Trials@uspto.gov
`571.272.7822
`
`Paper No. 9
`Filed: December 4, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TEXAS INSTRUMENTS, INC.
`Petitioner,
`
`V.
`
`SEMCONIP INC.,
`Patent Owner.
`
`Case IPR2017-01425
`Patent 5,978,876
`
`Before BRYAN MOORE, STACEYG. WHITE,and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`571.272.7822
`
`Paper No. 9
`Filed: December 4, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TEXAS INSTRUMENTS, INC.
`Petitioner,
`
`V.
`
`SEMCONIP INC.,
`Patent Owner.
`
`Case IPR2017-01425
`Patent 5,978,876
`
`Before BRYAN MOORE, STACEYG. WHITE,and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2017-01425
`Patent 5,978,876
`
`I.
`
`INTRODUCTION
`
`Texas Instruments Inc., (“Petitioner”) filed a Petition (Paper2. “Pet.’”)
`
`requesting an inter partes review ofclaims 2, 5, 11, and 13-18 (“‘the
`
`challenged claims”) of U.S. Patent No. 5,978,876 (Ex. 1001, “the 876
`
`patent’). SemconIP Inc., (“Patent Owner”) filed a Preliminary Response.
`
`Paper6 (“Prelim. Resp.””). We have jurisdiction under 35 U.S.C. § 314(a),
`
`which providesthat an inter partes review may not beinstituted 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
`
`challengedin the petition.”
`
`Petitioner contends the challenged claims are unpatentable under 35
`
`U.S.C. §§ 102 and 103 on the following specific grounds (Pet. 4):
`
`
`
`
`[Reference|Basis_| Challenged Ciaims
`
`
`
`2,5, 11, 13-16, and 18
`
`Lambrecht
`
`Taking into account the arguments presented in the Petition and
`Preliminary Response, we determinethat the present record demonstrates a
`reasonable likelihood that Petitioner will prevail in establishing the
`
`§ 102
`
`unpatentability of at least one of the challenged claims. For the following
`
`reasons, wegrant the Petition for inter partes review of the °876 Patent as to
`‘claims 2, 5, 11, and 13-18.
`
`'U.S. Patent No. 5,905,879, filed September 10, 1997, issued May 18, 1999
`(Ex. 1004, “Lambrecht ’879”). Lambrecht ’879 claimspriority to U.S. App.
`No. 08/559,662, filed Nov. 20, 1995.
`
`
`
`IPR2017-01425
`Patent 5,978,876
`
`Ourfactual findings and conclusionsat this 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 Maters
`
`The parties informsus that the ’876 patentis the subject of the
`following civil actions: Semcon IP Inc. v. Texas Instruments Inc., 2:16-cv-
`00440, consolidated with Semcon IP Inc. v. STMicroelectronics Inc., et al.,
`
`2:16-cv-00439 and SemconIP Inc. v. Huawei Device USA Inc.et al., 2:16-
`
`cv-00437. Pet. 1-2; Paper 3, 1. Patent Ownerfurther identifies the
`following district court cases as also being consolidated underlead case
`
`Semcon IP Inc. v. Huawei Device USA Inc. et al.: Semcon IP Inc.v.
`
`MediaTekInc. et al., 2:16-cv-00438 (E.D. Tex.) and Semcon IP Inc. v. ZTE
`Corporation etal., 2:16-cv-00441 (E.D. Tex.). Paper 3, 1. In addition,the
`parties state °876- patent is the subject ofa petition for inter partes review,
`IPR2017-01432,filed by STMicroelectronics, Inc. Pet. 1-2; Paper 3, 1.
`
`Patent Ownerfurther identifies IPR2017-01431, in which
`
`STMicroelectronics challenges U.S. Patent No. 8,566,627, as a related
`
`matter. Paper 3, 1.
`
`B. The ’876 Patent
`
`The °876 patent, titled “System and Method for Controlling
`Communications between Subsystems,” issued November2, 1999 from U.S.
`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
`
`
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`IPR2017-01425
`Patent 5,978,876
`
`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). Jd. 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
`subsystems and interconnections of a video system is shownin Figure 2,
`reproduced below.
`/d. at 4:30-34, 2:43—-50.
`
`Audio-Video
`Main
`Control Processing System
`Bus
`
`
`
`Video Card
`“Ne
`
`7
`
`Switcher
`
`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
`system 200 is modular, re-configurable, and expandable system of elements
`
`
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`IPR2017-01425
`Patent 5,978,876
`
`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 200is 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, busutilization and other subsystem communications and control
`functions that utilize main control bus 201. Coordinator 240 also controls
`
`operation of switcher 15 270, which in turn directs audio and video data
`
`flow over video bus 209.
