Trials@uspto.gov
`571-272-7822
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` Paper 62
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` Entered: April 14, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`ATI TECHNOLOGIES ULC,
`Patent Owner.
`____________
`
`Case IPR2015-00325
`Patent 7,742,053 B2
`____________
`
`
`
`Before JONI Y. CHANG, BRIAN J. McNAMARA, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`LG Ex. 1006, pg 1
`
`LG Ex. 1006
`LG v. ATI
`IPR2017-01225
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`
`571-272-7822
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` Paper 62
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` Entered: April 14, 2016
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`ATI TECHNOLOGIES ULC,
`Patent Owner.
`____________
`
`Case IPR2015-00325
`Patent 7,742,053 B2
`____________
`
`
`
`Before JONI Y. CHANG, BRIAN J. McNAMARA, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`LG Ex. 1006, pg 1
`
`LG Ex. 1006
`LG v. ATI
`IPR2017-01225
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`IPR2015-00325
`Patent 7,742,053 B2
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`INTRODUCTION
`I.
`LG Electronics, Inc. (“LG”) filed a Petition requesting an inter partes
`review of claims 1, 2, and 5–7 (“the challenged claims”) of U.S. Patent No.
`7,742,053 B2 (Ex. 1001, “the ’053 patent”). Paper 2 (“Pet.”). Patent
`Owner, ATI Technologies ULC (“ATI”), filed a Preliminary Response.
`Paper 12 (“Prelim. Resp.”). Upon consideration of the Petition and
`Preliminary Response, we instituted this trial as to claims 1, 2, and 5–7 of
`the ’053 patent on June 15, 2015. Paper 13 (“Dec.”).
`Subsequent to institution, ATI filed a Patent Owner Response
`(Papers 21, 22, “PO Resp.”); LG filed a Reply to the Patent Owner Response
`(Papers 33, 34, “Reply”); and ATI filed a sur-reply to LG’s Reply with
`respect to the antedating issue (Papers 39, 40).1 An oral hearing was held on
`February 10, 2016.2
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons discussed
`herein, and in view of the record in this trial, we determine that LG has
`shown by a preponderance of the evidence that claims 1, 2, and 5–7 of the
`’053 patent are unpatentable.
`
`
`1 The parties filed a confidential version and a redacted version of their
`papers. The Decisions denying the parties’ Motions to Seal these documents
`and supporting evidence are entered concurrently with this Final Written
`Decision. Papers 63, 64. The citations to these papers are to the unredacted
`versions.
`2 A transcript of the oral hearing is entered in the record as Paper 61 (“Tr.”).
`2
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`LG Ex. 1006, pg 2
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`IPR2015-00325
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`A. Related Matter
`The ’053 patent is asserted in Advanced Micro Devices, Inc. v. LG
`Electronics, Inc., No. 3:14-cv-01012-SI (N.D. Cal.). Pet. 1.
`
`B. The ’053 Patent
`The ’053 patent discloses a computer system for multithreaded
`graphics processing. Ex. 1001, 2:36–41. The system includes a memory
`device for storing command threads and an arbiter for providing a command
`thread to a command processing engine, based on a priority scheme. Id. at
`2:48–52, 3:29–35; see Paper 13, 2–3.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1 and 5 are independent. Claim 2
`depends from claim 1, and claims 6 and 7 depend directly from claim 5.
`Claim 5, reproduced below, is illustrative of the challenged claims.
`5. A graphics processing system comprising:
`at least one memory device comprising a first portion operative
`to store a plurality of pixel command threads and a second
`portion operative to store a plurality of vertex command threads;
`an arbiter, coupled to the at least one memory device, operable
`to select a command thread from either of the plurality of pixel
`command threads and the plurality of vertex command threads;
`and
`a plurality of command processing engines, coupled to the
`arbiter, each operable to receive and process the command
`thread.
`Ex. 1001, 8:4–15 (emphases added).
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`3
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`LG Ex. 1006, pg 3
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`D. Prior Art Relied Upon
`LG relies upon the following prior art references:
`(Ex. 1004)
`Lindholm
` US 7,015,913 B1 Mar. 21, 2006
`(Ex. 1005)
`Stuttard
` US 7,363,472 B2
`Apr. 22, 2008
`(Ex. 1006)
`Moreton
` US 7,233,335 B2
`June 19, 2007
`(Ex. 1007)
`Whittaker
` US 5,968,167
`
`Oct. 19, 1999
`(Ex. 1008)
`Kimura
` US 6,105,127
`
`Aug. 15, 2000
`Admitted Prior Art – Figure 1, and the Background of the Invention
`Section of the ’053 patent. Ex. 1001, 1:22–2:6, Fig. 1.
