and 16 of the ’087 Patent, all of which are asserted
`
`against Petitioners in the Lawsuits.
`
`B.
`
`The ’087 Patent
`
`The Invention
`1.
`U.S. Patent No. 5,870,087 was filed on November 13, 1996, and issued on
`
`
`
`February 9, 1999. Exhibit 1001 at 1. The ’087 Patent discloses and claims
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`structures, functions and methodologies for decoding an encoded multimedia data
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`stream. Specifically, the ’087 Patent describes novel video decoder systems and
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`methods for performing video decoding that efficiently utilize memory. See id.
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`Video decoder systems include several components such as a channel receiver that
`
`receives an encoded multimedia data stream, transport logic to demultiplex the
`
`multimedia data stream into separate audio and video elementary data streams, a
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`video decoder, a system controller that controls operations within the video
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`decoder system, and memory. See id. at 4:65-5:28. The video decoder systems
`
`and methods for performing video decoding disclosed in the ’087 Patent improve
`
`video (MPEG) decoding by utilizing what is alternately referred to in the ’087
`
`Patent as “unified memory,” “single memory,” or “single unified memory.” See
`
`id. at 5:6-6:27. For simplicity, Patent Owner refers to the memory structure of the
`
`’087 Patent as “unified memory.”
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`
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`The ’087 Patent discloses that the unified memory may be comprised of one
`
`or more memory chips. For example, FIG. 3 of the ’087 Patent, reproduced below,
`
`depicts a 16 Mbit SDRAM (item 212). Exhibit 1001 at 4. The depiction of the
`
`memory 212 is consistent with a memory configuration of four ranks (i.e., chips).
`
`In addition, Fig. 4, which is reproduced below, depicts frame store memory 212.
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`Id. at 6. The depiction of the memory 212 is consistent with a memory having
`
`more than one memory chip or bank.
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`
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`Compared to the prior art systems, the unified memory structure disclosed in
`
`the ’087 Patent reduces the total memory needed and simplifies the system design.
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`Exhibit 1001 at 17:2-6. Prior art MPEG decoder systems generally used a frame
`
`store memory for the MPEG decoder motion compensation logic which stores the
`
`reference frames or anchor frames as well as the frame being reconstructed. Id. at
`
`4:29-32. Additionally, the prior art systems would generally also include a
`
`separate memory for the transport and system controller functions because size
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`limitations prevented the memories from being combined. Id. at 4:33-35. These
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`additional memories added to the overall cost of the system. Id. at 4:42-43. The
`
`unified memory disclosed in the ’087 Patent unifies the memory structure, thereby
`
`reducing the total number and amount of memory needed, as well as simplifies the
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`video decoder design and reduces overall cost. See id. at 17:2-6.
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`Petitioners’ Cited References
`
`C.
`Petitioners are relying on the following three (3) references as alleged prior
`
`art:
`
`• U.S. Patent No. 5,960,464 (“Lam”) (Petition Exhibit 1004);
`• U.S. Patent No. 5,898,695 (“Fujii”) (Petition Exhibit 1005); and
`• U.S. Patent No. 5,847,771 (“Cloutier”) (Petition Exhibit 1006).
`
`For at least the reasons explained below, Petitioners have failed to show that any of
`
`the above-listed references render unpatentable any of the challenged claims of the
`
`’087 Patent, either alone or in combination.
`
`III. CLAIM CONSTRUCTION
`A. Legal Standard
`In applying the broadest reasonable construction, the Board gives the claim
`
`terms their plain meaning unless the plain meaning is inconsistent with the
`
`specification. St. Jude Med., Cardiology Div., Inc. v. Bd. Of Regents of Univ. of
`
`Mich., IPR 2013-00041, Paper 12 at 6 (PTAB May 2, 2013) (applying the plain
`
`and ordinary meaning of “alcohol” where no reason to depart from that definition
`
`was evident in the specification); see also Thorner v. Sony Computer Entm’t Am.