`
`Subsystem addresses allow directing communications to and from
`specific subsystems. Jd. 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. The ’876 patentstates that “[c]ontrary to conventional bus-
`mastering however, subsystem addressesare notutilized throughout
`subsystem communications as a means for allocating main control bus 201.”
`Id. at 4:53-56. Rather, coordinator 240 utilizes subsystem addresses for
`altering respective subsystems as to an assigned communications channel,
`
`thereby rapidly reassigning bus channels. Jd. at 4:57—-00.
`Figure 4, reproduced below,is a detailed view of Figure 2 showing
`components used by video system 200 to coordinate and control
`
`communications. Jd. at 4:61-63.
`
`
`
`IPR2017-01425
`Patent 5,978,876
`
`Main
`Control
`Bus
`
`103
`
`\
`
`200
`a
`
`video
`Bus
`
`Allocation
`Queue
`
`Contral
`
`Save 1/0
`aux} Controller
`
`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 connection 2U1a 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 5:1-5.
`
`
`
`IPR2017-01425
`Patent 5,978,876
`
`C. Illustrative Claims
`
`Ofthe challenged claims, claims 2 and 15 are the only independent
`
`claims at issue and are reproduced below.
`
`2. A system for and_controllingcoordinating
`
`
`communications overa plurality of subsystems, comprising:
`a plurality of subsystems
`for sending and receiving
`communications; and
`a communicationscontrolling coordinator coupled to each of
`the subsystems for controlling said communications
`between said subsystems;
`the communications controlling coordinator including a
`processor for determining a need for communication
`betweena pair of the subsystems, assigning a channel for
`the communication, transmitting information 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 betweenapair ofthe
`subsystems;
`assigning one of a 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.
`
`
`
`IPR2017-01425
`Patent 5,978,876
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 2, 5, 11, and 13-18 of the °876 patent
`
`based on the asserted grounds of unpatentability (“grounds”) set forth in the
`
`Reference
`
`Lambrecht ’879
`
`table below. Pet. 4.
`
`
`Basis Challenged Claims
`
`§ 103
`2, 5, 11, 13-16, and 18
`
`
`Lambrecht °879
`
`
`
`§ 102
`
`2, 5, 11, and 13-18
`
`
`
`
`
`
`Il. ANALYSIS
`
`A. Claim Construction
`
`Asacknowledgedbytheparties, the claims of the °876 patent have
`
`expired.” Pet. 7; Prelim. Resp. 9. For claims of an expired patent, the
`
`Board’s claim interpretation is similar to that of a district court. See Jn 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 personofordinary 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
`lexicographerby giving a term a particular meaningin the specification with
`
`2 The ’876 patent issued on a continued prosecution applicationfiled 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). Ex. 1001 [*]. Therefore, the °876 patent expired no
`later than April 14, 2017, which is twenty years after April 14, 1997, the
`filing date of the application that gave rise to the °876 patent. See id. at [22];
`35 U.S.C. § 154(a)(2) (2012 & Supp.II 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).
`
`
`
`IPR2017-01425
`Patent 5,978,876
`
`“reasonable clarity, deliberateness, and precision.” Jn re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994). Where an inventor choosesto be his own
`
`lexicographer and to give terms uncommon meanings, he mustset outhis
`
`uncommondefinition in some manner within 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 for the
`
`sole purpose of determining whetherto institute review. We emphasizethat
`
`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 proposes constructions for the phrases “channel,”
`
`“commence communication” and “exchanging said communications,” and
`
`“bus.” Pet. 8-14. Patent Owner does not dispute Petitioner’s proposed
`
`constructions. Prelim. Resp. 10-11 (noting that Petitioner’s proposed
`
`constructions are substantially similar to the district court’s constructions).
`
`Weare not boundbytheparties’ or the district court’s constructions.
`
`See PowerIntegrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015)
`(‘There is no dispute that the board is not generally bound bya prior judicial
`
`construction of a claim term.”).
`
`1. “channel,” “communication(s) channel(s), and “channelfor the
`communication”
`
`The term “channel”is recited a numberoftimes in independent
`
`claius 2 and 15. Claim 2 recites “assigning a charmel for 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.”