`
`E. Instituted Grounds of Unpatentability
`We instituted this trial based on the following grounds (Dec. 36–37):
`
`Claims
`5–7
`1 and 2
`1, 2, and 5–7
`1, 2, and 5–7
`
`References
`
`Basis
`§ 102(e) Moreton
`§ 103(a) Moreton and Whittaker
`§ 103(a) Lindholm in view of the Admitted Prior Art
`§ 103(a) Stuttard in view of the Admitted Prior Art
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
`reasonable interpretation standard, claim terms are given their ordinary and
`customary meaning as would be understood by one of ordinary skill in the
`4
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`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007).
`
`“command thread”
`
`Each of independent claims 1 and 5 recites “at least one memory
`device comprising a first portion operative to store a plurality of pixel
`command threads and a second portion operative to store a plurality of
`vertex command threads.” Ex. 1001, 7:11–15, 8:5–8 (emphases added).
`Before institution, ATI urged us to construe “command thread” as “a
`sequence of commands.” Prelim. Resp. 12–13. ATI also argued that a
`command thread does not encompass an instruction. Id. at 12.
`In the Decision on Institution (Dec. 6–7), we noted that the word
`“command” is used in the Specification of the ’053 patent consistent with its
`plain and ordinary meaning, as including an instruction. See, e.g., Ex. 1001,
`4:21–27; MICROSOFT COMPUTER DICTIONARY 111 (5th ed. 2002) (Ex. 3001)
`(defining “command” as an “instruction to a computer program that, when
`issued by the user, causes an action to be carried out”). Notably, the
`Specification discloses that “[u]pon the execution of the associated
`command of the command thread, the thread is thereupon returned to the
`station 302 or 304 at the same storage location with its status updated, once
`all possible sequential instructions have been executed.” Ex. 1001, 4:21–27
`(emphasis added). Dr. Nader Bagherzadeh testifies that, in the context of
`computer multithreading, a stream of instructions is called a thread.
`Ex. 1003 ¶¶ 23–24. This is consistent with the usage of the word “thread” in
`
`5
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`LG Ex. 1006, pg 5
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`the prior art of record. See, e.g., Ex. 1005, 5:19–30. We further note that
`the plain meaning of “thread,” in the context of computer programming,
`means a process that is part of a larger process or program. MICROSOFT
`COMPUTER DICTIONARY 518 (5th ed. 2002) (Ex. 3001). We, therefore,
`disagreed with ATI, in our Decision on Institution, that a command thread
`does not encompass an instruction, as it would be inconsistent with the
`term’s plain and ordinary meaning. Rather—for purposes of the Decision on
`Institution—in light of the Specification, we construed the claim term
`“command thread” to encompass a stream of instructions or a process that is
`part of a larger process or program. Dec. 6–7.
`After institution, ATI does not challenge our claim construction. PO
`Resp. 30. In fact, ATI’s expert, Dr. Andrew Wolfe, testifies that one of
`ordinary skill in the art would have understood that the term “command
`thread” requires instructions. Ex. 2151 ¶¶ 57–58, 118. As such, we discern
`no reason to change our claim construction of “command thread” for this
`Final Written Decision.
`
`“arbiter”
`
`Each of independent claims 1 and 5 recites “an arbiter, coupled to the
`at least one memory device, operable to select a command thread from
`either of the plurality of pixel command threads and the plurality of vertex
`command threads.” Ex. 1001, 7:16–19, 8:9–12.
`In its Petition, LG proposes to construe the claim term “arbiter” as
`“any implementation of hardware and/or software that receives and provides
`
`6
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`a thread.” Pet. 9. As support, LG cites to the Specification, which explains
`that an “arbiter may be any implementation of hardware, software or
`combination thereof such that the arbiter receives the command thread and
`thereupon provides the command thread to a command processing engine.”
`Id. (citing Ex. 1001, 2:48–52).
