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 UNITED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01946
`Patent 5,960,464
`____________
`
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`
`DECISION
` Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`Apple Inc. v. Parthenon
`Ex. 1012 / Page 1 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 1
`
`
`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 UNITED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01946
`Patent 5,960,464
`____________
`
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`
`DECISION
` Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`Apple Inc. v. Parthenon
`Ex. 1012 / Page 1 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 1
`
`
`
`I. INTRODUCTION
`
`Petitioner, Samsung Electronics Company, Limited and Samsung
`Electronics America, Incorporated (collectively “Petitioner”), filed a Petition
`requesting an inter partes review of claims 1–4, 7–13, 16–24, 32–36, and 40
`(“the challenged claims”) of U.S. Patent No. 5,960,464 (Ex. 1001, “the ’464
`patent”). Paper 2 (“Pet.”). Parthenon Unified Memory Architecture Limited
`Liability Corporation (“Patent Owner”) 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 Patent Owner’s Preliminary Response, we conclude that the
`information presented in the Petition establishes that there is a reasonable
`likelihood that Petitioner would prevail in challenging claims 1–4, 7–13, 16–
`24, 32–36, and 40 of the ’464 patent as unpatentable under 35 U.S.C.
`§§ 102(e) and 103(a). Pursuant to § 314, we hereby institute an inter partes
`review as to the challenged claims of the ’464 patent.
`
`A. Related Matters
`
`The ’464 patent is involved in the following district court cases: (1)
`
`Parthenon Unified Memory Architecture LLC v. Huawei Technologies 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.,
`No. 2:14-cv-00690-RSP (E.D. Tex.); (4) Parthenon Unified Memory
`
`Ex. 1012 / Page 2 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 2
`
`
`
`Architecture LLC v. LG Electronics, Inc., No. 2:14-cv-00691-JRG-RSP
`(E.D. Tex.); (5) Parthenon Unified Memory Architecture LLC v. Samsung
`Electronics 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.); and (8) Parthenon
`Unified Memory Architecture LLC v. Apple Inc., No. 2:15-cv-00621-JRG-
`RSP (E.D. Tex.). Pet. 1–2; Paper 5, 2. Also, U.S. Patent No. 5,812,789 is
`involved in STMicroelectronics, Inc. v. Motorola, Inc., No. 4:03-cv-00276-
`LED (E.D. Tex.). Pet. 2.
`In addition to this Petition, Petitioner filed other petitions challenging
`the patentability of claims in the following patents owned by Patent Owner:
`(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. 5,812,789 (Case IPR2015-01944). Id.
`
`B. The ’464 Patent
`
`The ’464 patent, titled “Memory Sharing Architecture for a Decoding
`in a Computer System,” issued September 28, 1998, from U.S. Patent
`Application No. 08/701,890, filed on August 23, 1996. Ex. 1001, at [54],
`[45], [21], [22]. Because the application that led to the ’484 patent was filed
`August 23, 1996, the ’464 patent is set to expire on August 23, 2016.
`The ’464 patent generally relates to “a memory management system
`that can be used with applications requiring a large contiguous block of
`
`Ex. 1012 / Page 3 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 3
`
`
`
`memory, such as video decompression techniques (e.g., [Motion Picture
`Expert Group 2 (MPEG 2)] decoding).” Id. at Abstract. Existing MPEG 2
`decompression chip sets could be expensive because they required two (2)
`megabytes of dynamic random-access memory. Id. at 2:18–24. As a result,
`it was desirable to employ the main memory of the computer. Id. However,
`because typical operating systems allocate memory in four (4)-kilobyte
`blocks, it was difficult to obtain two (2)-megabytes of contiguous memory.
`Id. at 2:51–63. To address these and other problems, the disclosed memory
`management module requests and employs approximately 500, four (4)-
`kilobyte pages of the main memory, some of which are in noncontiguous
`blocks of pages, to construct a single contiguous two (2)-megabyte block of
`memory. Id. at 3:8–15.
`Figure 2 of the ’464 patent is reproduced below.