`
`
`
`IPR2017-01425
`Patent 5,978,876
`
`Claim 15 recites “assigning one of a plurality of communications channels
`
`to conduct the communication between the pair of subsystems”
`
`“transmitting a communications channel designation to the pair of
`
`subsystems” and exchanging communications between the subsystems “over
`
`the assigned communications channel.”
`
`Petitioner argues that the communication “channel” should not be
`
`interpreted accordingto its plain and ordinary meaning, but rather, should be
`
`construed as meaning “a time-based transfer window.” Pet. 7-9. To support
`
`its construction, Petitioner argues that the patentee acted as its own
`
`lexicographer and defined communication channel to mean “a time-based
`
`transfer window.” Jd. at 7-8 (citing Ex. 1001, 5:46—-48, 3:30-33, 3:46-47,
`
`2:66-67. As noted above, Patent Owner doesnot dispute Petitioner’s
`
`proposed construction. Prelim. Resp. 10.
`
`At this stage of the proceedings, we do not construe the term
`
`“channel” as recited in claims 2 and 15 as being limited to a “time-based
`transfer-window.” “Time-based transfer-window”is not recited in the
`
`claims. Althoughthe claimsare interpreted in light of the specification,it is
`
`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,or all of the embodiments,
`
`contain a particular limitation. We do not read limitations from the
`specification into claims; we do not redetine words.”). We do not agree with
`Petitioner’s argumentthat statements in the ’876 patent clearly set forth a
`
`definition of communication channel that differs from the plain and ordinary
`
`meaning it would otherwise possess. Pet. 7-9. For example, Petitioner
`
`10
`
`
`
`IPR2017-01425
`Patent 5,978,876
`
`contends the following statement in the’876 expressly defines the term
`
`“communications channel” as a time-based transfer-window:
`
`Processor 245a generates, as a result of communication-need
`evaluation, a time-based transfer window (“communications
`channel”) designation.
`Pet. 8 (quoting Ex. 1001, 5:46—48). Petitioner further contends that a person
`
`of ordinary skill in the art, seeing the term “communications channel”
`
`encapsulated in parentheses and quotation marks would believe that this
`
`term wasbeing defined by the patentee. Jd. (citing Sinorgchem Co.v. ITC,
`
`511 F.3d 1132, 1136 (Fed. Cir. 2007)).
`
`Wedisagree. Absent lexicography or disavowal, we do not construe
`
`claim termsas limited to preferred embodiments. Thorner v. Sony Computer
`
`Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). The standards for
`
`finding lexicography and disavowalare “exacting.” GE Lighting Sols., LLC
`
`v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). To act asa
`lexicographer, a patentee must“clearly set forth a definition of the disputed
`
`claim term” and “clearly express an intent to redefine the term.” Thorner,
`
`669 F.3d at 1365 (internal quotation marks omitted). We understand the use
`
`of quotations around “communications channel”to indicate that the time-
`based transfer-window is a communications channel, notthatall
`
`communications channels must be a time-based transfer-window. Ex. 1001,
`
`5:46-48.
`
`Additionally, the statements identified by Petitioner in support ofits
`
`claim construction each relate to a preferred embodimentofthe invention,
`
`and do notlimit all embodiments of the invention. For example, Petitioner
`
`contendsthat Figure 2 illustrates a subsystem “according to the present
`
`invention: Pet. 9 (citing Ex. 1001, 3:46-47). However, the ’876 patent
`
`11
`
`
`
`IPR2017-01425
`Patent 5,978,876
`
`expressly states that Figure 2 is a preferred embodimentofthe invention.
`
`Ex. 1001, 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 channel designation”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.” We instead
`
`construe this term to have its ordinary and customary meaning, whichis “‘a
`
`medium for communication or passage of information.”
`
`We emphasizethat our construction of each of the above claim terms
`
`is based on the current record andis a preliminary construction. Our final
`
`construction will be based upon a complete record developed during the
`
`proceeding.
`
`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
`
`suid communicutions between said subsystems overthe assigned
`
`communications channel.”
`
`Petitioner contends that statements made by Patent Ownerduring
`
`prosecution require the phrases “commence communication” and
`
`12
`
`
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`IPR2017-01425
`Patent 5,978,876
`
`“exchanging said communications” to require “directly exchange or directly
`
`exchanging data on the assigned channel without passing through a central
`
`controller.” Pet. 10.