`Before institution, ATI argued that LG’s proposed construction
`“ignores arbitration,” and proposed that the claim term “arbiter” should be
`construed as “a component for picking out a command thread among
`available pixel and vertex command threads.” Prelim. Resp. 10–11. ATI’s
`proposed construction, however, improperly would import other claim
`language—“picking out a command thread among available pixel and vertex
`command threads”—into the construction of the claim term “arbiter.” Such
`a construction also would render other claim language superfluous—e.g.,
`“select a command thread from either of the plurality of pixel command
`threads and the plurality of vertex command threads,” recited in claim 5.
`Moreover, the Specification explains that “arbiter 204 retrieves a command
`thread via connection 214 and provides the retrieved command thread to the
`command processing engine.” Ex. 1001, 3:8–10 (emphasis added). As
`such, we declined to adopt ATI’s proposed construction. Rather—for
`purposes of the Decision on Institution—in light of the Specification, we
`construed the claim term “arbiter” as any computer hardware, software, or
`combination thereof that receives and provides a command thread. Dec. 7–
`8. After institution, neither party proffers a different construction for this
`term. See PO Resp.; Reply. Upon review of this record, we discern no
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`7
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`reason to change our claim construction of “arbiter” for this Final Written
`Decision.
`
`“command processing engine”
`
`Claim 5 recites “a plurality of command processing engines, coupled
`to the arbiter, each operable to receive and process the command thread.”
`Ex. 1001, 8:13–15 (emphasis added). Claims 6 and 7 directly depend from
`claim 5, and further recite “wherein the plurality of command processing
`engines comprises at least one arithmetic logic unit” and “at least one
`texture processing engine,” respectively. Id. at 8:16–21 (emphases added).
`LG proposes to construe “command processing engine” as “any
`implementation of hardware and/or software that processes commands.”
`Pet. 9. In its Patent Owner Response, ATI asserts that an ordinarily skilled
`artisan would have understood that the “command processing engine”
`limitation recited in claim 5 requires each command processing engine to be
`able to process both pixel and vertex command threads. PO Resp. 31;
`Ex. 2151 ¶ 125.
`LG disagrees, arguing that the disputed limitation recited in claim 5
`merely requires that the command processing engines are capable of
`processing either a pixel command thread or a vertex command thread
`because claim 5 recites “an arbiter . . . operable to select a command thread”
`and “a plurality of command processing engines . . . each operable to receive
`and process the command thread.” Reply 14 (emphases added by LG).
`
`8
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`Upon review of the claim language and Specification, we agree with
`LG. Nothing in the claim language requires a single command processing
`engine to be able to process both pixel and vertex command threads.
`We note that ATI’s proposed claim construction essentially requires
`each of the plurality of command processing engines to have the capability
`to process all of the command threads selected by the arbiter—excluding
`type-specific processing engines. The Specification of the ’053 patent,
`however, does not support such a narrow construction. Notably, the
`Specification discloses that the “command processing engine may be any
`suitable engine as recognized by one having ordinary skill in the art for
`processing commands, such as a texture engine, an arithmetic logic unit, or
`any other suitable processing engine.” Ex. 1001, 2:59–62 (emphasis added).
`Additionally, claims 5–7 are directed to the preferred embodiment illustrated
`in Figure 4 of the ’053 patent, which is reproduced below.
`
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`9
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`As shown in Figure 4, processing system 300 includes first
`reservation station 302, which contains pixel command threads; second
`reservation station 304, which contains vertex command threads; arbiter
`306; arithmetic logic unit 308; and texture engine 310. Id. at 3:62–4:33.
`The Specification explains that arbiter 306 retrieves pixel command thread
`324 and vertex command thread 326 and then provides thread 328, which
`may be either pixel command thread 324 or vertex command thread 326, to
`texture engine 310. Id. at 4:28–33. Arbiter 306 further provides the other
`thread 330 to arithmetic logic unit (“ALU”) 308. Id. Upon execution of the
`command, ALU 308 and text engine 310 return command threads 332 and
`334 to the appropriate reservation station 302 or 304. Id. at 4:34–41. As the
`Specification explains, multiple command operations may be performed by
`ALU 308 or texture engine 310, but, in order to switch a thread from ALU
`308 to texture engine 310, that thread must be returned back to the
`appropriate reservation station 302 or 304 and re-retrieved by arbiter 306
`and thereupon provided to the other unit 308 or engine 310, respectively. Id.
`at 4:42–48.