`
`
`Figure 2 is a block diagram of MPEG 2 decoder 114. Id. at 4:1–2, 4:42–43.
`MPEG 2 decoder 114 includes direct memory access (DMA) engine 124,
`video decoding circuit 126, and audio decoding circuit 128, each of which is
`
`Ex. 1012 / Page 4 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 4
`
`
`
`conventional. Id. at 4:51–54, 5:3–7. MPEG 2 decoder 114 further includes
`microcontroller 120, which, in turn, includes memory management unit 122.
`Id. at 4:43–46. Microcontroller 120 directly accesses main memory 106
`through DMA engine 124. Id. at 4:46–54. Microcontroller 120 performs
`memory sharing routine 200 (illustrated in the flowchart of Figure 4) to
`request a two (2)-megabyte portion of main memory 106. Id. at 6:63–66. If
`two (2)-megabytes of contiguous memory is not available, microcontroller
`120 can request two, one (1)-megabyte blocks. Id. at 7:16–27. If two, one
`(1)-megabyte blocks of contiguous memory are not available,
`microcontroller 120 can request four (4), 500-kilobyte blocks. Id. In a
`worst-case scenario, microcontroller 120 can request 500, four (4)-kilobyte
`blocks of memory. Id. at 7:56–63. “[M]icrocontroller 120 programs or
`creates a lookup table to translate or map the 500 pages to a contiguous
`string of memory locations beginning at a set address and increasing
`contiguously therefrom to an address 2 megabytes later” (id. at 7:46–50)
`using conventional lookup table techniques (id. at 8:30–35).
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1, 10, 19, and 32 are independent.
`
`Claims 2–4 and 7–9 depend from independent claim 1. Claims 11–13 and
`16–18 depend from independent claim 10. Claims 20–24 depend from
`independent claim 19. Claims 33–36 and 40 depend from independent claim
`32. Independent claim 1 is illustrative of the challenged claims and is
`reproduced below:
`1.
`In a computer system having a main memory, a
`storage device having encoded data stored therein and a
`
`Ex. 1012 / Page 5 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 5
`
`
`
`processor controlled by an operating system, an electronic
`device comprising:
`a decoding circuit coupled to receive and decode the
`encoded data from the storage device; and
`a control circuit coupled to the decoding circuit, the
`processor and the main memory, the control circuit being
`configured to request continuous use of several portions of the
`main memory from the operating system, the portions of the
`main memory having noncontiguous addresses, and being
`configured to translate the noncontiguous addresses to
`contiguous addresses of a block of memory, and
`wherein the decoding circuit is configured to request at
`least some of the contiguous addresses of the block of memory,
`and wherein the control circuit translates the requested
`contiguous addresses of the block of memory to requested
`noncontiguous addresses and permits the decoding circuit to
`access the portions of the main memory..
`Ex. 1001, 9:60–10:13.
`
`D. Prior Art Relied Upon
`
`Petitioner relies upon the following prior art references:
`Selliah Rathnam & Gert Slavenburg, An Architectural Overview of the
`Programmable Multimedia Processor, TM-1, 1996 IEEE PROC. OF
`COMPCON ’96, at 319 (Ex. 1005, “Rathnam”).
`
`INTEL CORP., ACCELERATED GRAPHICS PORT INTERFACE SPECIFICATION
`(rev. 1.0 1996) (Ex. 1024, “AGP Specification”).
`
`Gordon E. Moore, Cramming More Components onto Integrated
`Circuits, 38 ELECTRONICS 114 (1965) (Ex. 1035, “Moore”).
`
`Rhodes
`
`
`
`
`Ex. 1028
`
`
`
`
`US 5,432,900
`
`
`
`
`
`July 11, 1995
`(filed June 16, 1994)
`
`Ex. 1012 / Page 6 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 6
`
`
`
`Notarianni1
`
`
`
`
`
`US 5,404,511
`
`
`
`
`
`Apr. 4, 1995
`(filed June 26, 1992)
`
`Ex. 1031
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–4, 7–13, 16–24, 32–36, and 40 of the
`’464 patent based on the asserted grounds of unpatentability (“grounds”) set
`forth in the table below. Pet. 3–4, 11–60.
