IPR2016-01114
`Patent Owner Response
`U.S. Patent No. 7,777,753
`
`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 IPR No: 2016-01114
`Patent No. 7,777,753
`Title: ELECTRONIC SYSTEM AND METHOD FOR SELECTIVELY ALLOWING ACCESS TO
`A SHARED MEMORY
`____________
`PATENT OWNER RESPONSE
`PURSUANT TO 35 U.S.C. § 316 AND 37 C.F.R. §42.120
`
`
`
`
`
`
`
`Patent Owner Response
`U.S. Patent No. 7,777,753
`
`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 IPR No: 2016-01114
`Patent No. 7,777,753
`Title: ELECTRONIC SYSTEM AND METHOD FOR SELECTIVELY ALLOWING ACCESS TO
`A SHARED MEMORY
`____________
`PATENT OWNER RESPONSE
`PURSUANT TO 35 U.S.C. § 316 AND 37 C.F.R. §42.120
`
`
`
`
`
`
`
`
`IPR2016-01114
`Patent Owner Response
`U.S. Patent No. 7,777,753
`
`
`TABLE OF CONTENTS
`
`I. INTRODUCTION .................................................................................................... 1
`II. THE `753 PATENT ............................................................................................. 2
`III. THE CHALLENGED CLAIMS ARE PATENTABLE ............................................... 3
`A. Bowes, Datasheet, Artieri, and Christiansen [claim 7] ............................... 3
`1. Datasheet and Artieri do not disclose or render obvious “an arbiter
`included in the memory interface circuit of the decoder.” ............................... 3
`2. Bowes does not disclose “an arbiter included in the memory interface
`circuit of the decoder.” ......................................................................................... 4
`3. Bowes does not render obvious “an arbiter included in the memory
`interface circuit of the decoder.” ......................................................................... 5
`4. Bowes in combination with Christiansen does not render obvious “an
`arbiter included in the memory interface circuit of the decoder.” .................. 7
`B. Bowes, Datasheet, Artieri, Christiansen, and Arimilli [claims 8 and 10] . 8
`C. Bowes, Datasheet, Artieri, Christiansen, and Shanley [claim 9] ............... 9
`D. Bowes, Datasheet, Artieri, Christiansen, and Gove [claim 12] .................. 9
`IV. CONCLUSION .................................................................................................. 10
`
`
`
`
`
`ii
`
`
`
`IPR2016-01114
`Patent Owner Response
`U.S. Patent No. 7,777,753
`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`In re Fine,
` 837 F.2d 1076 (Fed. Cir.1988) .................................................................... 8, 9, 10
`
`In re Wilson,
` 424 F.2d 1382 (CCPA 1970) .................................................................................. 3
`
`
`
`
`
`Rules
`
`35 U.S.C. § 103 .......................................................................................................... 1
`
`iii
`
`
`
`IPR2016-01114
`Patent Owner Response
`U.S. Patent No. 7,777,753
`
`
`TABLE OF EXHIBITS
`
`Exhibit Description
`
`U.S. Patent No. 7,777,753 (“`753 Patent”)1
`U.S. Patent No. 5,546,547 (“Bowes”)
`U.S. Patent No. 5,787,264 (“Christiansen”)
`Declaration of Mitchell A. Thornton (Thornton Decl.”)
`Deposition testimony of Robert Colwell, Ph.D dated February 27,
`2017 (“Colwell Depo.”).
`U.S. Patent No. 5,584,038 (“Papworth”)
`
`
`
`Exhibit
`No.
`
`1001
`1005
`1011
`2009
`2010
`
`2011
`
`
`1 Ex. 1001, 1005, and 1011 are already of record and not attached to this Response.
`
`iv
`
`
`
`I.
`
`INTRODUCTION
`
`IPR2016-01114
`Patent Owner Response
`U.S. Patent No. 7,777,753
`
`
`The patent owner Parthenon Unified Memory Architecture LLC (“Patent
`
`Owner”) hereby submits the following response to the Petition for Inter Partes
`
`review (“Petition”) filed by Apple, Inc. (“Petitioner”) regarding certain claims of
`
`U.S. Patent No. 7,777,753 (“`753 Patent”) filed on May 31, 2016 and Decision
`
`Granting Institution of Inter Partes Review 37 C.F.R. 42.108 issued on December
`
`7, 2016 (“Institution Decision”).