`Significantly, the Specification indicates that a thread is provided to a
`specific type of command processing engine (e.g., an ALU or texture engine)
`based on the type of operations (e.g., an ALU or texture operation). Id. at
`3:62–4:48. ATI’s own expert, Dr. Wolfe, testifies that “vertex command can
`also involve texture operations.” Ex. 2151 ¶¶ 159, 165 (noting that “at least
`10–20% of vertex command threads involving texture operations should be
`processed by the texture fetch processor”). Dr. Wolfe also explains that
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`10
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`pixel command threads can involve ALU operations. Id. ¶¶ 161–162 (noting
`“pixel command threads involving ALU operations, which contribute to 20–
`30% of the ALU operations”). This means that about 10–20% of vertex
`command threads involving texture operations cannot be processed in the
`ALU, and 20–30% of pixel command threads involving ALU operations
`cannot be processed in the texture engine. Put simply, ALU and texture
`engines are type-specific processing engines, and each unit or engine cannot
`process all of the threads selected by an arbiter.
`Construing the “command processing engines” limitation recited in
`claim 5 to exclude type-specific processing engines, as proposed by ATI,
`would be inconsistent with the Specification. Id. at 2:59–62, 3:62–4:48,
`Fig. 4. Additionally, ATI’s proposed claim construction would be
`inconsistent with claims 6 and 7, which recite “wherein the plurality of
`command processing engines comprises at least one arithmetic logic unit”
`and “at least one texture processing engine,” respectively. Id. at 8:16–21.
`More importantly, ATI’s proposed claim construction would import
`improperly an extraneous negative limitation into the claims—excluding
`type-specific processing engines. Hoganas AB v. Dresser Indus., Inc., 9
`F.3d 948, 950 (Fed. Cir. 1993) (“It is improper for a court to add
`‘extraneous’ limitations to a claim, that is, limitations added ‘wholly apart
`from any need to interpret what the patentee meant by particular words or
`phrases in the claim.’”). Such a claim construction would not be reasonable
`as it would exclude the very embodiment that provides written description
`support for the claims at issue. See Kaneka Corp. v. Xiamen Kingdomway
`
`11
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`Group Co., 790 F.3d 1298, 1304 (Fed. Cir. 2015) (“A claim construction
`that excludes a preferred embodiment is rarely, if ever, correct.”).
`For all of the reasons discussed above, we decline to adopt ATI’s
`proposed claim construction that excludes type-specific processing engines
`and that requires each command processing engine to be able to process all
`of the command threads selected by an arbiter. Rather, consistent with the
`plain meaning of the claim language, we construe the “command processing
`engine” limitation recited in claim 5 as requiring each command processing
`engine to be coupled to an arbiter and operable to receive and process a
`command thread selected by the arbiter.
`
`B. Antedating Lindholm, Moreton, and Stuttard
`LG asserts that each of the following U.S. patents qualifies as prior art
`under 35 U.S.C. § 102(e)3 against the challenged claims of the ’053 patent,
`which has an effective filing date of September 29, 2003:
`Lindholm filed June 27, 2003 (Ex. 1004, at [22]);
`Moreton filed April 21, 2003 (Ex. 1006, at [22]); and
`Stuttard filed October 9, 2001 (Ex. 1005, at [22]).
`Pet. 10. LG relies upon the U.S. filing dates of these references as the prior
`art dates under § 102(e). Id. Indeed, neither Lindholm nor Moreton claims
`the benefit of an earlier-filed U.S. application. Ex. 1004, 1; Ex. 1006, 1.
`
`3 Because the ’053 patent was filed before the enactment of the Leahy-Smith
`America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), the
`pre-AIA version of 35 U.S.C. § 102(e) applies in this trial.
`12
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`Stuttard claims under §§ 120 and 365(c), as a continuation, the benefit of
`International Application No. PCT/GB00/01332 (“the ’332 PCT
`application”), which was filed on April 7, 2000, and published by the
`International Bureau in the English language as International Patent
`Publication No. WO 00/62182 (“the ’182 international publication”) on
`October 19, 2000. Ex. 1005, at [63], 1:5–9. The international filing date,
`April 7, 2000, however, is not a U.S. filing date for prior art purposes under
`§ 102(e) because the ’332 PCT application was filed prior to November 29,
`2000, the effective date of § 102(e).4 Therefore, the effective date of
`Stuttard as prior art is its U.S. filing date, October 9, 2001. See Sun Studs,
`Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978, 983 (Fed. Cir. 1989) (“When
`patents are not in interference, the effective date of a reference United States
`Patent as prior art is its filing date in the United States, as stated in § 102(e),
`not the date of conception or actual reduction to practice of the invention
`claimed or the subject matter disclosed in the reference patent.”).