`Challenged Claim(s)
`Reference(s)
`Basis
`Notarianni
`§ 102(b) 1, 3, 4, 8–10, 12, 13, 16–21,
`23, 24, 32, 33, 35, 36, and 40
`§ 103(a) 7 and 22
`Notarianni
`§ 103(a) 2 and 11
`Notarianni and Moore
`§ 103(a) 34
`Notarianni and Rathnam
`§ 102(a) 10, 16–18, 32, 36, and 40
`AGP Specification
`AGP Specification and Rhodes § 103(a) 1, 3, 4, 7–9, 12, 13, 19–24,
`33, and 35
`§ 103(a) 11
`§ 103(a) 2
`
`AGP Specification and Moore
`AGP Specification, Rhodes,
`and Moore
`AGP Specification and
`Rathnam
`
`§ 103(a) 34
`
`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); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed.
`
`1 We understand references to “Notorianni” in the Petition and Preliminary
`Response to be typographical mistakes. See Ex. 1031 at [75].
`
`Ex. 1012 / Page 7 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 7
`
`
`
`Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S.
`Ct. 890 (2016). This case, however, presents an interesting procedural issue
`because, as we explained above, the ’464 patent will expire on August 23,
`2016. Petitioner acknowledges as much when it asserts the ’464 patent will
`expire in August 2016. Pet. 9–10. Patent Owner does not dispute that the
`’464 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 Petitioner has demonstrated a reasonable
`likelihood that it would prevail in this proceeding, given the ’464 patent’s
`pending expiration, we analyze Petitioner’s arguments at institution 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, 1312 (Fed. Cir.
`2005) (en banc). See 37 C.F.R. § 42.5(b); 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.” (citation omitted)). Petitioner 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 1312). Given the
`record at this stage of the proceeding, we agree.
`“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.”
`
`Ex. 1012 / Page 8 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 8
`
`
`
`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, Petitioner proposes constructions for the following
`claim phrases: (1) “translate” (all challenged claims), and (2)
`“algorithmically translate the noncontiguous addresses to the contiguous
`addresses” (claims 7 and 22). Pet. 8–9. Patent Owner does not propose
`alternative constructions for these claim phrases. See generally Prelim.
`Resp. 1–27. We address Petitioner’s proposed constructions for each claim
`phrase in turn.
`
`1. “translate” (all challenged claims)
`In its Petition, Petitioner proposes to construe the claim term
`
`“translate” to mean “convert.” Pet. 8. To support its construction, Petitioner
`cites the Specification. Id. at 8–9 (citing Ex. 1001, Abstract, 8:35–40). In
`related litigation, the parties agreed that the term “translate” should be
`construed as “convert.” Id. at 9 (citing Ex. 1038, 6).
`
`Ex. 1012 / Page 9 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 9
`
`
`
`On this record, and for purposes of this Decision, we are persuaded
`that the proper construction of “translate” is “convert.”
`2. “algorithmically translate the noncontiguous addresses to the
`contiguous addresses” (claims 7 and 22)
`In its Petition, Petitioner proposes to construe the claim term
`“algorithmically translate the noncontiguous addresses to the contiguous
`addresses” to mean “convert using at least one mathematical operation.”
`Pet. 9. To support its construction, Petitioner cites the Specification. Id.
`(citing Ex. 1001, 8:15–28). In related litigation, the parties agreed that the
`term “algorithmically translate the noncontiguous addresses to the
`contiguous addresses” should be construed as “convert using at least one
`mathematical operation.” Id. (citing Ex. 1038, 6).
`On this record, and for purposes of this Decision, we are persuaded
`that the proper construction of “algorithmically translate the noncontiguous
`addresses to the contiguous addresses” is “convert using at least one
`mathematical operation.”