`
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“There are only two exceptions to this
`
`general rule [that a claim term is given its ordinary meaning]: 1) when a patentee
`
`sets out a definition and acts as his own lexicographer; or 2) when the patentee
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`disavows the full scope of a claim term either in the specification or during
`
`prosecution.”); In re Zeltz, 893 F.2d 319, 321 (Fed. Cir. 1989).
`
`B.
`
`Each of the Identified Claim Terms Has a Plain and Ordinary
`Meaning and Need Not Be Construed
`
`Petitioners attempt to construe two claim terms in the ’087 Patent. A review
`
`of these claim terms reveals that neither requires construction because each has a
`
`readily apparent plain and ordinary meaning. Moreover, with respect to the
`
`“memory” / “first unified memory” term, Petitioners do not offer the “broadest
`
`reasonable interpretation” as required by 37 C.F.R. § 42.100(b) and instead attempt
`
`to import additional limitations into the claims as written. Accordingly,
`
`Petitioners’ proposed constructions should be disregarded by the Board.
`
`
`
`1.
`
`“memory” / “first unified memory”
`
`The Petition identifies “memory” / “first unified memory” as terms that
`
`require construction pursuant to 37 C.F.R. § 42.100(b) and § 42.104(b)(3).
`
`Specifically, the Petition alleges that the broadest reasonable construction of the
`
`terms “memory” / “first unified memory” is “a single memory for use by transport,
`
`decode, and system controller function.” Petition at 10. This construction
`
`improperly imports limitations. In particular, Petitioners’ proposed construction
`
`attempts to improperly limit the scope of the term to a single structure – i.e., a
`
`“single memory” – when there is nothing in the claims or in the specification of the
`
`’087 Patent that explicitly or implicitly defines or limits the scope of the term
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`“memory” / “first unified memory” in this manner. As such, the Board should
`
`decline to import this limitation into the construction of “memory” / “first unified
`
`memory,” and simply afford the term its plain and ordinary meaning.
`
`The broadest reasonable interpretation (which is also the definition
`
`supported by the intrinsic evidence) is “memory functioning as a unit.” The terms
`
`“memory” and “first unified memory” are used throughout the specification to
`
`indicate that the memory of the video (e.g., MPEG) decoder system functions as a
`
`unit. The ’087 Patent, however, does not limit the “memory” or “first unified
`
`memory” to a single structure. As seen in FIG. 3 of the ’087 Patent, shown below,
`
`the 16 Mbit SDRAM identified by reference number 212 is depicted as four
`
`rectangles coupled together. The memory 212 depicted in FIG. 3 is consistent with
`
`four ranks (i.e. chips) of memory coupled together to form a 16 Mbit SDRAM that
`
`functions as a unit. Indeed, the specification of the ’087 Patent does not limit the
`
`memory to any particular configuration so long as the resulting memory functions
`
`as a unit.
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`
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`The fact that the memory is not limited to a single structure is further
`
`confirmed by FIG. 4, reproduced below, which depicts Frame-store Memory 212
`
`as being composed of two memory chips functioning as a unit. As with the
`
`memory 212 in FIG. 3, if the memory of the ’087 Patent was limited to a single
`
`memory chip or structure, the Frame-store Memory 212 in FIG. 4 would have been
`
`depicted with a single block, rather than the two blocks shown.
`
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`
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`The prosecution history of the ’087 Patent is in accord. Throughout the
`
`application process, the patentee’s correspondence with the U.S. Patent and
`
`Trademark Office with respect to the memory was consistent with how the
`
`memory is referenced in the specification. The patentee did not ascribe a specific
`
`definition to the terms “memory” and/or “first unified memory” that would impart
`
`to those terms a meaning different from the plain and ordinary meaning – “memory
`
`functioning as a unit.” Thus, the broadest reasonable interpretation of “memory” /
`
`“first unified memory” is “memory functioning as a unit.”
`
`2.