`
`The Board instituted an Inter Partes review with respect to the following
`
`proposed grounds (collectively “Instituted Grounds”):
`
`1. Obviousness of claims 1 and 2 under 35 U.S.C. § 103 over Bowes,
`
`Datasheet, Artieri, and Arimilli;
`
`2. Obviousness of claim 4 under 35 U.S.C. § 103 over Bowes, Datasheet,
`
`Artieri, Arimilli, and Shanley;
`
`3. Obviousness of claim 7 under 35 U.S.C. § 103 over Bowes, Datasheet,
`
`Artieri, and Christiansen;
`
`4. Obviousness of claims 8 and 10 under 35 U.S.C. § 103 over Bowes,
`
`Datasheet, Artieri, Christiansen, and Arimilli;
`
`5. Obviousness of claim 9 under 35 U.S.C. § 103 over Bowes, Datasheet,
`
`Artieri, Christiansen, and Shanley; and
`
`1
`
`
`
`6. Obviousness of claim 12 under 35 U.S.C. § 103 over Bowes, Datasheet,
`
`IPR2016-01114
`Patent Owner Response
`U.S. Patent No. 7,777,753
`
`
`Artieri, Christiansen, and Gove.
`
`The Board held that claims 1–4 are unpatentable in IPR2015-01501.
`
`Therefore, this response is directed to an analysis of grounds 3–6 of the above
`
`Instituted Grounds.
`
`For
`
`the reasons discussed below, Bowes, Datasheet, Artieri, and
`
`Christiansen do not render claim 7 obvious. Because they depend on claim 7,
`
`claims 8–10 and 12 are allowable for at least the same reasons. The discussion
`
`below first discusses the `753 Patent and claims. It then rebuts the adopted grounds
`
`of unpatentability on the merits.
`
`II. THE `753 PATENT
`
`The `753 Patent is generally directed to sharing a memory interface between
`
`a video decoder and another device contained in an electronic system. `753 Pat.
`
`[Ex. 1001], Abstract; independent claims 1 and 7. Accordingly, the electronic
`
`system includes a bus and a main memory coupled to the bus. Id. at claim 1. The
`
`main memory has stored therein data corresponding to video images to be decoded.
`
`Id. A video circuit is coupled to the bus and receives data from the main memory
`
`corresponding to a video image to be decoded. Id. The video circuit outputs
`
`decoded video data corresponding to the current video image to be displayed on a
`
`2
`
`
`
`IPR2016-01114
`Patent Owner Response
`U.S. Patent No. 7,777,753
`
`display device. Id. The current video image to be displayed is stored in the main
`
`memory. Id. In addition to the video circuit, the electronic system includes another
`
`device such as, for example, a processor that is coupled to the main memory. Id.
`
`An arbiter circuit is coupled to the processor and the video circuit and is
`
`configured to receive requests for access to the main memory from the video
`
`circuit and the processor and control access to the main memory. Id.
`
`III. THE CHALLENGED CLAIMS ARE PATENTABLE
`
`
`A. Bowes, Datasheet, Artieri, and Christiansen [claim 7]
`
`Independent claim 7 is not invalid as obvious in view of Bowes, Datasheet,
`
`Artieri, and Christiansen because Bowes, Datasheet, Artieri, and Christiansen,
`
`alone or in combination, fail to disclose “an arbiter included in the memory
`
`interface circuit of the decoder.” See, e.g., In re Wilson, 424 F.2d 1382 1385
`
`(CCPA 1970) (“All words in a claim must be considered in judging the
`
`patentability of that claim against the prior art”).
`
`1. Datasheet and Artieri do not disclose or render obvious “an
`arbiter included in the memory interface circuit of the
`decoder.”
`
`Petitioner does not rely on Datasheet or Artieri to disclose or render obvious
`
`“an arbiter included in the memory interface circuit of the decoder.” [See Petition
`
`at 55–57.] Indeed, Dr. Thornton confirms that Datasheet and Artieri do not
`
`3
`
`
`
`IPR2016-01114
`Patent Owner Response
`U.S. Patent No. 7,777,753
`
`disclose or render obvious this limitation. [Ex. 2009, Thornton Decl. at ¶ 35.]