`
`Wedisagree. Statements made during prosecution are relevantto
`
`understanding the meaning of claim terms and can give rise to prosecution
`
`history estoppel or prosecution disclaimer. For example, “where the
`
`patentee has unequivocally disavoweda certain meaningto obtain his patent,
`
`the doctrine of prosecution disclaimer attaches and narrowsthe ordinary
`
`meaningof the 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.” Jd. 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.” 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, but rather related 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 exchange or directly exchanging data on the assigned channel
`
`without passing through a central controller.”
`
`13
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`
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`IPR2017-01425
`Patent 5,978,876
`
`For example, during prosecution, the applicant made statements
`
`distinguishing certain pending claims overa priorart reference (“Cheng”),
`
`stating that those claims require direct communication between the
`subsystems. Ex. 1002, (September 21, 1998 Amendment, pp. 2-3)’.
`
`Specifically, in the September 21, 1998 amendment, claims 1 and 2 were
`
`amendedto require “direct communication” between the subsystems and the
`
`applicant presented arguments direct to the newly addedlimitations. See id.
`
`at 2 (claim 1 amendedto require initiating “direct” communications
`
`“between”the subsystems), 3 (claim 2 amendedto require “direct
`
`communication” betweena pair of subsystems), 8—9 (arguing Cheng does
`
`not disclose “controlling direct communications between multiple
`
`subsystems”).
`
`Also significant, pending claim 15 did not recite the term “direct” and
`
`the applicant did not rely upon “direct” communication in attempting to
`
`distinguish claim 15 over Cheng. Jd. at 4, 10. Rather, the applicant argued
`
`Chengonly discloses ‘assigning a communications channel between the
`
`central controller” and therefore does not disclose the recited step of
`
`“dynamically and interruptably assigning a communications channel
`
`between pairs of subsystems.” Jd. at 10. The fact that the applicant did not
`
`rely upon “direct” communication when attempting to distinguish claim 15
`
`over Cheng,indicates that the statements regarding “direct”? communication
`
`3 Ex. 1002 purports to be the prosecution history of the ’876 patent. Pet.ii.
`Sequential page numbers were notprovided for this exhibit. The page
`numbersidentified in this Decision with respect to Ex. 1002 refer to the page
`numberof the underlying amendmentoroffice action.
`
`14
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`
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`IPR2017-01425
`Patent 5,978,876
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`were madein relation to specific terms recited in then pending claims 1 and
`
`2, and not to the “invention”itself.
`
`Following the Examiner’s October 21, 1998 Office Action, in which
`
`the Examiner found Cheng teaches direct communications between
`
`subsystems, the applicant filed an amendment on January 25, 1999that,
`
`inter alia, amended claim 2 and removed the language requiring “a
`
`communications channel for direct communication between a pair of
`
`subsystems.” Ex. 1002, (January 25, 1999 Amendment, pp. 2-3). The
`
`applicant no longer attempted to distinguish claim 2 by relying upon the
`
`“direct” communication limitation; instead, the applicant attempted to
`
`distinguish amendedclaim 2 by arguing that Chengfailed to provide a
`method by whichcollisions between communications are prevented. Jd.
`
`at 6.
`
`Forthese reasons, we do not find that claims 2 or 15 require direct
`
`communication between the subsystems without routing through the
`
`controller.
`
`3. Remaining Claim Terms
`For purposesof 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).
`B. Level ofOrdinary Skill in the Art
`Petitioner contends a person of ordinary skill in the art at the time of
`
`the alleged invention of the ’876 patent would have possessedatleast a
`Bachelor’s degree in Electrical Engineering, Computer Science, or
`
`15
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`IPR2017-01425
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`Computer Engineering, and at least two years of experiencerelated to
`
`computer bus design and operation including prioritizing and controlling
`
`data transfers across a bus. Pet. 14. Petitioner asserts that additional
`
`education might substitute for some of the experience, and substantial
`
`experience might substitute for some of the educational background. Id.
`
`Patent Ownerdefines a person of ordinary skill in the art as someone
`
`who would have a Bachelor’s degree in Electrical or computer engineering
`
`with one to two years of experience in the field of computers, with courses
`
`pertinent to processor operations and/or design, and digital processing
`
`systems with a focus on computer architecture and/or intra-system
`
`connections and communication. Prelim. Resp. 8. Patent Ownerstates that
`
`extensive experience and technicaltraining may substitute for educational
`requirements, while advanced education might substitute for experience. Id.
`Patent Owner contendsthat Petitioner’s requirementthat the person of
`
`ordinaryskill in the art have experience “prioritizing and controlling data
`transfers across a bus”results in a person having “extraordinary skill”
`
`because requiring such experience in 1997 would have disqualified almost
`every computerscientist as “[p]rioritization of controlling data transfer via a
`
`bus was not commonly practiced or taught at the time.” Prelim. Resp. 9; Ex.
