Trials@uspto.gov
`$71.272.7822
`
`Paper No. 7
`Filed: December 4, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STMICROELECTRONICS, INC.
`Petitioner,
`
`Vv.
`
`SEMCONIP INC.,
`Patent Owner.
`
`Case IPR2017-01432
`Patent 5,978,876
`
`Before BRYAN MOORE, STACEY G. WHITE, and KIMBERLY
`McGRAW,Administrative Patent Judges.
`
`McGRAW,Administrative Patent Judge.
`
`DECISION
`Institution of Jnter Partes Review
`37 C.F.R. § 42.108
`
`
`$71.272.7822
`
`Paper No. 7
`Filed: December 4, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STMICROELECTRONICS, INC.
`Petitioner,
`
`Vv.
`
`SEMCONIP INC.,
`Patent Owner.
`
`Case IPR2017-01432
`Patent 5,978,876
`
`Before BRYAN MOORE, STACEY G. WHITE, and KIMBERLY
`McGRAW,Administrative Patent Judges.
`
`McGRAW,Administrative Patent Judge.
`
`DECISION
`Institution of Jnter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`I.
`
`INTRODUCTION
`
`STMicroelectronics Inc., (“Petitioner”) filed a Petition requesting an
`
`inter partes review of claims 1-19 (“the challenged claims”) of U.S. Patent
`
`No. 5,978,876 (Ex. 1001, “the ’876 patent”). Paper 1 (‘“Pet.”). Semcon IP
`
`Inc., (“Patent Owner’) filed a Preliminary Response. Paper 6 (“Prelim.
`
`Resp.”).
`
`Wehavejurisdiction under 35 U.S.C. § 314(a), which provides that an
`
`inter partes review maynotbeinstituted 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.”
`Petitioner contends the challenged claims are unpatentable under 35 U.S.C.
`
`. §§ 102 and 103 on the following specific grounds(Pet.2):
`
`
`
`Rerene ae[eeeCs
`
`
`
`
`
`Lambrecht °484!
`
`Lambrecht °484
`
`Lambrecht °484 and Craft’
`
`
`Taking into account the arguments presented in the Petition and
`Preliminary Response,for the reasonsset forth below, we determinethat the
`present record demonstrates a reasonable likelihood that Petitioner will
`prevail in establishing the unpatentability of claim 1 of the ’876 patent, but
`not claims 2-19. For the foregoing reasons, we grantthe Petition for inter
`
`
`
`'U.S. Patent No. 5,682,484, filed November 20, 1995, issued October 28,
`1997 (Ex. 1005, “Lambrecht °484”).
`2U.S. Patent No. 5,438,666, filed June 30, 1992, issued August 1, 1995 (Ex.
`1007, “Craft’”’).
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`partes review ofthe ’876 patent as to claim 1 and we donotgrant the
`
`Petition as to claims 2-19.
`
`Our factual findings and conclusionsatthis stage of the proceeding,
`
`including claim construction, are preliminary and are based on the
`
`evidentiary record developed thus far. This is not a final decision as to
`patentability of claims for which inter partes review is instituted. Ourfinal
`decision will be based on the record as fully developed duringtrial.
`
`A. Related Proceedings
`Wehave been informed that the ’876 patent is involved in the
`
`following legal proceedings: Semcon IP Inc. v. STMicroelectronics Inc.,
`2:16-cv-00439 (E.D. Tex.) and Semcon IP Inc. v. Texas Instruments Inc.,
`
`2:16-cv-00440 (E.D. Tex.), which have been consolidated as Semcon IP Inc.
`
`v. Huawei Device USA Inc., et al., 2:16-cv-00437 (E.D. Tex.). Pet. 4-5;
`
`Paper 3, 1. Patent Ownerfurtheridentifies the following district court cases
`as also being consolidated under lead case Semcon IP Inc. v. Huawei Device
`USA Inc. et al.: Semcon IP Inc. v. MediaTek Inc. et al., 2:16-cv-00438 (E.D.
`
`Tex.) and Semcon IP Inc. v. ZTE Corporation et al., 2:16-cv-00441 (E.D.
