`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`SONY CORPORATION
`Petitioners,
`
`v.
`
`AVAGO TECHNOLOGIES GENERAL IP (SINGAPORE) PTE. LTD.,
`Patent Owner.
`_______________
`
`Inter Partes Review No. IPR2017-00520
`
`U.S. Patent No. 5,870,087
`_____________________________________________________________
`
`PATENT OWNER AVAGO TECHNOLOGIES GENERAL IP
`(SINGAPORE) PTE. LTD.'S PRELIMINARY RESPONSE UNDER
`37 C.F.R. § 42.107 TO PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 5,870,087
`
`
`
`

`

`IPR2017-00520
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`
`V.
`
`INTRODUCTION ........................................................................................... 1
`BACKGROUND ............................................................................................. 3
`A.
`Procedural History ................................................................................. 3
`B.
`The '087 Patent ...................................................................................... 4
`1.
`The Invention .............................................................................. 4
`2.
`Prosecution History ..................................................................... 7
`Petitioners' Cited References ................................................................. 7
`C.
`III. CLAIM CONSTRUCTION ............................................................................ 8
`A.
`Legal Standard ....................................................................................... 8
`IV. LEGAL STANDARDS ................................................................................... 9
`Inter Partes Review............................................................................... 9
`A.
`B.
`Redundancy ......................................................................................... 10
`C.
`Anticipation ......................................................................................... 11
`D. Obviousness ......................................................................................... 12
`PETITIONERS' ALLEGATIONS FAIL FOR LACK OF SUPPORT ......... 15
`A.
`The Petition Raises the Same or Substantially the Same Prior
`Art and/or Arguments as Those Previously Presented to the
`Board in a Prior Related Inter Partes Review Proceeding ................. 15
`1.
`Grounds 1 and 3 ........................................................................ 15
`2.
`Ground 2 ................................................................................... 17
`3.
`Grounds 4 through 6 ................................................................. 18
`4.
`Petitioners Failed to Join IPR 2016-00646 ............................... 20
`The Petition Does Not Properly Define Applicable Legal
`Standards for Anticipation and/or Obviousness .................................. 21
`Ground 1: Fujii Does Not Teach or Suggest Each and Every
`Limitation of Claims 1, 7, 10, 11, and 16 of the '087 Patent .............. 22
`
`B.
`
`C.
`
`ii
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`IPR2017-00520
`
`1.
`
`2.
`
`3.
`
`E.
`
`Fujii fails to teach at least that the transport logic is
`operable to access the memory to retrieve data ........................ 22
`Fujii fails to teach at least that the transport logic is
`operable to access the memory to store and retrieve
`data during demultiplexing operations ..................................... 30
`Petitioners' argument relies upon claims construed
`under an improper standard ...................................................... 36
`D. Ground 2: Claims 1-3, 7, 10-13, and 16-18 of the '087 Patent
`Are Not Unpatentable Under 35 U.S.C. § 103(a) Over Fujii
`In View of Bheda ................................................................................ 42
`Ground 3: Dependent Claim 5 of the '087 Patent Is Not
`Unpatentable Under 35 U.S.C. § 103(a) Over Fujii In View
`of Lam ................................................................................................. 44
`Ground 4: Claims 1, 7, 10, 11, and 16 of the '087 Patent Are
`Not Unpatentable Under 35 U.S.C. § 103(a) Over Maturi In
`View of Yao ........................................................................................ 44
`1.
`The combination of Maturi and Yao fails to teach at
`least that the system controller is operable to access
`the memory to retrieve code during system control
`functions, or that the memory stores code ................................ 45
`The combination of Maturi and Yao fails to teach at
`least that the transport logic, which demultiplexes one
`or more multimedia data streams, accesses the memory
`to retrieve data during demultiplexing operations .................... 54
`The combination of Maturi and Yao fails to teach at
`least a single memory for use by transport, decode and
`system controller functions ....................................................... 58
`G. Ground 5: Claims 1-3, 7, 10-13, and 16-18 of the '087 Patent
`Are Not Unpatentable Under 35 U.S.C. § 103(a) Over Maturi
`In View of Yao and Further In View of Bheda ................................... 62
`H. Ground 6: Dependent Claim 5 of the '087 Patent Is Not
`Unpatentable Under 35 U.S.C. § 103(a) Over Maturi In View
`of Yao and Further In View of Lam .................................................... 63
`VI. CONCLUSION .............................................................................................. 64
`VII. CERTIFICATION PURSUANT TO 37 C.F.R. § 42.24(D) ......................... 65
`
`F.