`
`Accordingly, Datasheet and Artieri do not disclose or render obvious this
`
`limitation.
`
`2. Bowes does not disclose “an arbiter included in the memory
`interface circuit of the decoder.”
`
`Petitioner argues that Bowes discloses this limitation. [See Petition at 55–
`
`56.] Petitioner is incorrect. A POSA would understand that Petitioner’s
`
`identification of the decoder’s “memory interface circuit” improperly includes
`
`additional elements. [Ex. 2009, Thornton Decl. at ¶ 36.] Specifically, Petitioner
`
`alleges that the “memory interface circuit” of DSP 20 in Bowes includes the
`
`arbitration logic located in MCA 200. [Petition at 55–56.] From this premise,
`
`Petitioner concludes that DSP 20’s “memory interface circuit” includes an arbiter
`
`as required by the claim. [Id. at 56–57.] However, a POSA would understand that
`
`the “memory interface circuit” of DSP 20 does not include anything in MCA 200
`
`because MCA 200 is not part of DSP 20’s path to the memory. [See Ex. 2009,
`
`Thornton Decl. at ¶ 36; Ex. 2010, Colwell Depo. at 26:1–10 (identifying I/O
`
`drivers as part of the “memory interface circuit” because “they’re in the path”);
`
`34:9–13 (identifying bus interface as the “memory interface” because “[t]hat is the
`
`path by which microprocessor 100 reaches memory 160”).] In fact, at his
`
`4
`
`
`
`IPR2016-01114
`Patent Owner Response
`U.S. Patent No. 7,777,753
`
`deposition, Petitioner’s expert agreed that the “memory interface circuit” of DSP
`
`20 does not include anything in MCA 200:
`
`
`
`[Ex. 2010, Colwell Depo. at 42:11–16; cf. id. at 41:4–7 (explaining the same story
`
`regarding CPU 10’s “memory interface circuit,” which also does not include
`
`anything in MCA 200).] Accordingly, the “memory interface circuit” of DSP 20
`
`does not include the arbitration logic located in MCA 200, and Bowes fails to
`
`disclose “an arbiter included in the memory interface circuit of the decoder.”
`
`3. Bowes does not render obvious “an arbiter included in the
`memory interface circuit of the decoder.”
`
`Petitioner argues that Bowes renders this limitation obvious because
`
`“physical integration of arbiter circuits with Bowes’ DSP . . . was one of a handful
`
`of obvious design choices for a POSITA.” [Petition at 57.] This is incorrect. A
`
`POSA would not co-locate the arbiter with DSP 20. [See Ex. 2009, Thornton Decl.
`
`at ¶ 37.] A POSA would understand that the DSP of Bowes is bandwidth limited,
`
`5
`
`
`
`IPR2016-01114
`Patent Owner Response
`U.S. Patent No. 7,777,753
`
`and the alleged use of the Bowes DSP for video decoding requires that its
`
`resources—including its bus interface and processing power—be reserved
`
`exclusively for data and control traffic dedicated to the video decoding process.
`
`[See id.; Ex. 1005 at 1:51–53 (“[A] DSP requires a large amount of bandwidth to
`
`memory for processing the sheer volume of data required to effectuate real-time
`
`computing.”); 2:25–26 (“the high bandwidth required for real-time processing by a
`
`DSP”); 3:21–23 (“The arbitration scheme is tuned to maximize accessibility of the
`
`memory bus to the DSP which has by far the greatest bandwidth requirements.”);
`
`6:35–38 (“Many of these functions are real-time operation and require a
`
`tremendous amount of the memory bus bandwidth between the DSP and the
`
`DRAM of the main memory subsystem 14.”); 7:31–32 (“In addition to the DSP’s
`
`huge requirement for bandwidth on the memory bus . . . .”); see also Ex. 2010,
`
`Colwell Depo. at 58:23–59:18 (explaining that “the logic required to implement
`
`the arbitration function would take up some of the chip’s resources” when asked
`
`about relocating the arbiter in Christiansen).] Indeed, the Bowes system is
`
`“optimized” to support the DSP and make sure that it has the resources it needs.