`Tex.). Paper 3, 1. In addition, the parties state the ’876 patentis also the
`subject of a petition for inter partes review, IPR2017-001425. Pet. 1-2;
`Paper 3, 1. Patent Ownerfurtheridentifies IPR2017-01431, in which
`STMicroelectronics challenges U.S. Patent No. 5,566,627, as a related
`
`matter. Paper3, 1.
`
`B. The ’876 Patent
`
`The °876 patent, titled “System and Method for Controlling
`Communications between Subsystems,” issued November 2, 1999 from U.S.
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`Patent Application No. 08/834,242, filed on April 14, 1997. Ex. 1001, at
`
`[54], [45], [21], [22]. The °876 patent issued on a continued prosecution
`
`application filed under 37 C.F.R. § 1.53(d), and is subject to the twenty year
`
`patent term provision of 35 U.S.C. § 154(a)(2). Id. at [*].
`The “invention comprises a centralized subsystem communication
`
`controller that allocates communication resources and conducts subsystem
`
`communications according to dynamic system needs.” Jd. at 2:58-61.
`
`A block diagram of a preferred embodimentof the invention showing
`
`subsystemsand interconnections of a video system is shownin Figure 2,
`
`reproduced below. Jd. at 4:30-34, 2:43-50.
`
`201
`
`Host Computer
`
`User VO
`Controller
`
`Main=Audio-Video
`Control Processing System
`Bus
`Enable
`Lines
`
`FIG. 2
`
`Figure 2 depicts independently operable audio-video processing system 200
`having a peripheral connection 103 to host PC 100. Jd. at 3:45—-50. Video
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`system 200 is modular, re-configurable, and expandable system of elements
`
`needed for real-time mixing and/or processing of audio and or video data
`
`streams. Id. at 3:51—54.
`
`Video system 200 comprises coordinator 240, video processing
`
`subsystems (video cards 250, 260), interconnections including main control
`
`bus 201, communications “enable” lines 203, and video bus 209.
`
`Operation of video system 200 is centrally monitored and controlled
`
`by coordinator 240 according to user audio-video manipulation selections
`
`and other input received through connection 103 from host PC 100 system
`expansion interface 170. Coordinator 240 provides for subsystem address
`assignment, bus utilization and other subsystem communicationsand control
`functions that utilize main control bus 201. Coordinator 240 also controls _
`
`operation of switcher 270, which in turn directs audio and video data flow
`
`over video bus 209.
`
`Subsystem addressesallow directing communications to and from
`specific subsystems. Id. at 4:31-32. While each subsystem (video cards
`250, 260) receives all communications over shared main control bus 201, the
`
`video cards only decode communications including their address. Jd. at
`
`4:32-34.
`
`Figure 4, reproduced below,is a detailed view of Figure 2 showing
`components used by video system 200 to coordinate and control
`
`communications.
`
`/d. at 4:61-63.
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`| Allocation
`Queue
`
`Bus Master
`YO Contro}
`
`Save VO
`Controller
`
`|
`
`j
`
`Save I/O
`Lut Controller
`
`©
`
`nae
`
`209 “a
`
`FIG.4
`
`Figure 4, above, illustrates coordinator 240, comprising bus master
`
`I/O controller 243a, message length counter 243b, processing elements
`
`including processor 245a and processor-memory 245b,and busallocation
`elements including enable I/O controller 246a and allocation queue 246b.
`
`Id. at 4:61-5:1. Coordinator 240 is connected by conncction 201a to main
`
`control bus 201 control lines, connection 201b to main control bus 201
`
`address and data lines, and connection 203 to subsystem communications
`
`enable lines 203b and 203c. Jd. at 5:1-S.
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`C. Illustrative Claims
`
`Ofthe challenged claims, claims 1, 2, and 15 are the only independent
`claimsat issue and are reproduced below.*
`
`1. and_controllingA system for coordinating
`
`
`
`communications overa plurality of communication connections
`betweena plurality of subsystems, comprising:
`
`[e]
`
`[b] ahost computer;
`[c]
`avideo processing system coupled to the host computer
`for
`receiving control
`information from the host
`computer, the processing system comprising:
`[d] a plurality of subsystems connected in parallel with a
`communications controller by a control bus so that
`pairs of the subsystems can directly communicate
`with each other over the control bus; and
`the communications controller allocating available
`communication connections according to ongoing
`determinations of system communications needs by
`dynamically assigning communications channels to
`pairs
`of
`the
`subsystems
`and_
`controlling
`communications between the subsystems according
`to the ongoing determinations.