`
`B. Anticipation by Notarianni
`
`Petitioner contends that claims 1, 3, 4, 8–10, 12, 13, 16–21, 23, 24,
`
`32, 33, 35, 36, and 40 of the ’464 patent are anticipated under § 102(b) by
`Notarianni. Pet. 11–25. Petitioner explains how Notarianni describes the
`subject matter of each challenged claim (id.), and relies upon the Declaration
`of Harold S. Stone, Ph.D. (Ex. 1030 ¶¶ 47–67) to support its positions. At
`this stage of the proceeding, we are persuaded by Petitioner’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
`
`Ex. 1012 / Page 10 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 10
`
`
`
`Notarianni, and we then address the parties’ 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) (second alteration in
`original) (quoting 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. Notarianni Overview
`
`Notarianni generally relates to a fragmented memory manager module
`to alleviate the problem of memory fragmentation when reading image and
`audio files from a compact disc read-only memory (CD-ROM) disc and
`decoding them in real-time. Ex. 1031, Title, Abstract. According to
`Notarianni:
`This fragmentation might mean, for example, that a request for
`the allocation of 60 kilobytes of buffer space cannot be satisfied
`because there is no single unallocated block larger than 50
`kilobytes. At the same time, adding up all the small fragments,
`there may in fact be hundreds of kilobytes of unallocated
`memory.
`
`Ex. 1012 / Page 11 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 11
`
`
`
`Id. at 1:49–55. “By managing the memory . . . as a set of many small
`fragments, any small fragment can be utilised to contribute to any allocation
`of buffer space, large or small (minimum size: one fragment).” Id. at 2:11–
`14. “[T]he allocated buffer may be the sum of many fragments dispersed
`randomly throughout the physical memory space.” Id. at 2:14–17. “[T]he
`total of available buffer space in the memory is divided into a plurality of
`fragments, each fragment containing a relatively small predetermined
`quantity of available buffer space and having an associated play control item
`with a list pointer identifying a further fragment containing available buffer
`space.” Id. at 2:60–66.
`Figure 2 is reproduced below.
`
`
`Figure 2 shows the logical structure of an embodiment of the data processing
`apparatus described in Notarianni. Id. at 3:24–25. “[Fragmented Memory
`Manager module (FRAGM)] 212 actually partitions the memory into
`uniform and small buffers (‘fragments’) and maintains a linked listing of all
`unallocated fragments to allow dynamic allocation of any total buffer size,
`
`Ex. 1012 / Page 12 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 12
`
`
`
`regardless of the physical addresses of the individual fragments in the
`memory 200.” Id. at 6:26–34. “By making the links via [Play Control List]-
`like structures, in this [Compact Disc-Interactive] embodiment, the
`fragmentation becomes effectively transparent to the play control module
`208 of [the Compact Disc Real Time Operating System (CDRTOS)].” Id. at
`6:34–37.
`“[T]he formatting of memory into a linked list of small fragments
`allows the use of all available memory for real-time buffers, even if such
`memory is severely fragmented and dispersed at random throughout the
`physical memory space.” Id. at 9:67–10:3. In other embodiments, “the
`augmented [Play Control Lists] of the fragmented memory could even be
`gathered together in physical memory.” Id. at 11:10–13. The FRAGM
`secures at the outset an allocation of buffer space sufficient for all
`requirements of the application module, and partitions the allocation into
`small units of buffer space (fragments), which are linked into a list by
`respective list pointers. Id. at Abstract. Any subsequent requirement for
`buffer space is met by the FRAGM, by un-linking the requisite number of
`fragments from the list of unallocated fragments. Id.
`
`3. Claim 1
`
`Petitioner relies upon Notarianni’s video decoder and adaptive pulse
`code modulation decoder to describe the “decoding circuit” recited in
`independent claim 1, and relies upon Notarianni’s access controller to
`describe the “control circuit” recited in independent claim 1. Pet. 11–14.
`With respect to the control circuit “being configured to request
`continuous use of several portions of the main memory from the operating
`
`Ex. 1012 / Page 13 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 13
`
`
`
`system, the portions of the main memory having noncontiguous addresses”
`Petitioner relies upon Notarianni’s disclosure that “memory manager module
`210 of CDRTOS allows the application module 202 to reserve blocks of
`memory in a desired plane of the memory 200, which can be used as buffers
`storing the video/audio data for a given play operation.” Id. at 12 (citing Ex.