`
`2.
`
`3.
`
`iii
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`IPR2017-00520
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`LIST OF EXHIBITS
`
`1001
`
`U.S. Patent No. 5,870,087
`
`1002
`
`File History of U.S. Patent No. 5,870,087
`
`1003
`
`Declaration of Dr. Chandrajit Bajaj
`
`1004
`
`U.S. Patent No. 5,898,695 to Fujii et al. ("Fujii")
`
`1005
`
`U.S. Patent No. 6,002,441 to Bheda et al. ("Bheda")
`
`1006
`
`U.S. Patent No. 5,960,464 to Lam ("Lam")
`
`1007
`
`U.S. Patent No. 5,559,999 to Maturi et al. ("Maturi")
`
`1008
`
`"Unified Memory Architecture Cuts PC Cost" by Yong Yao ("Yao")
`published on June 19, 1995 in Volume 9, Issue No. 8 of
`Microprocessor Report
`
`1009
`
`Business Wire, VESA Announces Release of Unified Memory
`Architecture Standard (March 8, 1996)
`
`1010
`
`H.262 Standard
`
`1011
`
`"Fast computer memories" is an article by Ray Ng ("Ng") published
`in October 1992 in IEEE Spectrum
`
`
`
`iv
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`IPR2017-00520
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`Patent Owner Avago Technologies General IP (Singapore) Pte. Ltd.
`
`("Avago" or "Patent Owner") 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 January 20, 2017 mailing date of the Notice of Filing Date
`
`Accorded to Petition and Time for Filing Patent Owner Preliminary Response
`
`(Paper 5).
`
`The Patent Trial and Appeal Board (the "Board") should decline to institute
`
`inter partes review in this matter because none of the references or combinations
`
`of references relied upon by Petitioners establish a reasonable likelihood that
`
`Petitioners will prevail 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. IPR2017-00520 (the
`
`"Petition") filed by Sony Corporation ("Petitioners") challenges the validity of
`
`Claims 1-3, 5, 7, 10-13, and 16-18 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 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 . . . ." 35 U.S.C. § 314(a). The Petition fails to
`
`1
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`IPR2017-00520
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`establish any ground on which there is a reasonable likelihood of any challenged
`
`claim being found invalid.
`
`First, each and every ground raised by the Petition raises the same or
`
`substantially the same prior art and/or arguments as previously presented to the
`
`Board and is therefore wholly redundant. The Board should exercise its discretion,
`
`under 35 U.S.C. § 325(d), to deny institution of review on this basis.
`
`Second, the Petition does not properly define and apply the applicable legal
`
`standards for claim construction, anticipation, or obviousness as required by 37
`
`C.F.R. § 42.22(a). As discussed below, the Petition fails to identify the proper
`
`claim construction standard to be applied and implicitly relies upon the wrong
`
`claim construction standard; only by relying on this incorrect standard do the
`
`Petitioners even argue that the challenged claims are invalid. The Petition also
`
`fails to identify the proper legal standards for anticipation and obviousness, and
`
`thus is procedurally deficient.
`
`Finally, the anticipation and obviousness rejections proposed in the Petition
`
`fail 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 that any challenged
`
`claim is either anticipated or obvious.
`
`2
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`IPR2017-00520
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`II. BACKGROUND
`
`A.
`
`Procedural History
`
`Avago filed two lawsuits against ASUSTeK Computer Inc., in which the
`
`'087 Patent and several other patents are at issue: Avago Technologies General IP
`
`(Singapore) PTE Ltd. v. ASUSTeK Computer, Inc., No. 15-cv-4525 (N.D. Cal.
`
`2015) and Avago Technologies General IP (Singapore) PTE Ltd. v. ASUSTeK
`
`Computer, Inc., No. 16-cv-451 (N.D. Cal. 2016) (collectively, the "Related
`
`Lawsuits"). ASUSTeK Computer Inc. petitioned the Board to institute inter partes
`
`review of the '087 Patent on February 22, 2016, in IPR 2016-00646 (hereinafter
`
`also referred to as "the '646 IPR"). On June 6, 2016, Avago also filed a lawsuit
`
`against Petitioners for infringement of the '087 Patent and nine other patents owned
`
`by Avago. See Broadcom Corp. et al. v. Sony Corp. et al., No. 16-cv-1052 (C.D.