`
`“demultiplexing one or more multimedia data streams” /
`“demultiplexes one or more multimedia data streams”
`
`
`The Petition identifies “demultiplexing one or more multimedia data
`
`streams” / “demultiplexes one or more multimedia data streams” as terms that
`
`require construction pursuant to 37 C.F.R. § 42.100(b) and § 42.104(b)(3).
`
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`- 10 -
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`Specifically, the Petition alleges that the broadest reasonable construction of the
`
`terms is “separate the multiplexed encoded stream into one or more individual
`
`streams.” Petition at 11. These terms have a plain and ordinary meaning that
`
`would have been readily know by a person of ordinary skill in the art.
`
`Accordingly, no construction of these terms is necessary and the Board should
`
`afford the terms their plain and ordinary meaning. If, however, the Board
`
`determines that a formal construction is necessary, Patent Owner does not object to
`
`construing the terms to mean “separate the multiplexed encoded stream into one or
`
`more individual streams” for purposes of these proceedings only.
`
`IV. LEGAL STANDARDS
`A. Inter Partes Review
`To institute an inter partes review, there must be a “reasonable likelihood
`
`
`
`that the petitioner would prevail with respect to at least one of the claims
`
`challenged in the petition.” 35 U.S.C. § 314(a). Petitioners therefore carry the
`
`burden to “demonstrate that there is a reasonable likelihood that at least one of the
`
`claims challenged in the petition is unpatentable.” 37 C.F.R. § 42.108(c).
`
`The Petition must include “[a] full statement of the reasons for the relief
`
`requested, including a detailed explanation of the significance of the evidence
`
`including material facts, and the governing law, rules, and precedent.” 37 C.F.R. §
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`42.22(a)(2); see also 37 C.F.R. § 42.104 (requiring IPR petitions to meet the
`
`requirements of §§ 42.6, 42.8, and 42.24).
`
`As discussed in greater detail below, the Petition fails to establish that there
`
`is a reasonable likelihood that any challenged claim is unpatentable and Petitioners
`
`therefore have failed to meet their burden to show sufficient grounds to institute
`
`inter partes review.
`
`B. Anticipation
`
`
`
`The Petition fails to present any anticipation arguments sufficient to create a
`
`“reasonable likelihood that the petitioner would prevail with respect to at least 1 of
`
`the claims challenged.” “To establish anticipation, each and every element in a
`
`claim, arranged as is recited in the claim, must be found in a single prior art
`
`reference.” ZTE v. ContentGuard, IPR 2013-00134, Paper 12 at 24 (PTAB June
`
`19, 2013) (citing Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
`
`(Fed. Cir. 2001); NetMoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed.
`
`Cir. 2008)). “[To anticipate,] [t]here must be no difference between the claimed
`
`invention and the reference disclosure, as viewed by a person of ordinary skill in
`
`the field of the invention.” Scripps Clinic & Res. Found. v. Genentech, Inc., 927
`
`F.2d 1565, 1576 (Fed. Cir. 1991). Thus, the Board “must analyze prior art
`
`references as a skilled artisan would.” Microsoft Corp. v. Proxyconn Inc., IPR No.
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`2012-00026, Paper 73 at 33 (PTAB Feb. 19, 2014) (internal citations omitted).
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`
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`C. Obviousness
`
`The Petition also fails to present any obviousness arguments sufficient to
`
`create a “reasonable likelihood that the petitioner[s] would prevail with respect to
`
`at least 1 of the claims challenged.” Patentability requires that the claimed
`
`invention would not have been obvious to a person with ordinary skill in the art at
`
`the time of the invention. See, e.g., Panduit Corp. v. Dennison Mfg. Co., 810 F.2d
`
`1561, 1565-68 (Fed. Cir. 1987). The relevant factual inquiries include: (1) the
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`level of ordinary skill in the pertinent art; (2) the scope and content of the prior art;
`
`(3) the differences between the claimed invention and the prior art; and (4)
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`objective secondary considerations of non-obviousness, if any. See, e.g., SIBIA
`
`Neurosciences v. Cadus Pharm. Corp., 225 F.3d 1349, 1355 (Fed. Cir. 2000); In re
`
`Dembiczak, 175 F.3d 994, 998 (Fed. Cir. 1999), abrogated on other grounds, In re
`
`Gartside, 203 F.3d 1305 (Fed. Cir. 2000); B.F. Goodrich Co. v. Aircraft Braking
`
`Sys. Corp., 72 F.3d 1577, 1582 (Fed. Cir. 1996). The person of ordinary skill in
`
`the art is a hypothetical person who is presumed to know the relevant prior art. See
`
`Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.