`1031, 4:3–41; Ex. 1030 ¶ 47). With respect to the control circuit “being
`configured to translate the noncontiguous addresses to contiguous addresses
`of a block of memory,” Petitioner argues that Notarianni’s FRAGM 212
`“finds small, non-contiguous fragments of the memory and creates a list of
`links to the small memory locations,” and that “[t]he linked listing is then a
`contiguous block of memory.” Id. at 12–13.
`With respect to the decoding circuit being “configured to request at
`least some of the contiguous addresses of the block of memory,” Petitioner
`relies upon Notarianni’s disclosure of an “application module” that is
`designed “to cause the decoders 206 to read [audio, video, and program data
`from the disc] for the generation of desired audio and video presentations.”
`Id. at 13 (emphasis omitted) (quoting Ex. 1031, 4:19–24).
`With respect to the control circuit “translat[ing] the requested
`contiguous addresses of the block of memory to requested noncontiguous
`addresses and permits the decoding circuit to access the portions of the main
`memory,” Petitioner argues that Notarianni’s FRAGM 212 translates the
`requests from decoders 206 to the noncontiguous addresses of the various
`memory fragments. Id. at 13–14 (citing Ex. 1031, 6:49–51, 6:67–7:17, Figs.
`6, 7).
`
` In response, Patent Owner contends that “unlike the system
`disclosed in independent claims 1, 10, 19 and 32, [Notarianni] does not
`
`Ex. 1012 / Page 14 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 14
`
`
`
`disclose constructing a single contiguous block of memory from the
`available noncontiguous blocks and the small fragments are not perceived to
`be a continuous block of main memory by the system components such as a
`decoder circuit.” Prelim. Resp. 8–12 (emphasis omitted). Patent Owner’s
`argument is not persuasive, however, because it is not commensurate with
`the scope of the claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
`(stating that limitations not appearing in the claims cannot be relied upon for
`patentability). Specifically, the claims do not require either constructing a
`single contiguous block of memory or that the decoder perceive the available
`noncontiguous blocks to be a continuous block of main memory.
`At this stage in the proceeding, Patent Owner does not address
`separately Petitioner’s explanations and supporting evidence regarding the
`remaining limitations recited in independent claim 1 (Pet. 11–14). See
`generally Prelim. Resp. 8–12. We have reviewed Petitioner’s explanations
`and supporting evidence regarding these remaining limitations and find them
`persuasive. Based on the record before us, Petitioner has demonstrated a
`reasonable likelihood that it would prevail in showing that independent
`claim 1 is anticipated by Notarianni.
`
`4. Claims 3, 4, 8–10, 12, 13, 16–21,
`23, 24, 32, 33, 35, 36, and 40
`At this stage in the proceeding, Patent Owner does not address
`separately Petitioner’s explanations and supporting evidence with respect to
`challenged claims 3, 4, 8–10, 12, 13, 16–21, 23, 24, 32, 33, 35, 36, and 40.
`See generally Pet. 14–25. We have reviewed Petitioner’s explanations and
`supporting evidence regarding these challenged claims and find them
`persuasive. Based on the record before us, Petitioner has demonstrated a
`
`Ex. 1012 / Page 15 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 15
`
`
`
`reasonable likelihood that it would prevail in showing that claims 3, 4, 8–10,
`12, 13, 16–21, 23, 24, 32, 33, 35, 36, and 40 are anticipated by Notarianni.
`
`C. Obviousness Based, in Part, on Notarianni
`Petitioner contends that: (1) claims 7 and 22 of the ’464 patent are
`unpatentable under § 103(a) over Notarianni; (2) claims 2 and 11 of the ’464
`patent are unpatentable under § 103(a) over the combination of Notarianni
`and Moore; and (3) claim 34 of the ’464 patent is obvious over the
`combination of Notarianni and Rathnam. Pet. 25–30. Petitioner explains
`how these proffered combinations teach the subject matter of each
`challenged claim, and presents rationales to combine their respective
`teachings. Id. Petitioner also relies upon the Declaration of Dr. Stone to
`support its positions. Ex. 1030 ¶¶ 68–71. At this stage of the proceeding,
`we are persuaded by Petitioner’s explanations and supporting evidence.