`controlling
`A system for
`coordinating ‘and
`2.
`communicationsovera plurality of subsystems, comprising:
`a plurality of subsystems for sending and receiving
`communications; and
`a communications controlling coordinator coupled to each
`of the subsystemsfor controlling said communications
`between said subsystems;
`the communications controlling coordinator including a
`processor for determining a need for communication
`between a pair of the subsystems, assigning a channel
`
`3 Bracketed material and formatting added to be consistent with usage by
`Petitioner.
`
`
`
`IPR2017-01432
`Patent 5,978,876 ,
`
`transmitting information
`communication,
`the
`for
`regarding the
`assigned channel
`to the pair of
`subsystems, and instructing the pair of subsystems to
`commence communication on the assigned channel.
`15. A method of dynamically controlling communications
`betweena plurality of subsystems, comprising:
`providing a plurality of subsystems;
`assigning an address to each subsystem;
`determining a need for communications betweena pairofthe
`subsystems;
`assigning one ofa plurality of communications channels to
`conduct
`the communication between the pair of
`subsystems;
`transmitting a communications channel designation to the
`pair of subsystems to alert
`the subsystems of the
`assigned communications channel; and
`exchanging said communications between said subsystems
`over the assigned communications channel.
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1-19 of the ’876 patent based on the
`
`asserted grounds of unpatentability (“grounds”) set forth in the table below.
`
`Pet. 2.
`
`Lambrecht ’484 and Craft
`
`Reference(s)
`
`Lambrecht ’484
`
`Lambrecht °484
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`Il. ANALYSIS
`
`A. Claim Construction
`As acknowledgedbytheparties, the ’876 patent has expired.’ Pet. 9;
`
`Prelim. Resp. 9. For claims of an expired patent, the Board’s claim
`
`interpretation is similar to that of a district court. See In re Rambus, Inc.,
`
`694 F.3d 42, 46 (Fed. Cir. 2012). In construing a claim term, we must look
`
`at the term’s ordinary and customary meaning,as understood by a person of
`
`ordinary skill in the art, in the context of the written description and the
`prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
`
`2005) (en banc). A patentee may act as a lexicographer by giving a term a
`
`particular meaning in the specification with “reasonable clarity,
`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994). Where an inventor choosesto be his own lexicographerand to give
`
`terms uncommon meanings, he mustset out his uncommondefinition in
`some mannerwithin the patent disclosure so as to give one of ordinary skill
`in the art notice of the change. Id.
`
`In this section, we provide a preliminary claim construction forthe
`sole purpose of determining whetherto institute review. We emphasizethat
`
`4 The °876 patent issued on a continued prosecution application filed under
`37 CER. § 1.53(d) andis subject to the twenty year patent term provision of
`35 U.S.C. § 154(a)(2). Ex. 1001 [*]. Therefore, the °876 patent expired no
`later than April 4, 2017, which is twenty years after April 4, 1997, the filing
`date of the application that gave rise to the ’876 patent. See Ex. 1001 [22];
`35 U.S.C. § 154(a)(2) (2012 & Supp.III 2015)(stating,inter alia, patent
`term ends twenty (20) years from the date on which the application for the
`patent wasfiled in the United States).
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`our construction in this Decision is based on the current record andis a
`
`preliminary construction. Ourfinal claim construction will be based upon a
`
`complete record developed during the proceeding.
`
`Petitioner proffers constructions for several claim phrases, namely:
`99 66
`
`“channel,” “bus master I/O controller,” “enable I/O controller,”
`
`“allocation
`
`queue,” and “dynamically and interruptably.” See, e.g., Pet. 9-14. Patent
`
`Ownerproffers a construction, either explicitly or implicitly, for
`29 66
`
`“communication channel(s),”
`99 66
`
`computer,”
`
`“commence communication,”
`
`“channel for the communication,” “host
`99°
`66
`
`“exchanging said
`
`communications.” See Prelim. Resp. 9-10.