`
`1986).
`
`Additionally, “a patent composed of several elements is not proved obvious
`
`merely by demonstrating that each element was, independently, known in the prior
`
`art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather, to establish
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`prima facie obviousness, the cited references must be shown to disclose or suggest
`
`each claimed element and it must be shown that it would have been obvious to
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`combine the teachings in the references together to arrive at the claimed invention.
`
`See In re Lee, 277 F.3d 1338, 1344 (Fed. Cir. 2002). There must be an apparent
`
`reason to combine the cited references to create the specific invention.
`
`In addition, a showing that the reason to combine stems from the nature of
`
`the problem to be solved must be “clear and particular, and it must be supported by
`
`actual evidence.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1334 (Fed.
`
`Cir. 2002). The combined art must narrow the scope of the inventor’s task to the
`
`point where it would have been obvious to try the particular invention claimed. If
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`the particular invention lies hidden in a multitude of other options suggested by the
`
`art, the invention is not obvious. See, e.g., Leo Pharm. Prods. Ltd. v. Rea, 726
`
`F.3d 1346, 1356 (Fed. Cir. 2013) (“[T]he breadth of the[] choices [disclosed in the
`
`art] and the number combinations indicate that these disclosures would not have
`
`rendered the claimed invention obvious to try.”); In re Kubin, 561 F.3d 1351,
`
`1359-60 (Fed. Cir. 2009) (stating that what is “obvious to try” is erroneously
`
`equated with obviousness where “what would have been ‘obvious to try’ would
`
`have been to vary all parameters or try each of numerous possible choices until one
`
`possibly arrived at a successful result, where the prior art gave either no indication
`
`of which parameters were critical or no direction as to which of many possible
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`choices is likely to be successful”) (internal citations omitted); Medichem, S.A. v.
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`Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).
`
`Hindsight is forbidden in an obviousness analysis. See Dembiczak, 175 F.3d
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`at 998; See also Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
`
`1368 (Fed. Cir. 2012). This means that the reasons for combining references or
`
`modifying the teachings of a reference must be apparent at the time of the
`
`invention and thus apparent without the use of hindsight. A telltale sign of an
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`impermissible hindsight analysis is that the analysis “use[s] the invention to define
`
`the problem that the invention solves.” Mintz v. Dietz & Watson, Inc., 679 F.3d
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`1372, 1376-78 (Fed. Cir. 2012) (reversing a district court that conducted its
`
`analysis using hindsight because the district court’s obviousness finding was
`
`improperly based on art directed to the solution as opposed to art directed to the
`
`problem).
`
`V.
`
`
`PETITIONERS’ ALLEGATIONS FAIL FOR LACK OF SUPPORT
`A. The Petition Does Not Properly Define Applicable Legal
`Standards for Anticipation and/or Obviousness
`
`
`Notably absent from the Petition is a discussion of the applicable legal
`
`standards for anticipation and obviousness. Petitioners allege throughout the
`
`Petition that all of the challenged claims are either anticipated or rendered obvious
`
`by at least one cited reference. The Petition itself, however, omits any legal
`
`analysis of the standard Petitioners must meet in order to prove these allegations.
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`Petitioners’ expert, Mr. Kramer, makes passing references to these
`
`standards, but fails to include any support for his understanding of the standards.