`
`Cal. 2016) (the "Lawsuit") [ECF 52]. In the '646 IPR, the Board instituted, on
`
`August 22, 2016, review of four of the original six grounds in the '646 IPR
`
`Petition. Two of the instituted grounds in the '646 IPR overlap with the grounds in
`
`the subject Petition as discussed in detail below. The '087 Patent expired on or
`
`about November 13, 2016. Petitioners filed the subject Petition on December 21,
`
`2016, challenging Claims 1-3, 5, 7, 10-13, and 16-18 of the '087 Patent. At least
`
`Claim 1 has been asserted against Petitioners in the Lawsuit.
`
`3
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`IPR2017-00520
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`B.
`
`The '087 Patent
`
`1.
`
`The Invention
`
`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
`
`structures, functions, and methodologies for decoding an encoded multimedia data
`
`stream. Specifically, the '087 Patent describes novel video decoder systems and
`
`methods for performing video decoding that efficiently utilize memory. See id.,
`
`Abs. 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 video decoder, a system controller that controls operations within
`
`the video decoder system, and memory. See id. at 4:65-5:28. The video decoder
`
`systems and methods relate to decoding video encoded by codecs developed by the
`
`Moving Pictures Experts Group ("MPEG"); in particular the techniques disclosed
`
`in the '087 Patent improve MPEG video 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."
`
`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,
`
`4
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`IPR2017-00520
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`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)
`
`that operate as a single unit.
`
`
`
`Exhibit 1001 at 4.
`
`In addition, Fig. 4 of the '087 Patent, which is reproduced below, depicts
`
`frame store memory 212. See id. at 5. The depiction of the memory 212 is
`
`consistent with a memory having more than one memory chip or bank, operating
`
`as a single unit.
`
`5
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`

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`IPR2017-00520
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`
`
`Exhibit 1001 at 5.
`
`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.
`
`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. See 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
`
`limitations prevented the memories from being combined. See id. at 4:33-35.
`
`These additional memories added to the overall cost of the system. See 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
`
`6
`
`

`

`well as simplifying the video decoder design and reducing overall cost. See id. at
`
`IPR2017-00520
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`17:2-6.
`
`2.
`
`Prosecution History
`
`The application for the '087 Patent was filed November 13, 1996. As filed,
`
`the application included twenty claims, including Independent Claims 1, 10, and
`
`16. Exhibit 1002 at 67-71. An Office Action mailed May 11, 1998 allowed
`
`Claims 1-11 and 13-20 and objected to Claim 12 due to an antecedent basis issue.
`
`See id. at 113-114. In response to this rejection, the applicant amended Claim 12
`
`to depend from Claim 11, and amended Claims 1, 10, and 16 to correct
`
`typographical errors. See id. at 118-121. All claims, thus amended, were then
`
`allowed in a Notice of Allowance mailed September 2, 1998. Id. at 122.
`
`C.
`
`Petitioners' Cited References
`
`Petitioners rely on the following five references as alleged prior art:
`
`• U.S. Patent No. 5,898,695 to Fujii et al. ("Fujii")
`
`(Exhibit 1004)
`
`• U.S. Patent No. 6,002,441 to Bheda et al. ("Bheda")
`
`(Exhibit 1005)
`
`• U.S. Patent No. 5,960,464
`
`to Lam
`
`("Lam")
`
`(Exhibit 1006)
`
`7
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`

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`IPR2017-00520
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`• U.S. Patent No. 5,559,999 to Maturi et al. ("Maturi")
`
`(Exhibit 1007)
`
`• "Unified Memory Architecture Cuts PC Cost," Microprocessor
`
`Report, Vol. 9, No. 8, June 19, 1995, by Yong Yao ("Yao")
`
`(Exhibit 1008)
`
`For at least the reasons explained below, Petitioners have failed to show that any of
`
`the above-listed references, taken either alone or in combination, render
`
`unpatentable any of the challenged claims of the '087 Patent.
`
`III. CLAIM CONSTRUCTION
`
`A. Legal Standard
`
`In an inter partes review instituted before the patent has expired, the Board
`
`construes the claims using the Broadest Reasonable Interpretation ("BRI")
`
`standard. In re CSB-System Int'l, Inc., 832 F.3d 1335, 1340-1341 (Fed. Cir. 2016).