`
`Weare not bound bythe parties’ or by a district court’s constructions.
`
`See Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015)
`(“There is no dispute that the board is not generally bound bya priorjudicial
`
`construction of a claim term.”).
`3 66
`
`1.
`
`“communications channel(s),’’and “channelfor
`“channel,”
`communication”
`
`The term “channel” is recited a numberoftime in each of the asserted
`
`independentclaims. See claim 1 (“assigning communications channels to
`pairs of subsystems”), claim 2 (“assigning a channelfor the communication”
`betweena pair of subsystems, “transmitting information regarding the
`assigned channelto the pair of subsystems”andinstructing the pair of
`subsystems to commence communication on the assigned channel’), claim
`15 (“assigning one of a plurality of communications channels to conduct the
`communication,” “transmitting a communications channel designation to the
`
`pair of subsystems,” and “assigned communications channel”).
`
`10
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`Relying on statements in the ’876 patent, Petitioner contends that one
`
`of ordinary skill in the art would understand the ordinary meaningofthe
`
`term “channel,” as used in the ’876 patent, to mean “time-based transfer-
`
`window.” Pet. 10 (citing Ex. 1001, Abstract, 2:65-3:3, 5:45-61).
`
`Patent Ownerstates thatit does not dispute this construction for
`
`“purposes of this proceeding.” Prelim. Res. 10 (also stating that the district
`
`court construed the phrases “communication(s) channel(s)” of claims 1, 15,
`
`and 20, and “channel for the communication” of claim 2, as meaning a
`
`“time-based transfer window. Prelim. Resp. 10 (citing Ex. 2001, 41).
`
`At this stage of the proceedings, we do not construe the term
`“channel”as recited in claims 2 and 15 asbeinglimited to a “time-based
`transfer-window.” “Time-based transfer-window” is notrecited in the
`
`claims. Althoughthe claimsare interpretedin light of the specification,itis
`
`improperto read limitations from the specification into the claims. See, e.g.,
`
`Inre Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also Thornerv.
`
`Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“It is
`likewise not enoughthat the only embodiments,orall of the embodiments,
`
`contain a particular limitation. We do not read limitations from the
`specification into claims; we do not redefine words.”). Noneofthe
`statements in the 876 patent identified by Petitioner limit the meaning of the
`
`term “channel” to be a time-based transfer-window.
`
`For example, the ’876 patent states that in a preferred embodiment,
`the “coordinator assigns time-sharing communications ‘channels’ to selected
`subsystem pairs and then, ... enables assigned communication channels.”
`Id. at 2:66-3:3. Here, the ’876 patent is describing the communication
`
`channels in the preferred embodimentas time-sharing communication
`
`11
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`channels andis not defining all communication channels as time-sharing
`
`communications channels.
`
`The °876 patentalso states that “[p]rocessor 245a generates, as a
`
`result of communication-need evaluation, a time-based transfer-window
`
`(‘communications channel’) designation.” Ex. 1001 5:45—47. Here, use of
`
`quotations around “communications channel”indicates that the time-based
`transfer-window is a communications channel, not that all communications
`
`channels must be a time-based transfer-window. Moreover, this statement
`
`describes a preferred embodimentandis not limiting all embodiments of the
`
`invention. See id. at 3:43-45 (“Detailed Description of the Preferred
`
`Embodiment”).
`
`Similarly, in the Summary of the Invention, the ’876 patent states in
`
`“a preferred embodiment,”the “coordinator assigns time-sharing
`
`communications ‘channels’ to selected subsystem pairs.” Jd. at 2:65—67.
`
`The Abstract further states that the “coordinator preferably assigns each
`
`pending communication a time-based transfer-window channeldesignation”
`
`that signals the subsystemsto transfer data.
`Assuch,at this stage of the proceeding, based on the current record,
`
`we do not construe communication “channel”as recited in the claims of the
`
`’876 patent(e.g., “communications channel(s), “channel for the
`communication”) as limited to a “time-based transfer-window.” Weinstead
`
`construe this term to have its ordinary and customary meaning, whichis “a
`
`mcdium for communication or passage of information.”