`
`[See Ex. 1005 at 8:40–42 (“Because the DSP has the largest bus bandwidth
`
`requirement, the system is optimized to meet its need and support its real-time
`
`operations.”).] A POSA looking to “optimize” the Bowes system as its inventor
`
`6
`
`
`
`IPR2016-01114
`Patent Owner Response
`U.S. Patent No. 7,777,753
`
`intended would therefore not be motivated to include circuitry with the DSP for the
`
`purpose of servicing other devices in the system, as such inclusion would cause the
`
`DSP’s limited bus bandwidth and processing power to be divided between video
`
`decoding and services unrelated to video decoding. [See Ex. 2009, Thornton Decl.
`
`at ¶ 37; Ex. 1005 at 7:64–8:3 (explaining that the Bowes bus masters propagate bus
`
`request signals to the arbiter over memory bus 110)]. Accordingly, a POSA would
`
`not be motivated to co-locate the arbitration logic of MCA 200 with the DSP, and
`
`Bowes fails to render obvious “an arbiter included in the memory interface circuit
`
`of the decoder.” [Ex. 2009, Thornton Decl. at ¶ 37.]
`
`4. Bowes in combination with Christiansen does not render
`obvious “an arbiter included in the memory interface circuit of
`the decoder.”
`
`Petitioner argues that Bowes in combination with Christiansen renders this
`
`limitation obvious because “Christiansen explicitly teaches that an arbiter can be
`
`located anywhere in the system. . . . including co-locating the arbitration logic with
`
`the DSP . . . .” [Petition at 57.] This is incorrect. As an initial matter,
`
`Christiansen never explicitly discloses co-locating arbitration logic with the DSP.
`
`Instead, Christiansen broadly states that “the arbiter 22 can be located anywhere
`
`throughout the computer system.” [Ex. 1011 at 5:16–19.] A POSA would not take
`
`Christiansen’s statement at face value because a POSA understands that,
`
`7
`
`
`
`IPR2016-01114
`Patent Owner Response
`U.S. Patent No. 7,777,753
`
`depending on the system, certain locations are unsuitable for the arbiter. [See Ex.
`
`2009, Thornton Decl. at ¶ 39; Ex. 2010, Colwell Depo. at 54:18–55:25 (explaining
`
`that the arbiter must be placed somewhere electrically reasonable and that
`
`Christiansen is not “literally trying to say in a text that you can stick it out, you
`
`know, in a power supply”).] Even if a POSA would interpret Christiansen’s
`
`statement to mean that one could always choose to place the arbiter literally
`
`anywhere in the system, a POSA would not co-locate the arbitration logic with the
`
`DSP in Bowes because, as explained earlier and by Bowes himself, doing so would
`
`run counter to optimizing the system. [Ex. 2009, Thornton Decl. at ¶ 39.]
`
`B. Bowes, Datasheet, Artieri, Christiansen, and Arimilli [claims 8
`and 10]
`
`The Petition alleges that claims 8 and 10 are obvious in view of Bowes,
`
`Datasheet, Artieri, Christiansen, and Arimilli. Claims 8 and 10 depend on
`
`independent claim 7. As discussed in Section III.A., supra, claim 7 is not invalid
`
`as obvious in view of Bowes, Datasheet, Artieri, and Christiansen. The Petition
`
`relies on Arimilli only for its alleged disclosure of certain limitations in claims 8
`
`and 10. [Petition at 60–65.] Therefore, independent claim 7 is also not obvious in
`
`view of the proposed combination of Bowes, Datasheet, Artieri, Christiansen, and
`
`Arimilli. Dependent claims 8 and 10 are allowable at least for the same reasons.
`
`In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent claims are
`
`8
`
`
`
`IPR2016-01114
`Patent Owner Response
`U.S. Patent No. 7,777,753
`
`nonobvious under § 103 if the independent claims from which they depend are
`
`nonobvious”).
`
`C. Bowes, Datasheet, Artieri, Christiansen, and Shanley [claim 9]
`
`The Petition alleges that claim 9 is obvious in view of Bowes, Datasheet,
`
`Artieri, Christiansen, and Shanley. Claim 9 depends on independent claim 7. As
`
`discussed in Section III.A., supra, claim 7 is not invalid as obvious in view of
`
`Bowes, Datasheet, Artieri, and Christiansen. The Petition relies on Shanley only
`
`for its alleged disclosure of certain limitations in claim 9. [Petition at 65–66.]