`
`See Exhibit 1003 at ¶¶ 20-22. This is insufficient under 37 C.F.R. § 42.22(a),
`
`which requires that a petition provide “[a] full statement of the reasons for the
`
`relief requested, including a detailed explanation of the significance of the
`
`evidence including material facts, and the governing law, rules, and precedent.”
`
`(emphasis added). Mr. Kramer’s unsubstantiated “understanding” of the legal
`
`requirements cannot meet this standard. Moreover, the Petition itself does not
`
`even adopt Mr. Kramer’s understanding, and therefore is devoid of any analysis of
`
`the legal standards for anticipation or obviousness. As a result of this omission,
`
`the Petition should be denied as to all challenged claims.
`
`B. Count 1: Lam Does Not Teach or Suggest Each and Every
`Limitation of Claims 1, 5, 10, 11, and 16 of the ’087 Patent
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`Independent Claim 1 of the ’087 Patent includes the feature “wherein the
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`transport logic is operable to access the memory to store and retrieve data during
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`demultiplexing operations.” Independent Claim 10 includes the feature “where
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`said demultiplexing one or more multimedia data streams from the encoded stream
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`operates using a first unified memory.” And independent Claim 16 of the ’087
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`Patent recites “wherein the transport logic is operable to access the memory to
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`store and retrieve data during demultiplexing operations.” Petitioners discuss these
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`three features together in the Petition and allege that “Lam discloses that the
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`transport logic uses and accesses the main memory to store and retrieve data during
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`demultiplexing.” See Petition at 18-19. Lam, however, has no such disclosure. In
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`fact, there is no disclosure in Lam that the alleged transport logic has any access to
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`memory during demultiplexing operations, much less that it stores and retrieves
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`data during demultiplexing operations as required by the independent claims of the
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`’087 Patent.
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`Lam presents in Fig. 3, below, “a block diagram of the software elements”
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`of a computer system having an MPEG 2 decoder. Exhibit 1004 at 4:3-4.
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`According to Lam, “[t]he video objects manager 159 is a lower level traffic
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`controller responsible for the parsing [i.e., demultiplexing] of different packets of
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`video, and time synchronization for video and audio ‘lip synching.’ Each video
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`object contains video, audio, sub-picture data, and other data as appropriate.”
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`Exhibit 1004 at 6:1-5. Lam discloses that “[t]he DVD information file manager
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`158 continuously reads the video objects from the DVD CD-ROM disk 113 and
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`sends the objects to the video manager 159.” Exhibit 1004 at 5:56-59. Lam
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`further teaches that the video objects manager 159 demultiplexes “the video
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`objects into video, audio, sub-picture and other data packets. The video manager
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`159 transfers the video and audio packets to the video and audio drivers 160 and
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`162, respectively, under synchronism according to time stamps.” Exhibit 1004 at
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`6:38-42. In other words, the video objects manager 159 receives data directly from
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`the DVD information file manager 158 and immediately passes the demultiplexed
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`data directly to the video and audio drives 160 and 162. Nowhere in Lam – in the
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`specification, the figures, or the claims – is there any disclosure or suggestion that
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`the video manager 159 accesses any memory to store and retrieve data during
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`demultiplexing operations as required by Claims 1, 10, and 16.
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`In fact, Lam discloses that the 2 megabytes of memory required for the
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`system is required by the video decoder after demultiplexing operations have
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`ended. Specifically, Lam teaches that “[i]mportantly, the MPEG 2 decoding
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`technique, performed at least in part by the video driver 160, requires 2 megabytes
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`of memory because of temporal compression employed by the technique to
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`compress information and eliminate redundancy therein.” Exhibit 1004 at 6:50-54.
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`Lam further designates the audio and video decoders themselves (which,
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`again, only perform their operations after the transport logic has completed
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`demultiplexing) do not even access the memory directly, but instead through
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`microcontroller 120. Specifically, Lam teaches that
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`[T]he microcontroller 120 receives memory read/write requests
`from the video decoding circuit 126 and/or audio decoding circuit
`128, and converts these requests to their appropriate page descriptor
`addresses based on the lookup table. Employing the DMA engine
`124, the microcontroller 120 then accesses the appropriate portion in
`the main memory 106, to write data to, and read data from, the main
`memory as requested by the video decoding circuit 126 or audio
`decoding circuit 128.