`
`12
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`2. “commence communication,” and “exchanging said
`communications”
`
`Claim 2 recites “instructing the pair of subsystems to commence
`
`communication on the assigned channel.” Claim 15 recites “exchanging
`
`said communications between said subsystems over the assigned
`
`communications channel.”
`
`Petitioner does not provide an explicit construction for these terms.
`
`Patent Ownerarguesthat Petitioner proffered a narrower construction in
`
`related district court proceedings and cannot argue in this proceeding a claim
`
`construction different from the position that it took during. Prelim. Resp.
`
`11. Patent Ownerstates that Petitioner argued in the district court
`proceedings that the claims “must exclude communication ‘routing through
`a central controller’” and that Petitioner may not be permitted to argue in
`
`this proceedingthat the claims terms “commence communication” and
`“exchanging said communications” include communication routing through
`
`a central controller.
`
`/d. at 10-11.
`
`Patent Owner’s argumentthat Petitioner is precluded from arguing a
`different claim construction than it proffered in the district court proceeding
`is not persuasive based on the present record. Presumably, Patent Owneris
`relying on a theory of“judicial estoppel” which “bindsthe party to a
`position that it advocated and successfully achieved.” See Skye Hawke
`Technologies, LLC v. Deca Int'l Corp., 828 F.3d 1373, 1376 (Fed. Cir.
`2016). However, Patent Ownerhasnot clearly articulated its legal theory;
`nor has Patent Owner submitted evidence that was prepared by Petitioner
`setting forth the position taken by Petitioner in the district court. Instead,
`Patent Owner merely submitted a copy ofthe district court’s claim
`
`13
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`construction memorandum opinion andorderandasserts that the district
`
`court relied on Petitioner’s arguments “and substantially adopted its
`
`constructions.” See Prelim. Resp. 11 (citing Ex. 2001, 47-48). Therefore,
`
`the record presently before us is insufficient to determine whether (1)
`
`Petitioner is precluded from arguing a claim construction position
`
`inconsistent with that taken in the district court, and (2) whether the Boardis
`
`prevented from adopting such a claim construction. As such, we do not find
`
`Patent Owner’s preclusion argument persuasive on the present record.
`
`At this stage of the proceeding, we also do not construe the terms
`
`“commence communication” and “exchanging said communications”to
`
`require communication routing through a central controller.
`
`Statements made during prosecution are relevant to understanding the
`
`meaning of claim terms and cangiverise to prosecution history estoppel or
`
`prosecution disclaimer. For example, “where the patentee has unequivocally
`
`disavowed a certain meaningto obtain his patent, the doctrine of prosecution
`
`disclaimer attaches and narrows the ordinary meaning ofthe claim
`
`congruent with the scope of the surrender. Shire Dev., LLC v. Watson
`
`Pharm., Inc., 787 F.3d 1359, 1365 (Fed. Cir. 2015). However, “while the
`
`prosecution history can inform whetherthe inventor limited the claim scope
`
`in the course of prosecution,it often produces ambiguities created by
`
`ongoing negotiations between the inventor and the PTO. Therefore, the
`
`doctrine of prosecution disclaimer only applies to unambiguous disavowals.”
`
`Id. at 1366.
`
`‘“‘When the purported disclaimers are directed to specific claim
`
`terms that have been omitted or materially altered in subsequent applications
`
`(rather than to the inventionitself), those disclaimers do not apply.”
`
`14
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`Saunders Grp., Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1333 (Fed. Cir.
`
`2007).
`
`Here, because the statements in the prosecution history relating to
`
`“direct” communication between subsystems were not unambiguous
`
`disavowals of claim scope, but rather were statements madeinrelation to
`
`terms that were later omitted from the claims, we determine that the phrases
`
`“commence communication” and “exchanging said communications”recited
`
`in claims 2 and 15 do not require “directly exchangeor directly exchanging
`
`data on the assigned channel without passing through a central controller.”