`
`2001 ¥ 20.
`Although Patent Ownercontendsthat Petitioner’s articulated skill
`
`levelis “extraordinary,” Patent Owner does not explain with any
`particularity how the differencein articulated skill level impacts the
`obviousness analysis ofthe claimsat issue. See, e.g., Prelim. Resp. 1, 9, 11-
`
`12. For the purposesof this Decision, we determinethat it is not necessary
`
`to state explicitly a specific level ofskill; the prior art itself reflects an
`
`16
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`IPR2017-01425
`Patent 5,978,876
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`appropriate level of skill. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`
`(Fed. Cir. 2001).
`
`C. Asserted Unpatentability of Claims 2, 5, 11, and 13-18
`as Obvious over Lambrecht ‘879
`
`A claim is unpatentable under § 103 “if the differences between the
`
`claimed invention andthe prior art are such that the invention as a whole
`
`would have been obviousto one of ordinary skill in the art at the time the
`
`invention was made. Atlas Powder Co. v. E.I. du Pont De Nemours & Co.,
`
`750 F.2d 1569, 1574 (Fed. Cir. 1984); KSR Int'l Co. v. Teleflex Inc., 550
`
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`of underlying factual determinations including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`
`of nonobviousness. Graham vy. John Deere Co., 383 U.S. 1, 17-18 (1966).
`
`Petitioner contends that claims 2, 5, 11, and 13-18 are unpatentable
`
`under § 103 as obvious over Lambrecht. Pet. 15-46. Petitioner relies upon
`
`the declaration of Melvin Ray Mercer, PhD (Ex. 1003, “the Mercer
`
`Declaration”) to support its positions.
`
`1. Overview ofLambrecht ‘879
`Lambrecht ’879 generally relates to systems and methodsfor
`
`transferring periodic data streams on a multimedia bus. Ex. 1004,[54], [57].
`
`4 A different Lambrecht reference (U.S. Patent No. 5,682,484)is asserted in
`IPR2017-01432. Although the two Lambrecht references do not share any
`commonclaim for priority, both Lambrecht references do share a similar
`disclosure.
`
`17
`
`
`
`IPR2017-01425
`Patent 5,978,876
`
`Figure 7, shown below,illustrates a computer system according to one
`
`embodiment of the invention.
`
`
`PCI Bridge Chipset
`
`106
`LL
`ARB LOGIC
`
`
`407
`
`
` Multimedia
`Multimedia
`Device
`Device
`146A
`144A
`
`(312]
`
` Real-time Bus (Multimedia bus) 130
`
`ey sg
`
`Multimedia
`Device
`
`
`
`FIG. 7
`
`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. 1004, 12:50-56. The multimedia
`
`devices use multimedia bus 130 to communicate data between the devices
`
`and use dedicated control channel for addressing and control for 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 and is responsible for arbitrating and
`
`Jd. at 14:5—7. Alternatively,
`granting accessto the real-time bus 130.
`arbitration logic 504is incorporated into PCI Bridge Chipset 106. Jd. at
`14:7-9. Regardless ofthe location ofarbitration logic 504,“multimedia
`
`18
`
`
`
`IPR2017-01425
`Patent 5,978,876
`
`devices 142A-146A provide request signals on control channelto arbitration
`
`logic 504, and .. . arbitration logic 504 grants bus access according to a
`
`desired arbitration method.” Jd. at 14:9-12.
`
`In one embodiment, multimedia bus 130 is “time sliced” wherein time
`
`slices or time slots are allocated in proportion to the required bandwidth. Jd.
`
`at 17:63-65. In this embodiment, multimedia devices include time slotting
`
`logic 644 for controlling access of the device to the multimedia bus 130. Id.
`
`at 18:12-14, 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 programmedby a “central agent”, such as CPU
`102, with the respective timeslot position and length on the multimedia bus.
`
`Id. at 18:16—20, Fig. 11. In one embodiment, CPU 102 programsa timeslot
`
`into each of the multimedia devicesat startup or boot time, thus providing a
`
`static allocation of time slots. Jd. at 18:20-23. 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 8:23-27. Thetime slots may be
`equally sized, or may be dynamically sized and allocated to data streams in
`proportion to the required bandwidth. Jd. at 18:41—51.
`Figure 13, shownbelow,illustrates another embodimentofthe
`invention having a “centralized multimedia I/O processor.” Jd. at 6:34—37.
