Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 10
`
`Entered: August 23, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00923
`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. 10
`
`Entered: August 23, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00923
`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
`
`
`
`
`
`
`
`
`IPR2016-00923
`Patent 5,812,789
`
`
`I. INTRODUCTION
`
`Petitioner, Apple Incorporated (“Apple”), 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”), waived its right to file a Preliminary Response. Paper 8.1
`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.” We conclude that the information
`presented in the Petition establishes that there is a reasonable likelihood that
`Apple 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. LG Elecs. MobileComm,
`USA, No. 2:15-cv-01950 (E.D. Tex.); (2) Parthenon Unified Memory
`
`
`1 We note that Parthenon filed a Preliminary Response opposing a
`substantially identical Petition (Case IPR2015-01944) challenging the same
`claims of the ’789 patent by a different Petitioner. Despite Parthenon’s
`waiver of its right to file a Preliminary Response in the instant case, we do
`not treat that waiver as effecting Parthenon’s right to present arguments
`raised in its Preliminary Response in the earlier case, together with
`supporting evidence, in a Patent Owner Response filed in the instant case.
`
`2
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`Architecture LLC v. Huawei Techs. Co., No. 2:14-cv-00687-JRG-RSP (E.D.
`Tex.); (3) Parthenon Unified Memory Architecture LLC v. Motorola
`Mobility, Inc., No. 2:14-cv-00689-JRG-RSP (E.D. Tex.); (4) Parthenon
`Unified Memory Architecture LLC v. HTC Corp., No. 2:14-cv-00690-RSP
`(E.D. Tex.); (5) Parthenon Unified Memory Architecture LLC v. LG Elecs.,
`Inc., No. 2:14-cv-00691-JRG-RSP (E.D. Tex.); (6) Parthenon Unified
`Memory Architecture LLC v. Samsung Elecs. Co., No. 2:14-cv-00902-JRG-
`RSP (E.D. Tex.); (7) Parthenon Unified Memory Architecture LLC v.
`Qualcomm Inc., No. 2:14-cv-00930-JRG-RSP (E.D. Tex.); (8) Parthenon
`Unified Memory Architecture LLC v. ZTE Corp., No. 2:15-cv-00225-JRG-
`RSP (E.D. Tex.); (9) Parthenon Unified Memory Architecture LLC v. Apple,
`Inc., No. 2:15-cv-00621-JRG-RSP (E.D. Tex.); and
`(10) STMicroelectronics, Inc. v. Motorola Inc., No. 4:03-cv-00276-LED
`(E.D. Tex.). Pet. 1–2; Paper 7, 2. In addition to this Petition, Apple filed
`another petition challenging the patentability of a certain subset of claims in
`related U.S. Patent No. 5,960,464 (Case IPR2016-00924).
`
`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.
`The ’789 patent generally relates to an electronic system having a
`video or audio decompression/compression device and, in particular, to
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`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.
`
`
`As shown in Figure 2, electronic system 40 includes first device 42,
`
`decoder 44, encoder 46, memory interface 48, and memory 50. Ex. 1001,
`
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`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.
`
`D. Prior Art Relied Upon
`
`Apple 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)
`
`Ex. 1036
`
`Ex. 1032
`
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`
`D. Prior Art Relied Upon (cont.)
`
`Gordon E. Moore, Cramming more components onto integrated circuits,
`38 ELECTRONICS (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”).
`
`
`E. Asserted Grounds of Unpatentability
`Apple 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
`
`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). As we explained above, however, the ’789 patent will expire
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`on August 26, 2016. Apple acknowledges as much when it asserts that the
`’789 patent will expire in August 2016. Pet. 9–10. 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 Apple has demonstrated a reasonable
`likelihood that it would prevail in this proceeding, given the ’789 patent’s
`pending expiration and consistent with our claim constructions in Case
`IPR2015-01944, we analyze Apple’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 followed in
`district court. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.
`2005) (en banc). 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 review.”) (internal citation omitted). Apple argues that its
`proposed construction will remain the same even if we apply the principles
`set forth in Phillips. Pet. 10.
`“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
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`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, Apple proposes constructions for the following claim
`phrases: (1) “video decoder” (claim 3); and (2) “real time” (all challenged
`claims). Pet. 7–9. We address Apple’s proposed constructions for each
`claim phrase in turn.
`
`1. “video decoder” (claim 3)
`In its Petition, Apple proposes to construe the claim phrase “video
`
`decoder” to mean “hardware and/or software that translates data streams into
`video information.” Pet. 7. To support its construction, Apple 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, Apple’s
`proposed construction is consistent with the ordinary and customary
`meaning of “video decoder,” as would be understood by one of ordinary
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`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”). Apple’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 are persuaded that Apple’s construction of the claim phrase
`“video decoder” as “hardware and/or software that translates data streams
`into video information” is the ordinary and customary meaning that phrase
`would have had to a person of ordinary skill in the relevant art at the time of
`the invention.
`
`2. “real time” (all challenged claims)
`In its Petition, Apple contends that the description of “real time” in
`the ’789 patent, and the description of this same phrase in related U.S. Patent
`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). Apple 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). Apple 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
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`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 Apple 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 Apple’s indefiniteness
`argument because it is outside the scope of an inter partes review.2 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 Apple’s invitation to
`adopt this construction for purposes of this proceeding because Apple 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); see also
`Phillips, 415 F.3d at 1322–23 (“[J]udges are free to consult dictionaries and
`technical treatises at any time in order to better understand the underlying
`technology and may also rely on dictionary definitions when construing
`claim terms, so long as the dictionary definition does not contradict any
`
`
`2 See Cuozzo Speed Techs., LLC v. Lee, No. 15–446, 2016 WL 3369425, at *
`8 (U.S. June 20, 2016) (“Thus, contrary to the dissent’s suggestion, . . . nor
`does our interpretation enable the agency to act outside its statutory limits
`by, for example, canceling a patent claim for ‘indefiniteness under §112’ in
`inter partes review.”).