`
`Therefore, independent claim 7 is also not obvious in view of the proposed
`
`combination of Bowes, Datasheet, Artieri, Christiansen, and Shanley. Dependent
`
`claim 9 is allowable at least for the same reasons. In re Fine, 837 F.2d 1071, 1076
`
`(Fed. Cir. 1988) (“Dependent claims are nonobvious under § 103 if the
`
`independent claims from which they depend are nonobvious”).
`
`D. Bowes, Datasheet, Artieri, Christiansen, and Gove [claim 12]
`
`The Petition alleges that claim 12 is obvious in view of Bowes, Datasheet,
`
`Artieri, Christiansen, and Gove. Claim 12 depends on independent claim 7. As
`
`discussed in Section III.A., supra, claim 7 is not invalid as obvious in view of
`
`Bowes, Datasheet, Artieri, and Christiansen. The Petition relies on Gove only for
`
`its alleged disclosure of certain limitations in claim 12. [Petition at 66–69.]
`
`9
`
`
`
`IPR2016-01114
`Patent Owner Response
`U.S. Patent No. 7,777,753
`
`Therefore, independent claim 7 is also not obvious in view of the proposed
`
`combination of Bowes, Datasheet, Artieri, Christiansen, and Gove. Dependent
`
`claim 9 is allowable at least for the same reasons. In re Fine, 837 F.2d 1071, 1076
`
`(Fed. Cir. 1988) (“Dependent claims are nonobvious under § 103 if the
`
`independent claims from which they depend are nonobvious”).
`
`IV. CONCLUSION
`
`For the foregoing reasons, the Board should find that each of the claims
`
`under review is patentable.
`
`
`
`
`
`
`
`10
`
`
`
`IPR2016-01114
`Patent Owner Response
`U.S. Patent No. 7,777,753
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: /s/ Masood Anjom
`Masood Anjom, Lead Counsel
`Reg. No. 62,167
`Alisa Lipski, Back-Up Counsel
`Reg. No. 55,386
`Attorney for Patent Owner
`Parthenon Unified Memory
`Architecture, LLC
`
`AHMAD, ZAVITSANOS, ANAIPAKOS,
`ALAVI &MENSING, P.C.
`1221 McKinney Street, Suite 2500
`Houston, TX 77010
`Telephone: 713-655-1101
`
`11
`
`Dated: March 9, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01114
`Patent Owner Response
`U.S. Patent No. 7,777,753
`
`
`CERTIFICATE OF SERVICE
`I hereby certify that the Patent Owner’s Response Under 35 U.S.C. § 316
`
`AND 37 C.F.R. §42.120 was served on this Thursday, March 9, 2016 by electronic
`mail to the following:
`Lead Counsel for Apple Inc.
`David W. O’Brien, Reg. No. 40,107
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, TX 75219
`Email: andy.ehmke.ipr@haynesboone.com
`
`Back-up Counsel for Apple Inc.
`Andrew S. Ehmke, Reg. No. 50,271
`Michael S. Parsons, Reg. No. 58,767
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, TX 75219
`david.obrien.ipr@haynesboone.com
`michael.parsons.ipr@haynesboone.com
`
`David L. Alberti, Reg. No. 43,465
`dalberti@feinday.com
`Yakov Zolotorev
`yzolotorev@feinday.com
`FEINBERG DAY ALBERTI &
`THOMPSON LLP
`1600 El Camino Real, Suite 280
`Menlo Park, CA 94025
`
`
`Dated: March 9, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: /s/ Masood Anjom________
`
`Masood Anjom, Lead Counsel
`
`Reg. No. 62,167
`
`Alisa Lipski, Back-Up Counsel
`
`Reg. No. 55,386
`Attorney for Patent Owner
`Parthenon Unified Memory
`Architecture, LLC
`
`AHMAD, ZAVITSANOS, ANAIPAKOS,
`ALAVI &MENSING, P.C.
`1221 McKinney Street, Suite 2500
`Houston, TX 77010
`Telephone: 713-655-1101
`
`12
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