`
`For example, during prosecution, the applicant made statements
`distinguishing certain pending claims overa priorart reference (“Cheng”),
`stating the claims requires “direct” communication between the subsystems,
`a feature allegedly not taught by Cheng. Ex. 1002, 44-45, 50-51. For
`
`example, in the September 21, 1998 amendment, claims 1 and 2 were
`amendedto require “direct communication” between the subsystemsand the
`applicant presented argumentsdirected to these limitations. See Ex. 1002,
`44 (claim 1 amended to requireinitiating “direct” communications
`
`“between” the subsystems), 45 (claim 2 amendedto require “direct
`communication” between a pair of subsystems), 50-51 (arguing Cheng does
`
`not disclose “controlling direct communications between multiple
`subsystems”). Significantly, pending claim 15 did notrecite “direct” and the
`applicant did not rely upon “direct” communication in attempting to
`distinguish claim 15 overthe prior art. Ex. 1002, 52 (arguing Cheng only
`discloses “assigning a communications channel betweenthe central
`controller” and therefore does not disclose “dynamically and interruptably
`assigning a communications channel betweenpairs of subsystems”as recited
`
`15
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`in pending claim 15). Ex. 1002, 52. The fact that the applicant did not rely
`
`upon “direct” communication in attempting to distinguish claim 15 over the
`
`prior art indicates that the statements were madeto specific claim terms in
`
`claims 1 and 2, and notto the “invention”itself.
`
`Moreover,the applicant later amended claim 2 to remove the term
`
`“direct.” Jd. at 67-68. Following the Examiner’s October 21, 1998 Office
`
`Action, in which the Examiner found Cheng teaches direct communications
`
`between subsystems (Ex. 1002, 59-60), the applicant filed an amendment on
`
`January 25, 1999 that, inter alia, amended claim 2 to remove the “direct”
`
`communication limitations.
`
`/d. at 67-68. The applicant then attempted to
`
`distinguish amended claim 2 by arguing that Chengfailed to provide a
`
`method by which collisions between communications are prevented. Jd. at
`
`71. For these reasons, the statements made during prosecution were not an
`
`unambiguous disavowalof claim scope and we donotfind that claims 2 or
`
`15 require direct communication between the subsystems without routing
`
`through the controller.
`
`3. Whether the “host computer” must be separate fromthe
`“communication controller”’
`
`Claim 1 recites a system comprising “a host computer” and a “video
`
`processing system coupled to the host computer” comprising “a plurality of
`subsystems connectedin parallel with a communications controller by a
`
`control bus.”
`
`Patent Owner implicitly argues that claim 1 requires that the “host
`
`computer” be separate from the “communication controller.” See Prelim.
`
`Resp. 19 (contending that Petitioner failed to show a “host computer”
`
`separate from the “communication controller” because Petitionerrelies on
`
`16
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`Lambrecht °484’s CPU for both claim elements). However, simply because
`
`a claim recites two claim elements does not necessarily require that the two
`
`elements be separate from each other. See Powell v. Home Depot U.S.A.,
`
`Inc., 663 F.3d 1221, 1231-32 (Fed. Cir. 2011) (stating that claim language
`
`“cutting box interior in fluid communication with dust collection structure
`
`for collecting sawdust” did not require that “cutting box” and “dust
`
`collection structure” must be separate components); see also NTP, Inc.v.
`Research in Motion, Ltd., 418 F.3d 1282, 1310 (Fed. Cir. 2005) (noting that
`the asserted claim language did not support a limitation requiring that the
`
`claimed “RF receiver” and “destination processor” be separate and distinct).
`
`Atthis stage of the proceeding Patent Ownerhas not provided any argument
`in support of a claim construction that requires the host computer to be
`separate, either physically or functionally, from the “video processing
`system coupled to the host computer” or from the “communications
`controller.” Nor has Petitioner provided a claim construction that addresses
`
`this issue. Therefore, based on present record, we do not construe claim 1 as
`
`requiring the host computer to be separate from the communication
`
`controller.
`
`4. Remaining Claim Terms
`For purposes of this Decision, based on the record before us, we
`
`determine that none of the remaining claim terms require an explicit
`
`construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`803 (Fed. Cir. 1999) (“[O]nly those terms need be construed thatare in
`controversy, and only to the extent necessary to resolve the controversy.”).