`As an initial matter, we note that the ’182 international publication
`also is a prior art reference under § 102(b) because it was published on
`October 19, 2000, which is more than one year prior to the effective filing
`date of the ’053 patent (September 29, 2003). Ex. 1005, at [63], 1:5–9;
`
`
`4 See Sections 4505, 4508 of the American Inventors Protection Act of 1999,
`Pub. L. No. 106-113, 113 Stat. 1501A-552, 565–67 (1999), as amended by
`the Intellectual Property and High Technology Technical Amendment Act of
`2002, Public Law 107-273, 116 Stat. 1158, 1902–03 (2002).
`
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`Ex. 3003; Ex. 1001, at [63]. Stuttard and the ’182 international publication
`have the same disclosure given Stuttard was issued as a patent from a
`continuation application of the ’332 PCT application that was published as
`the ’182 international publication. See Transco Prods. Inc. v. Performance
`Contracting, Inc., 38 F.3d 551, 555 (Fed. Cir. 1994) (“‘Continuation and
`‘divisional’ applications are alike in that they are both continuing
`applications based on the same disclosure as an earlier application.”).
`LG, however, did not assert the ’182 international publication in any of its
`grounds of unpatentability.
`Here, ATI seeks to disqualify Lindholm, Moreton, and Stuttard as
`prior art under § 102(e) by establishing a date of invention prior to the U.S.
`filing dates of these references. PO Resp. 15–29. Section 102(e)(2) requires
`a prior art patent to have a U.S. filing date “before the invention by the
`applicant for patent.” See Loral Fairchild Corp. v. Matsushita Elec. Indus.
`Co., Ltd., 266 F.3d 1358, 1362 (Fed. Cir. 2001). In particular, ATI alleges
`that the named inventors of the ’053 patent conceived the claimed subject
`matter of the ’053 patent no later than August 24, 2001, before the filing
`dates of Lindholm, Moreton, and Stuttard. Id. at 22–24, 27. ATI also
`contends that the named “inventors were reasonably and continuously
`diligent to reduce the claimed subject matter to practice.” Id. at 2, 24–26,
`28–29. Thus, ATI argues diligence from the date of conception until the
`constructive reduction to practice of the claimed invention on the filing date
`of the application that issued as the ’053 patent. ATI also argues that the
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`claimed invention was actually reduced to practice before the filing dates of
`Lindholm and Moreton. Id. at 15–22.
`ATI provides the following timeline:
`
`
`
`Ex. 2155, 3. An inventor “may date his patentable invention back to the
`time of its conception, if he connects the conception with its reduction to
`practice by reasonable diligence on his part, so that they are substantially
`one continuous act.” Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed.
`Cir. 1996).
`
`Constructive Reduction to Practice
`Constructive reduction to practice occurs when a patent application on
`the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n.16 (CCPA
`1978). On its face, the ’053 patent claims under § 120, as a continuation, the
`benefit of the filing date of U.S. Application 10/673,761, filed on
`September 29, 2003. Ex. 1001, at [63]. LG does not challenge that the
`effective filing date of the ’053 patent is September 29, 2003. See generally
`15
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`Reply. On this record, we, therefore, determine that ATI’s date of
`constructive reduction practice is September 29, 2003.
`
`Conception
`“Conception must be proved by corroborating evidence which shows
`that the inventor disclosed to others his completed thought expressed in such
`clear terms as to enable those skilled in the art to make the invention.”
`Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985).
`Here, ATI alleges that the named inventors conceived the claimed
`subject matter no later than August 24, 2001, while designing a graphics
`processing unit known as the R400 Graphics Processing System (“the
`R400”). PO Resp. 1–3, 7–11, 23–24. ATI relies on Version 0.4 of the R400
`Sequencer Specification (Ex. 2010) as evidence of conception. PO Resp. 11.
`As support, ATI also proffers a Declaration of Mr. Laurent Lefebvre
`(Ex. 2006), one of the named inventors of the ’053 patent, and a Declaration
`of Dr. Wolfe (Ex. 2106 ¶ 240) to explain how the R400 Sequencer
`Specification discloses every element of each challenged claim.