`
`However, in this case, because the '087 Patent has expired, the Board must apply
`
`the "plain meaning" standard of Phillips vs. AWH Corp., 415 F.3d 1303, 1312-13
`
`(Fed. Cir. 2005), cert. denied, 546 U.S. 1170 (2006). See CSB-System Int'l, 832
`
`F.3d at 1341. The Phillips standard emphasizes considering the plain meaning of
`
`the claim terms themselves in light of the intrinsic record, rather than interpreting
`
`the claims more broadly, as the BRI standard requires. See id. at 1340. More
`
`specifically, under the Phillips standard, claim terms are given their ordinary and
`
`8
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`

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`IPR2017-00520
`
`customary meanings, as understood by a person of ordinary skill in the art, viewing
`
`the claim terms in the context of the entire patent, including the claims, the
`
`specification, and the prosecution history of record. Phillips, 415 F.3d at 1312-13.
`
`When the claim terms at issue do not have a particular meaning in the relevant
`
`field of art, claim construction involves little more than the application of the
`
`widely accepted meaning of commonly understood words. See id. at 1314. "In
`
`such circumstances, general purpose dictionaries may be helpful." Id.
`
`The terms in the challenged claims of the '087 Patent each has a plain and
`
`customary meaning and need not be construed.
`
`IV. LEGAL STANDARDS
`
`A.
`
`Inter Partes Review
`
`To institute an inter partes review, the Board must find a "reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 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.
`
`9
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`

`

`IPR2017-00520
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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, 42.22, 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. Redundancy
`
`Under 35 U.S.C. § 325(d), the Board may exercise its discretion to decide
`
`whether or not to institute trial when the Petition for inter partes review raises the
`
`same or substantially the same prior art or arguments as those previously presented
`
`to the Board in a prior related inter partes review proceeding. 35 U.S.C. § 325(d)
`
`("In determining whether to institute or order a proceeding under this chapter,
`
`chapter 30, or chapter 31, the Director may take into account whether, and reject
`
`the petition or request because, the same or substantially the same prior art or
`
`arguments previously were presented to the Office.").
`
`For example, if a petition fails to explain why the asserted grounds are either
`
`better or "are not understood reasonably as being based on 'substantially the same
`
`prior art or arguments' that were presented in [a prior inter partes review of the
`
`same patent]," the Board has exercised its discretion and denied institution of the
`
`subsequent petition to "secure a just, speedy, and inexpensive resolution of the
`
`10
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`

`IPR2017-00520
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`proceedings." US Endodontics, LLC v. Gold Standard Instruments, LLC, IPR
`
`2015-01476, Paper 13 at 9-11 (PTAB October 26, 2015). The Board will exercise
`
`such discretion regardless of whether Petitioner in the subsequent is affiliated with
`
`any Petitioners in prior related inter partes review proceedings. UBE MAXELL
`
`Co., Ltd. v. Celgard, LLC, IPR 2015-01511, Paper 10 at 9-11 and 14-16 (PTAB
`
`January 7, 2016).
`
`Denial of a redundant petition is especially appropriate when the prior art
`
`relied on by Petitioners does not "differ in any significant, material respect" from
`
`prior art asserted in the prior related proceedings and/or if Petitioners' "arguments
`
`are not of a different character than those previously presented [or if such
`
`arguments] do [not] advance a different theory of the prior art or how a particular
`
`element of the claims is taught or suggested." Id.
`
`As discussed in greater detail below, the Petition includes proposed grounds
`
`that raise the same or substantially the same prior art or arguments as previously
`
`presented to the Board in IPR 2016-00646, and for at least this reason, the Petition
`
`should be denied as being unnecessarily duplicative and wasteful of the Board's
`
`resources.
`
`C. 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
`
`11
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`IPR2017-00520
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`the claims challenged." 35 U.S.C. § 314(a). "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 Corp. v. ContentGuard Holdings Inc., 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 2012-00026, Paper 73 at 33 (PTAB
`
`Feb. 19, 2014) (internal citations omitted).