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`B. Level of Ordinary Skill in the Art
`Petitioner contends a person ofordinary skill in the art at the time of
`
`the alleged invention of the ’876 patent (a “POSITA”) would have a
`
`Bachelor of Science degree in electrical or computer engineering with two
`
`years’ experience in computer systems design or an equivalent combination
`
`of training and experience. Pet. 9 (citing Ex. 1003 { 46).
`
`Patent Owner contends that a POSITA would have a bachelor’s
`
`degree in electrical or computer engineering with one to two years of
`
`experiencein the field of computers with courses pertinent to processor
`
`operations and/or design, and digital data processing systems with a focus on
`
`computerarchitecture and/or intra-systems connections and
`
`communications. Prelim. Resp. 9. Patent Owner further contends that
`extensive experience and technical training may substitute for education
`requirements, while advanced education might substitute for experience. Id.
`
`Althoughthe parties articulate different level of skill for a POSITA,
`
`neither party explains how their recited level of skill impacts the
`obviousness analysis. For the purposes of this Decision, we determinethatit
`
`is not necessary to state explicitly a specific level of skill; the priorart itself
`
`reflects an appropriate level of skill. See Okajima v. Bourdeau, 261 F.3d
`
`1350, 1355 (Fed. Cir. 2001).
`
`C. Asserted Anticipation of Claims 1-17 by Lambrecht ’484
`“A claim is anticipated only if each and every elementas set forth in
`
`the claim is found, either expressly or inherently described, in a single prior
`
`art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed.
`Cir. 1987). The “reference must clearly and unequivocally disclose the
`claimed compoundordirect thoseskilled in the art to the compound without
`
`18
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`any need for picking, choosing, and combining variousdisclosures not
`directly related to each other by the teachings of the cited reference.”
`
`Application ofArkley, 455 F.2d 586, 587 (CCPA 1972).
`
`Petitioner contends that claims 1-17 are anticipated under § 102 by
`
`Lambrecht ’484. Pet. 19-55. Petitioner relies upon the declaration of David
`
`Albonesi, Ph.D. (Ex. 1003, the “Albonesi Declaration’) to support its
`
`positions. Jd.
`
`1. ‘Overview ofLambrecht ’484°
`Lambrecht °484 generally relates to systems and methodsfor
`
`transferring periodic data streams on a multimedia bus. Ex. 1005, [54], [57].
`Figure 7, shown below,illustrates a computer system according to one
`
`embodimentof the invention.
`
`5 A different Lambrecht reference (U.S. Patent No. 5,905,879) is at issue in
`related proceeding, Case No. IPR2017-01425. Although the two Lambrecht
`references do not share any commonclaim forpriority, both Lambrecht
`references do share a similar disclosure.
`
`19
`
`
`
`IPR2017-01432
`
`Patent 5,978,876
`
`Figure 7 above,illustrates a system having multimedia devices 142A—
`
`146A connected to PCI expansion bus 120, real-time or multimedia bus 130,
`
`and separate control channel 502. Ex. 1005, 12:50-56. The multimedia
`
`devices use multimedia bus 130 to communicate data between the devices
`
`and use dedicated control channel for addressing and controlfor the
`
`multimedia bus transfers. Jd. at 12:56—-59, 13:44-47.
`
`Arbitration logic 504 is coupled to control channel 502 and performs
`arbitration for the multimedia devices andis responsible for arbitrating and
`
`Jd. at 14:35. Alternatively,
`granting accessto the real-time bus 130.
`arbitration logic 504 is incorporated into PCI Bridge Chipset 106. Jd. at
`14:6-7. Regardless of the location of arbitration logic 504, “multimedia
`devices 142A—146A provide request signals on control channelto arbitration
`
`20
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`logic 504, and .. . arbitration logic 504 grants bus access according to a
`
`desired arbitration method.” Jd. at 14:7~10.
`
`In one embodiment, multimedia bus 130 is “time sliced” wherein time
`
`slices or time slots are allocated in proportion to the required bandwidth. Id.