`LG does not dispute the sufficiency of the R400 Sequencer
`Specification for showing conception. See generally Reply. Based on the
`evidence before us, we are satisfied with the sufficiency of the documents to
`show conception, and they also serve as effective corroboration to
`Mr. Lefebvre’s testimony as to establishing conception. Exs. 2006, 2106,
`2010, 2028, 2040, 2041. On this record, we, therefore, determine that ATI
`has demonstrated by a preponderance of the evidence that the named
`inventors of the ’053 patent conceived the claimed system no later than
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`August 24, 2001, prior to the U.S. filing dates of Stuttard, Moreton, and
`Lindholm.
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`Actual Reduction to Practice
`In order to establish an actual reduction to practice, the inventor must
`establish that: (1) the inventor constructed an embodiment or performed a
`process that met all of the claim limitations; and (2) the invention would
`work for its intended purpose. Cooper v. Goldfarb, 154 F.3d 1321, 1327
`(Fed. Cir. 1998). The inventor’s testimony must be corroborated by
`independent evidence. Id. at 1330. A rule of reason applies to determine
`whether the inventor’s testimony has been corroborated. Price v. Symsek,
`988 F.2d 1187, 1194 (Fed. Cir. 1993). “The rule of reason, however, does
`not dispense with the requirement for some evidence of independent
`corroboration.” Coleman, 754 F.2d at 360. The requirement of
`“independent” corroboration requires evidence other than the inventor’s
`testimony. In re NTP, Inc. 654 F.3d 1279, 1291 (Fed. Cir. 2011).
`Here, ATI asserts that the register-transfer level (“RTL”) code
`(Exs. 2072–87) in hardware-description language for the R400 is a
`constructed embodiment of the claimed invention. PO Resp. 3, 16–22. As
`support, ATI proffers a Declaration of Dr. Wolfe (Ex. 2106) to demonstrate
`how the RTL code maps to each claim at issue, and a Declaration of
`Mr. Lefebvre (Ex. 2006) to explain why the first-triangle test shows that the
`RTL code worked for its intended purpose. PO Resp. 3.
`LG counters that ATI fails to provide sufficient evidence to establish
`that the named inventors constructed a physical embodiment because
`17
`
`LG Ex. 1006, pg 17
`
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`computer simulations that were never reduced to a physical embodiment
`cannot serve as an actual reduction to practice. Reply 2–3. LG also alleges
`that ATI has not shown that its code actually worked for its intended purpose
`because ATI’s evidence shows that the code had a number of problems. Id.
`at 5–7. LG further contends that the evidence does not show the RTL code
`passed the first-triangle test on July 1, 2002, as the RTL code has a revision
`date of August 5, 2002, which is after the alleged test. Id. at 7; Ex. 2066, 6.
`In its Sur-reply, ATI responds that a physical embodiment is not
`required to establish an actual reduction to practice. Sur-reply 2–4 (citing
`Cooper, 154 F.3d at 1328; Yorkey v. Diab, 601 F.3d 1279, 1290–91 (Fed.
`Cir. 2010)). ATI also asserts that the RTL code is an embodiment that
`discloses every claim element and maps to hardware. Id. at 3–4. According
`to ATI, its evidence shows that the first-triangle test was conducted
`successfully. Id. at 4. ATI cites to Mr. Lefebvre’s testimony (Ex. 2006
`¶ 47), and the Program Review Slides (Ex. 2062, 4; Ex. 2066, 2, 6) for
`support.
`
`Requirement of a physical embodiment
`It is well settled that “[t]here cannot be a reduction to practice of the
`invention . . . without a physical embodiment which includes all limitations
`of the claim.” UMC Elecs. Co. v. United States, 816 F.2d 647, 652 (Fed.
`Cir. 1987) (emphasis added). “It is equally well established that every
`limitation of the [claim] must exist in the embodiment and be shown to have
`performed as intended.” Newkirk v. Lulejian, 825 F.2d 1581, 1582 (Fed.
`Cir. 1987) (emphasis added).
`
`18
`
`LG Ex. 1006, pg 18
`
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`Here, based on the evidence in this trial, we are not persuaded that
`ATI has demonstrated that the claimed system was actually reduced to
`practice. In its Patent Owner Response and Sur-reply, ATI does not contend
`that it constructed a hardware device in accordance with the challenged
`claims. Nor has ATI established that an implementation based on the RTL
`code constitutes the subject matter of the challenged claims in this record.