`
`D. Obviousness
`
`The Petition also fails to present any obviousness arguments sufficient to
`
`create a "reasonable likelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged." 35 U.S.C. § 314(a). In addition to novelty, a
`
`valid claim must 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). In determining whether a claim is obvious, the
`
`Board considers (1) the level of ordinary skill in the pertinent art; (2) the scope and
`
`12
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`IPR2017-00520
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`content of the prior art; (3) the differences between the claimed invention and the
`
`prior art; and (4) objective secondary considerations of non-obviousness, if any.
`
`See, e.g., SIBIA Neurosciences, Inc. 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).
`
`Nonetheless, "[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, 401 (2007). Rather, to establish
`
`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
`
`combine the teachings in the references together to arrive at the claimed invention.
`
`See In re Lee, 277 F.3d 1338, 1343 (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.
`
`13
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`IPR2017-00520
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`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
`
`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 numerous 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
`
`choices is likely to be successful"); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
`
`1165 (Fed. Cir. 2006).
`
`Hindsight is forbidden in an obviousness analysis. See In re Dembiczak, 175
`
`F.3d 994, 998-999 (Fed. Cir. 1999), abrogated on other grounds; 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 impermissible hindsight analysis
`
`14
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`IPR2017-00520
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`is that the analysis "use[s] the invention to define the problem that the invention
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`solves." Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1376-78 (Fed. Cir. 2012)
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`(reversing a district court that conducted its analysis using hindsight because the
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`district court's obviousness finding was improperly based on art directed to the
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`solution as opposed to art directed to the problem).
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`V.
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`PETITIONERS' ALLEGATIONS FAIL FOR LACK OF SUPPORT
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`A. The Petition Raises the Same or Substantially the Same Prior Art
`and/or Arguments as Those Previously Presented to the Board in
`a Prior Related Inter Partes Review Proceeding
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`Petitioners assert, without explanation,
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`that "Petitioners' proposed
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`grounds 1-6 are also not redundant with the instituted grounds in IPR 2016-
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`00646." Petition at 6. This is plainly untrue: Grounds 1-6 are redundant for at
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`least the reasons discussed below.
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`1. Grounds 1 and 3
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`Proposed Grounds 1 and 3 are redundant because they are based almost
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`entirely on the same prior art and arguments as counts 2 and 3 of IPR 2016-00646.
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`Specifically, Grounds 1 and 3 are based on the same reference or combination of
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`references (namely, Fujii and the combination of Fujii and Lam, respectively) as
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`counts 2 and 3 of IPR 2016-00646. In fact, Petitioners rely heavily on the Board's
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`discussion in IPR 2016-00646 in presenting arguments for Grounds 1 and 3. See,
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`e.g., Petition at 24-25, 27, 37-38.
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`IPR2017-00520
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`As discussed supra Section IV.B, the Board has exercised its discretion to
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`deny review when the Petition for inter partes review raises the same or
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`substantially the same prior art or arguments as those previously presented to the
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`Board in a prior related inter partes review proceeding. See 35 U.S.C. § 325(d);
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`see also US Endodontics, LLC v. Gold Standard Instruments, LLC, IPR 2015-
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`01476, Paper 13 at 9-11 (PTAB October 26, 2015) and UBE MAXELL Co., Ltd. v.
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`Celgard, LLC, IPR 2015-01511, Paper 10 at 9-11 and 14-16 (PTAB January 7,
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`2016). Here, not only are the grounds virtually identical, but the Petition actually
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`relies on the Board's Institution Decision as the basis for its arguments. The
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`Petition provides no persuasive reason to justify re-litigating the same issues in this
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`IPR.
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`With regard to Ground 1, Petitioners argue that they included Ground 1
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`because "Fujii forms the basis of Petitioners' challenge to dependent Claims 2-3,
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`12-13, and 17-18 in ground 2, requiring consideration of Fujii's disclosure of
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`independent Claims 1, 10, and 16 and negating any efficiencies in a redundancy
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`denial." Petition at 6. This argument, however, ignores the fact that Ground 1
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`raises the same prior art and/or arguments as are already before the Board in IPR
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`2016-00646.
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`With regard to Ground 3, Petitioners fail to provide any reason as to why
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`Petitioners believe the ground based on Fujii and Lam should not be deemed
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`IPR2017-00520
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`redundant. Indeed, Petitioners' only justification for including this repeated ground
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`is that "Petitioner has no involvement in [IPR 2016-00646] and is not a part of the
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`related district court litigation." Id. This may be true, but the Petition cites no
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`authority for the proposition that the difference in parties avoids the issue of
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`redundancy. Indeed, the Board has refused institution in just such a case. See,
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`e.g., UBE MAXELL Co., Ltd. v. Celgard, LLC, IPR 2015-01511, Paper 10 at 2-4,
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`14, 16 (PTAB January 7, 2016).