`
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`definition found in or ascertained by a reading of the patent documents.”
`(citation omitted)).
`The MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL
`TERMS (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 Decision, we are
`persuaded that this definition is consistent with the usage of the claim phrase
`“real time” in the specification of the ’789 patent and is the ordinary and
`customary meaning that phrase would have had to a person of ordinary skill
`in the relevant art at the time of the invention. 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
`
`Apple contends that claims 1, 3, 5, 11, and 13 of the ’789 patent are
`
`anticipated under § 102(e) by Lambrecht. Pet. 10–23. Apple explains how
`Lambrecht purportedly describes the subject matter of each challenged claim
`(id.), and relies upon the Declaration of Harold S. Stone, Ph.D. (Ex. 1030
`
`11
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`¶¶ 78–82) to support its positions. At this stage of the proceeding, we are
`persuaded by Apple’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 Apple’s contentions with respect to
`independent claim 1.
`
`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
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`which is a multimedia mode for high speed multimedia transfers. Id. at
`6:59–61, 26:48–51.
`
`
`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) optionally may 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
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`(disclosing that various types of devices that may constitute multimedia
`devices 142–146 illustrated in Figure 1).
`
`3. Claim 1
`In its Petition, Apple 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, Apple 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). Apple 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).
`
`At this stage in the proceeding, we are persuaded by Apple’s
`explanations and supporting evidence regarding independent claim 1. Based
`on the record before us, Apple has demonstrated a reasonable likelihood that
`it would prevail on its assertion that independent claim 1 is anticipated by
`Lambrecht.
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`4. Claim 3, 5, 11, and 13
`
`We have reviewed Apple’s explanations and supporting evidence
`regarding dependent claims 3, 5, 11, and 13 and find them persuasive. See
`Pet. 19–23. Based on the record before us, Apple has demonstrated a
`reasonable likelihood that it would prevail on its assertion that these claims
`are anticipated by Lambrecht.
`
`C. Obviousness Based, in Part, on Lambrecht
`Apple 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. Apple explains how these proffered
`combinations purportedly teach the subject matter of each challenged claim,
`and asserts that a person of ordinary skill in the art would have had reason to
`combine or modify the references. Id. Apple also relies upon the
`Declaration of Dr. Stone to support its positions. Ex. 1030 ¶¶ 83, 84.
`We have reviewed Apple’s explanations and supporting evidence
`regarding dependent claims 4 and 6 and find them persuasive. See Pet. 24–
`27. Based on the record before us, Apple 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
`Apple 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,
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`Lambrecht, and Moore; and (3) claim 13 is unpatentable under § 103(a) over
`the combination of Rathnam, Lambrecht, and Slavenburg. Pet. 27–48.
`Apple proposes these grounds based on the combination of Rathnam and
`Lambrecht as alternatives to the grounds based on Lambrecht alone.3 Pet. 5.
`Nevertheless, Apple does not explain adequately why one set of grounds is
`preferred over the other. Id.; see also Conopco, Inc. v. Procter & Gamble
`Co., 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 Apple argues that “the [asserted] grounds are not redundant
`because of several significant differences” (Pet. 5), Apple 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 prefer one
`
`
`3 Although at least one ground based on Lambrecht alone asserts anticipation
`and all of the grounds based on Rathnam and Lambrecht assert obviousness,
`Apple does not argue that this distinction warrants institution on multiple
`grounds. See Pet. 5.
`
`16
`
`
`
`IPR2016-00923
`Patent 5,812,789
`
`ground over another or to institute an inter partes review on multiple
`grounds of essentially the same 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 U.S. Court of Appeals for the Federal Circuit recognized our
`discretion in this regard when it stated that “under [37 C.F.R. § 42.108], it is
`clear that the Board may choose to institute some grounds and not institute
`others as part of its comprehensive institution decision.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1368 (Fed. Cir. 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 Apple for reasons of administrative necessity and to
`ensure timely completion of this proceeding.
`
`17
`
`
`
`IPR2016-00923
`Patent 5,812,789
`
`
`III. CONCLUSION
`
`We conclude that the information presented in the Petition
`demonstrates that there is a reasonable likelihood that Apple 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 patentability of these challenged claims or
`to the construction of any claim term.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314(a) and 37 C.F.R. § 42.4,
`an inter partes review is hereby instituted based on the following grounds:
`A. claims 1, 3, 5, 11, and 13 as anticipated under § 102(e) by
`Lambrecht;
`B. claim 4 as unpatentable under § 103(a) over the combination of
`Lambrecht and Artieri; and
`C. claim 6 as unpatentable under § 103(a) over the combination of
`Lambrecht and Moore; and
`FURTHER ORDERED that no other grounds are authorized for this
`inter partes review other than those specifically identified above; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`will commence on the entry date of this decision.
`
`18
`
`
`
`IPR2016-00923
`Patent 5,812,789
`
`For PETITIONER:
`Andrew S. Ehmke
`David W. O’Brien
`HAYNES AND BOONE, LLP
`andy.ehmke.ipr@haynesboone.com
`david.obrien.ipr@haynesboones.com
`
`
`For PATENT OWNER:
`
`Massod Anjom
`Scott Clark
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`manjom@azalaw.com
`sclark@azalaw.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`19
`
`
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