`At best, ATI has shown that the RTL code constitutes software files in a
`hardware description language that describes the logical design and behavior
`of the system. ATI, however, has not demonstrated that the design inferred
`by the RTL code was synthesized into a set of interconnected hardware
`devices. It is well-established that an equivalent of a physical embodiment
`does not satisfy the first requirement of actual reduction to practice. Eaton
`v. Evans, 204 F.3d 1094, 1097–98 (Fed. Cir. 2000) (holding that a party
`cannot obviate the first requirement of constructing a physical embodiment
`through evidence of testing an equivalent).
`At the outset, we note that the claims at issue are apparatus claims
`directed to a graphics processing system, and not a circuit design, as ATI
`alleges (Sur-reply 4). See Ex. 1001, 7:10–8:28. As Dr. Wolfe testifies, both
`circuit design and fabrication are necessary components of constructing a
`physical integrated circuit, commonly referred to as “a chip.” Ex. 2106
`¶¶ 32–33. It is undisputed that ATI submits no evidence to show that a
`sample or prototype for the R400 was fabricated before the filing dates of
`the asserted references. PO Resp. 7–9; Sur-reply 3–4; Tr. 80:1–3. A design,
`by itself, is not a physical hardware element, let alone a graphics processing
`
`19
`
`LG Ex. 1006, pg 19
`
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`system. Therefore, such a design is insufficient to show an actual reduction
`to practice of the claimed graphics processing system. See UMC, 816 F.2d
`at 652 (“It is not sufficient for a reduction to practice that [the inventor] built
`and tested only a part of the later-claimed model UMC-B accelerometer.”);
`Fitzgerald v. Arbib, 268 F.2d 763, 765–66 (CCPA 1959) (noting that the
`reduction to practice of a three-dimensional design invention required the
`production of an article embodying that three-dimensional design and not a
`mere drawing); In re McIntosh, 230 F.2d 615, 619 (CCPA 1956) (holding
`that drawings and models could establish only conception, but not actual
`reduction to practice, because “there is nothing of record to suggest that
`appellant ever made or tested a full-sized airplane constructed in accordance
`with any of the appealed claims”).
`We are not persuaded by ATI’s argument that a physical embodiment
`is not required to establish an actual reduction to practice of the recited
`system. PO Resp. 19–21; Sur-reply 2. ATI’s reliance on Cooper to support
`its argument is misplaced. Sur-reply 2 (citing Cooper, 154 F.3d at 1328). In
`fact, Cooper specifically quotes UMC, which states that “[t]here cannot be a
`reduction to practice of the invention . . . without a physical embodiment
`which includes all limitations of the claim,” and further explains that “the
`physical embodiment relied upon as an actual reduction to practice must
`include every limitation.” Cooper, 154 F.3d at 1327 (quoting UMC, 816
`F.2d at 652; citing Correge v. Murphy, 705 F.2d 1326, 1329 (Fed. Cir.
`1983)) (emphases added). Moreover, it was undisputed that a physical
`embodiment was constructed in Cooper. The inventor in Cooper conducted
`
`20
`
`LG Ex. 1006, pg 20
`
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`successfully a series of experiments with physical embodiments of the
`claimed artificial vascular graft. Cooper, 154 F.3d at 1324 (“The parties
`agree that a single successful graft in a dog would constitute an actual
`reduction to practice.”).
`ATI’s reliance on Yorkey also is unavailing. PO Resp. 17; Sur-reply 2
`(citing Yorkey, 601 F.3d at 1290–91). Yorkey involved method claims
`directed to a method of measuring saturation of a blood constituent, whereas
`the instant trial involves apparatus claims directed to a graphics processing
`system comprising an arbiter coupled to a memory device and a plurality of
`command processing engines. Yorkey, 601 F.3d at 1282; Ex. 1001, 7:10–
`8:28. To show an actual reduction to practice of a claimed apparatus, as
`here, the inventor must construct a physical embodiment that includes all the
`claimed apparatus elements. UMC, 816 F.2d at 652; Fitzgerald, 268 F.2d at
`765–66; Correge, 705 F.2d at 1329 (“The physical embodiment relied upon
`as an actual reduction to practice of the invention . . . must include every
`essential limitation.” (emphasis added)).
`Furthermore, in Yorkey, it was uncontested that the method was
`performed successfully in measuring blood oxygen saturation, and the
`software program implementing
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