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`Accordingly, for at least the reasons above, at least Grounds 1 and 3 should
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`be deemed redundant as raising the same or substantially the same prior art and/or
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`arguments as previously presented to the Board in IPR 2016-00646.
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`2. Ground 2
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`Proposed Ground 2 is also redundant. In Ground 2, Petitioners combine
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`Fujji with Bheda to disclose "a memory controller coupled to the memory."
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`Petition at 30-35. While it is true that the Board has not considered Bheda in the
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`context of the '087 Patent, Petitioners admit that Bheda adds no material disclosure
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`to that of Fujii, arguing, "Fujii inherently discloses a memory controller." See id.
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`at 31-35 (citing Exhibit 1003 ¶ 90). Accordingly, by Petitioners' own admission,
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`Bheda is substantially the same prior art as Fujii, at least with respect to how
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`Petitioners are using Bheda in their proposed grounds. As a result, any arguments
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`related to the combination of Fujii and Bheda would be substantially the same
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`arguments as previously presented to the Board in the form of count 2 of
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`IPR2017-00520
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`IPR 2016-00646.
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`3. Grounds 4 through 6
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`With regard to proposed Grounds 4-6, Petitioners replace Fujii with Maturi
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`in view of Yao in an almost interchangeable manner. Compare Petition at 13-39
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`with id. at 39-60. For example, as shown in the section headings in Sections VI.A-
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`VI.C compared with those of Sections VI.D-VI.F, the combination of Maturi and
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`Yao merely replaces the Fujii reference. See id. at 13-22, 28-37, 39, 41-49, 51-59.
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`In Grounds 5 and 6, Bheda and Lam are respectively combined with Maturi-Yao in
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`the same manner and for the same disclosures as Bheda and Lam are combined
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`with Fujii in Grounds 2 and 3, respectively. Compare id. at 30-39 with id. at
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`54-60. Indeed, Petitioners neither provide any reason for why they claim Maturi in
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`view of Yao is not substantially the same prior art as Fujii, nor provide any
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`explanation as to how proposed Grounds 4-6 are materially different from the
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`grounds already at issue in IPR 2016-00646.
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`In fact, the Petition inexplicably relies on Fujii, Maturi, and Yao to disclose
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`the same thing: a main memory comprising a packet landing buffer or a frame
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`buffer. See id. at 9-13; see also Exhibit 1004 at 12, Exhibit 1007 at 2, and Exhibit
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`1008 at 1. Yao discloses that "[w]ith the unified memory architecture, a PC
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`combines its main memory and its frame buffer in a single physical DRAM array,
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`IPR2017-00520
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`eliminating the traditional stand-alone frame buffer . . . ." Exhibit 1008 at 1.
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`Likewise, Maturi discloses a frame buffer combined in a DRAM, as shown, e.g., in
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`Fig. 3 of Maturi (reproduced and annotated below). See also Exhibit 1007 at 5:45-
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`49 ("The DRAM 20 is preferably a single continuous block of memory, but is
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`internally partitioned into a video header buffer 20a, . . . and a frame memory
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`buffer 20e.").
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`DRAM
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`Exhibit 1007 at 2 (annotated).
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`
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`Thus, neither Yao nor Maturi, nor the combination of the two, provides any
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`disclosure additional to that of Fujii, and that combination therefore is redundant
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`over Fujii, which is the basis for Grounds 1 and 3 of the Petition, and Counts 2 and
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`3 of IPR 2016-00646. As such, Grounds 4-6 are redundant, not only of
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`Grounds 1-3, but also of Counts 2 and 3 of IPR 2016-00646. Further, Yao, whose
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`unified memory architecture combines a main memory and a frame buffer in a
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`IPR2017-00520
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`single DRAM, is redundant as to Maturi, as Maturi already discloses the frame
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`memory buffer 20e in DRAM 20.
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`For at least the reasons above, the Board should deny institution of inter
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`partes review because the Petition presents the same or substantially the same prior
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`art and/or the same or substantially the same arguments as previously presented to
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`the Board in IPR 2016-00646.
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`4.
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`Petitioners Failed to Join IPR 2016-00646
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`To the extent tha