`
`19
`
`
`
`IPR2017-01425
`Patent 5,978,876
`
`
`
` Main Memory
`
`Multimedia
`
`Multimedia
`Multimedia
`Device
`Device
`
`
`4142
`Processor
`
`ottimeBus(Multimediabus)130
`
`
`
`
`
`
`PCI Bus 120
`
`Expansion Bus 152
`
`FIG. 13
`
`Figure 13 above is a diagram of a computer system having dedicated
`multimedia I/O processor 702 coupled to multimedia bus 130. Jd. at 19:8-
`13. Preferably, I/O processor 702 is implemented within PCI Bridge Chipset
`106 (not shown),or alternatively may be implemented externalto the chipset
`
`as shownin Figure 13. Jd. at 19:13-16.
`“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 19:41-43. The centralized multimedia I/O
`processor mayassign onedata stream to a subsystem ofthe total byte lanes
`
`20
`
`
`
`IPR2017-01425
`Patent 5,978,876
`
`on bus 130, andfill the unused byte lanes with another data stream. Jd. at
`
`19:45-48.
`The I/O processor includes a plurality of data bus registers and/or a
`data bus memory whichstores information regarding the data rates of each
`
`of the devices, the data periodicity of each of the devices, and the respective
`
`data sources and destination devices comprised in the system. Jd. at 19:31—
`
`36, Fig. 14. Multimedia I/O device 702 also includes data transfer control
`
`logic 714, which is coupled to the data bus registers and controlstransfers on
`
`the multimedia bus 130. Jd. at 19:36-38. I/O processor 702 further includes
`
`byte slicing logic 716. Jd. at 19:37-40.
`
`2. Claim 2
`
`Independent claim 2 recites, inter alia,
`the communications controlling coordinator including a
`processor for determining a need for communication
`betweenapair of the subsystems, assigning a channel
`for
`the
`communication,
`transmitting information
`regarding the
`assigned channel
`to the pair of
`subsystems, and instructing the pair of subsystems to
`commence communication on the assigned channel.
`Petitioner argues that Lambrecht ’879’s arbitration logic 504,
`
`modified to include the “‘central agent’ functionality” is a “communications
`
`controlling coordinator”as recited in claim 2. Pet. 19-34.
`
`Petitioner contends that due to limited ways that the standalone
`
`implementation of logic 504 could be implemented, one of ordinary skill in
`the art would understand logic 504 could be implemented as a processor.
`Pet. 20-21 (quoting Altofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999
`(Fed. Cir. 2006) (“It is well established that... a very small genus can be a
`
`disclosure of each species within a genus”).
`
`21
`
`
`
`IPR2017-01425
`Patent 5,978,876
`
`Petitioner contendsthat arbitration logic 504, modified to include
`29 66
`
`central agent software, performs the “determining,”
`
`“assigning,”
`
`“transmitting,” and “instructing” limitations of claim 2. Specifically,
`
`Petitioner contendsthat arbitration logic 504 as shown in Lambrecht ’879’s
`
`Figure 7 (1) “determin[es] a need for communication betweena pair of
`
`subsystems”asit receives communication requests from multimedia devices
`
`142A-146A and grants busaccessto fulfill these requests (Pet. 20) and also
`
`(2) “instruct[s] the pair of subsystems to commence communication on the
`
`assigned channel”(id. at 32-33).
`
`Petitioner further contends that Lambrecht ’879’s “central agent”
`
`software, utilized in connection with, inter alia, the embodimentof Figure 7,
`
`(1) “assigns a channel for the communication”as the software “temporally
`divide[s] the real-time bus 130 into time slices and designate[s] these time
`
`slices as channels for communications between one or morepairs of
`
`multimedia devices” (/d. at 24-26), and (2) “transmit[s] information
`
`regarding the assigned channelto the pair of subsystems” by transmitting
`information including the address of the sender and receiver multimedia
`
`device and assigned channel number(i.e., “timeslot position and length on
`the multimedia bus”) (/d.at 31-32). Petitioner contends that the “time
`slices” of Figure 7’s system satisfy the “time-based transfer window”
`
`limitation, if read into the claims. Jd. at 25-26.
`
`Petitioner further contends that Lambrecht ’879 does not limit
`
`implementation of the “central agent” on CPU 102, andthat it would have
`been obvious to implement the central agent on arbitration logic 504 in order
`to reduce datatransport delay, reduce latency, improveefficiency and that
`such implementation would yield a predictable result with a r
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