`
`at 17:60-63. In this embodiment, multimedia devices include timeslotting
`
`logic 644 for controlling access of the device to the multimedia bus 130. Jd.
`
`at 18:9-11, Fig. 11. The time slotting logic can use one or more timers and
`
`counters 646 for determining the respective time slot. Jd. at 18:14—-16,Fig.
`
`11. Multimedia bus interface logic 174A also includes programmable
`
`timeslot registers that are programmedbya “central agent”, such as CPU
`
`102, with the respective timeslot position and length on the multimedia bus.
`Id. at 18:14-17, Fig. 11. In one embodiment, CPU 102 programsa timeslot
`
`into each of the multimedia devices at startup or boot time, thus providing a
`
`static allocation of time slots.
`
`/d. at 18:17-20. Alternatively, software
`
`executing on CPU 102 dynamically programstimeslots in each of the
`multimedia devices dependent uponreal-time process and applications
`occurring in the computer system. Jd. at 18:20-24. The time slots may be
`equally sized, or may be dynamically sized and allocated to data streams in
`
`proportion to the required bandwidth. /d. at 18:39-41.
`Figure 13, shownbelow,illustrates another embodimentofthe
`
`invention having a “centralized multimedia I/O processor.” Jd. at 6:34-37.
`
`21
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`02
`
`MEMORY
`
`MAIN
`
`42
`
`MULTIMEDIA
`
`DEVICE
`
`46
`
`MULTIMEDIA
`
`MULTIMEDIA
`
`DEVICE
`
`lil
`
`_» I
`
`renee
` ie Ei
`
` PCi_EXPANSION BUS
`
`50
`
`BRIDGE
`
`
`
`se(ATBus0 FIG. 13
`
`
`
`Figure 13 aboveis a diagram of a computer system having dedicated
`
`multimedia I/O processor 702 coupled to multimedia bus 130.
`
`/d. at 19:8—
`
`13. Preferably, I/O processor 702 is implemented within PCI Bridge Chipset
`
`106 (not shown),or alternatively may be implemented external to the chipset
`
`as shownin Figure 13.
`
`/d. at 19:11-14.
`
`“In one embodiment, the centralized I/O processor 702 ‘byte slices’
`
`the multimedia bus to allow different data streams to use different byte
`
`channel simultaneously.” Jd. at 19:39-41. The centralized multimedia I/O
`
`processor may assign one data stream to a subsystem ofthe total byte lanes
`on bus 130, andfill the unused byte lanes with another data stream. Jd. at
`
`19:43-46.
`
`22
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`2. Asserted Anticipation of Claim 1 by Lambrecht ’484
`Petitioner argues that Lambrecht ’484 disclosesall the limitations
`
`recited in independent claim 1. Pet. 19-24.
`
`Patent OwnerarguesPetitioner has not shown Lambrecht °484
`
`anticipates claim 1 because Petitioner’s anticipation argument improperly
`
`combines embodiments comprising an I/O processor with embodiments
`
`involving “time-sliced communications.” See Prelim. Resp. 1, 12-16.
`
`Patent Ownercontends that Lambrecht ’484’s I/O processor does not set up
`
`“time-sliced communications”(e.g., “time-slicing’’), but rather is used to set
`
`up “byte-sliced communications”(e.g., “byte-slicing”). Jd.
`Weagree that the Petition can be read as arguing that combination of
`
`various embodiments of Lambrecht ’484 anticipate claim 1. However, the
`
`Petition also can be read as arguing that certain embodiments individually
`
`anticipate claim 1. We address Petitioner’s arguments below.
`Claim element 1(e) requires the “communications controller” to
`“assign[] communications channels”to pairs of subsystems. Petitionerrelies
`on Lambrecht ’484’s “time slot window”as satisfying the “communications
`
`channels”limitation. For example, Petitioner states that “Lambrecht
`
`explains that a time slot window (‘communications channel’) is dynamically
`assigned to pairs of multimedia subsystems by the central controller,e.g., the
`I/O processor.” Pet. 23 (citing Ex. 1005, [4]:39-50). Petitioner also states
`
`that “the CPU may program eachof the multimedia device
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