`
`In its Preliminary Response, Patent Owner argues that claims 2, 7, 11,
`22, and 34 are patentable for at least the same reasons as independent claims
`1, 10, 19, and 32. See Prelim. Resp. 12–14. For the reasons discussed above
`with respect to independent claim 1, we are not persuaded by Patent
`Owner’s arguments. Based on the record before us, Petitioner has
`demonstrated a reasonable likelihood that it would prevail in showing that:
`(1) claims 7 and 22 of the ’464 patent are unpatentable under § 103(a) over
`Notarianni; (2) claims 2 and 11 of the ’464 patent are unpatentable under
`§ 103(a) over the combination of Notarianni and Moore; and (3) claim 34 of
`the ’464 patent is obvious over the combination of Notarianni and Rathnam.
`D. Remaining Grounds
`Petitioner also contends that: (1) claims 10, 16–18, 32, 36, and 40 are
`unpatentable under § 102(a) as anticipated by AGP Specification; (2) claims
`
`Ex. 1012 / Page 16 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 16
`
`
`
`1, 3, 4, 7–9, 12, 13, 19–24, 33, and 35 are unpatentable under § 103(a) over
`the combination of AGP Specification and Rhodes; (3) claim 11 is
`unpatentable under § 103(a) over the combination of AGP Specification and
`Moore; (4) claim 2 is unpatentable under § 103(a) over the combination of
`AGP Specification, Rhodes, and Moore; and (5) claim 34 is unpatentable
`under § 103(a) over the combination of AGP Specification and Rathnam.
`Pet. 30–60. These grounds represent alternative challenges to the claims
`upon which we already have instituted inter partes review. Pet. 3–4; see
`Prelim. Resp. 3–8 (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, Petitioner does not explain
`adequately why one set of grounds is preferred over the other. Pet. 5–6; see
`Prelim. Resp. 6–7 (citing 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 Petitioner argues that “the grounds are not redundant
`because of several significant differences” (Pet. 5), Petitioner does not argue
`
`Ex. 1012 / Page 17 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 17
`
`
`
`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-D and Grounds E-I both challenge claims 1–4, 7–13, 16–
`24, 32–36, and 40 of the ’464 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
`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
`
`Ex. 1012 / Page 18 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 18
`
`
`
`grounds asserted by Petitioner for reasons of administrative necessity and to
`ensure timely completion of this proceeding.
`
`III. CONCLUSION
`
`Taking into account the arguments presented in Patent Owner’s
`Preliminary Response, we conclude that the information presented in the
`Petition demonstrates that there is a reasonable likelihood that Petitioner
`would prevail in challenging claims 1–4, 7–13, 16–24, 32–36, and 40 of the
`’464 patent as unpatentable under §§ 102(b) and 103(a). At this stage of the
`proceeding, we have not made a final determination with respect to the
`patentability of these challenged claims.
`
`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, 4, 8–10, 12, 13, 16–21, 23, 24, 32, 33, 35, 36, and 40
`as anticipated under § 102(b) by Notarianni;
`B. claims 7 and 22 as unpatentable under § 103(a) over Notarianni;
`C. claims 2 and 11 as unpatentable under § 103(a) over the
`combination of Notarianni and Moore; and
`D. claim 34 as unpatentable under § 103(a) over the combination of
`Notarianni and Rathnam; and
`FURTHER ORDERED that no other grounds are authorized for this
`inter partes review other than those specifically identified above; and
`
`Ex. 1012 / Page 19 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 19
`
`
`
`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.
`
`For PETITIONER:
`Allan M. Soobert
`Naveen Modi
`PAUL HASTINGS LLP
`Samsung-PUMA-IPR@paulhastings.com
`
`
`For PATENT OWNER:
`
`Masood Anjom
`Alisa Lipski
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`manjom@azalaw.com
`alipski@azalaw.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`Ex. 1012 / Page 20 of 20
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1012, p. 20
`
`
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