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`Exhibit 1004 at 8:36-44 (emphasis added).
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`In sum, there is no memory access by transport logic during demultiplexing
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`in Lam. Moreover, being at least two components removed from any memory, the
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`alleged transport logic in Lam has no way of accessing memory. Therefore, Lam
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`not only does not teach or suggest each and every feature of independent Claims 1,
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`10, and 16 of the ’087 Patent (or Claims 5 and 11, which depend from independent
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`Claims 1 and 10, respectively). As such, for at least this reason, Petitioners have
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`failed to “demonstrate that there is a reasonable likelihood that at least one of the
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`claims” challenged in Count 1 of the Petition “is unpatentable.” The Board,
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`therefore, should decline to institute inter partes review on Count 1 in light of
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`Lam. See 37 C.F.R. § 42.108(c).
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`C. Count 2: Fujii Does Not Teach or Suggest Each and Every
`Limitation of Claims 1, 7, 10, 11, and 16 of the ’087 Patent
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`Independent Claim 1 of the ’087 Patent includes the feature “wherein the
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`
`
`transport logic is operable to access the memory to store and retrieve data during
`
`demultiplexing operations.” Independent Claim 10 includes the feature “where
`
`said demultiplexing one or more multimedia data streams from the encoded stream
`
`operates using a first unified memory.” And independent Claim 16 of the ’087
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`Patent recites “wherein the transport logic is operable to access the memory to
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`store and retrieve data during demultiplexing operations. Petitioners discuss these
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`three features together in the Petition and assert that “Fujii Figure 14 discloses that
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`the transport logic (program packet filter 15 and interface unit 14) stores and
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`retrieves data from the RAM during demultiplexing operations.” Petition at 28-29
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`(citing Exhibit 1003 at ¶¶ 93-94). Fujii, however, does not disclose that the
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`transport logic retrieves data from the memory during demultiplexing operations.
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`In support of its contention that Fujii discloses that the transport logic
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`retrieves data from the RAM during demultiplexing operations, Petitioners cite
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`FIG 14 of Fujii, reproduced below, and the disclosure in column 10 of Fujii that
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`‘“[t]he microprocessor 12 reads the PID data corresponding to the user selected
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`program #k from the program map table in RAM 12 [sic] and sets it to the register
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`123. The PID data is then supplied from the output port to the PID filter 152 [in
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`program packet filer 15].’” Petition at 29 (citing Exhibit 1005 at 10:1-5 and
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`Exhibit 1003 at ¶ 94. Petitioners allege that the program packet filter 15 is part of
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`the transport logic. Petition at 28-29 (“the transport logic (program packet filter 15
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`and interface unit 14)”).
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`The very portion of Fujii cited by Petitioners for the proposition that the
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`transport logic retrieves data from the RAM during demultiplexing operations,
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`however, states otherwise. Specifically, Fujii states that the microprocessor 12
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`reads the PID data “from the program map table in RAM 12 [sic] and sets it to
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`register 123” and the “PID data is then supplied from the output port to the PID
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`filter 152.” Exhibit 1005 at 10:1-5. In other words, as clearly depicted in Fig. 14
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`of Fujii, the PID filter 152 retrieves information from a register (123) within the
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`microprocessor, and not from the alleged memory (RAM 7).
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`Petitioners further cite to Fig. 17 of Fujii in support of the allegation that the
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`transport logic retrieves data from memory during demultiplexing operations. See
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`Petition at 29. As shown by the directional arrows in Fig. 17, reproduced below,
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`however, the channel demultiplexer 202 receives data only from the error
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`correction demodulator.
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`There is nothing in Figure 17 or elsewhere in the specification of Fujii that
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`indicates or sugge