Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 52
`Entered: May 28, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00180
`Patent 7,634,666 B2
`_______________
`
`
`
`Before MIRIAM L. QUINN, DAVID C. MCKONE,
`and JAMES A. TARTAL, Administrative Patent Judges.
`
`McKONE, Administrative Patent Judge.
`
`DECISION
`ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 52
`Entered: May 28, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00180
`Patent 7,634,666 B2
`_______________
`
`
`
`Before MIRIAM L. QUINN, DAVID C. MCKONE,
`and JAMES A. TARTAL, Administrative Patent Judges.
`
`McKONE, Administrative Patent Judge.
`
`DECISION
`ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-00180
`Patent 7,634,666 B2
`
`
`I. INTRODUCTION
`
`International Business Machines Corp. (“Petitioner”) filed a Petition
`
`(Paper 1, “Pet.”) to institute an inter partes review of claims 1–11 of U.S.
`
`Patent No. 7,634,666 B2 (Ex. 1005, “the ’666 patent”). Intellectual
`
`Ventures II LLC (“Patent Owner”) filed a Patent Owner Response (Paper
`
`24, “PO Resp.”) and Petitioner filed a Reply to the PO Response (Paper 29,
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`“Reply”). We conducted an oral hearing on January 13, 2015 (Paper 49,
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`“Tr.”). In a Final Written Decision (Paper 50, “Dec.”), we held that
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`Petitioner failed to show, by a preponderance of the evidence, that any
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`challenged claim was unpatentable as obvious over Matsuzaki (Ex. 1008)
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`and Dworkin (Ex. 1012).
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`In a Request for Rehearing (Paper 51, “Req.”), Petitioner contends
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`that (1) we construed the term “feedback” too narrowly; (2) Dworkin teaches
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`“feedback” under the broader construction; and (3) we misapprehended or
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`overlooked Petitioner’s evidence of reasons to combine Matsuzaki and
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`Dworkin. As detailed below, we are not persuaded by Petitioner’s
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`arguments.
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`
`
`II. ANALYSIS
`
`The burden of showing that the Decision should be modified is on
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`Petitioner, the party challenging the Decision. See 37 C.F.R. § 42.71(d). In
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`addition, “[t]he request must specifically identify all matters the party
`
`believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or a reply.” Id.
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` 2
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`IPR2014-00180
`Patent 7,634,666 B2
`
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`A. Construction of “feedback”
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`Claim 1 recites “wherein the outputs of the multiplication unit, the
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`addition unit and the sign inversion unit are feedback to the arithmetic
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`controller.” Independent claim 4 includes a similar recitation.
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`In the Petition, Petitioner proposed construing “feedback” to mean “a
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`result that is directly transmitted back.” Pet. 8. Petitioner essentially argued
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`that “feedback” should be limited to an example described in the ’666 patent
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`in which each of a multiplication unit, an addition unit, and a sign inversion
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`unit sends its own interim result directly back to a controller without passing
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`through intermediate components. Pet. 8–9 (citing Ex. 1005, 3:30–39).
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`Patent Owner opposed Petitioner’s construction in the Preliminary
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`Response (Paper 9, “Prelim. Resp.”) at 3, arguing that Petitioner was reading
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`a limitation into the claims from the Specification. In the Decision to
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`Institute (Paper 10, “Inst. Dec.”) at 11, we declined to limit “feedback” to a
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`disclosed embodiment in which results are fed back directly. In its PO
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`Response, Patent Owner agreed with our analysis. PO Resp. 9. Petitioner
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`did not argue the construction of this term further in the Reply.
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`At the oral hearing, the panel challenged Patent Owner with questions
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`on the issue of whether the claims contemplate either direct or indirect
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`feedback. Tr. 44:1246:2. Patent Owner conceded that the claims do not
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`require either direct or indirect feedback, and that in the instance of indirect
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`feedback, intermediate components should not change the content of the data
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`being sent back to the controller, for example latches and multiplexers that
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`would delay, but not change, the data sent back to the controller. Tr. 44:12–
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`46:2. Patent Owner conceded that if an intermediate component changed
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` 3
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`IPR2014-00180
`Patent 7,634,666 B2
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`the data output by an arithmetic device, the feedback would no longer be the
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`output of that device. Id. (Patent Owner arguing that Figure 2 of the ’666
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`patent supports its contention that the output that constitutes feedback under
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`the claims does not enter another addition or sign inversion unit before it is
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`provided back). Based on the evidence and arguments presented in the
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`Petition and the PO Response, we construed “wherein the outputs of the
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`multiplication unit, the addition unit and the sign inversion unit are feedback
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`to the arithmetic controller” to mean that the output values of the
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`multiplication unit, the addition unit, and the sign inversion unit are
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`feedback to the arithmetic controller, although those values may pass,
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`unchanged, through intermediate components (e.g., latches and
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`multiplexers). Dec. 9.
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`In the Request, Petitioner contends that Patent Owner “changed
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`course” and introduced a new claim construction argument at the hearing.
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`Req. 2. We disagree. Patent Owner responded to our questions seeking to
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`focus the dispute between the parties as reflected in the Petition and PO
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`Response. The construction of “feedback” in our Decision was not the
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`acceptance of an improperly raised argument. Rather, our construction was
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`based upon the evidence presented in the Petition and the PO Response.
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`Petitioner argues that it objected to Patent Owner’s purportedly new
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`construction of “feedback.” Req. 2–3. We do not agree with Petitioner. At
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`the hearing, Petitioner was instructed to raise its objections during the time it
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`was allotted for its argument. Tr. 4:14–17. Petitioner argued that it
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`disagreed with how Patent Owner interpreted the alleged feedback operation
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`of Dworkin, and referred to its detailed “step-by-step graphics” presented on
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` 4
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`IPR2014-00180
`Patent 7,634,666 B2
`
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`rebuttal in Petitioner’s Reply. Tr. 10:2311:9. After its rebuttal time had
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`expired, Petitioner requested (and was granted) additional time to raise an
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`objection “to all of the detailed Dworkin argument that was offered” by
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`Patent Owner, arguing that it was “not anywhere present in [Patent Owner’s]
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`opposition.” Tr. 61:13–62:7. We are unable to discern how Petitioner’s
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`generic objection to Patent Owner’s detailed explanation of Dworkin was
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`directed to the purportedly new claim construction argument made by Patent
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`Owner at the hearing. Petitioner has failed to point to any objection to
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`Patent Owner’s answer to our question or any discussion of the construction
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`of “feedback” in its main or rebuttal argument. In any event, to the extent
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`Petitioner believes it properly objected to Patent Owner’s candid response to
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`the panel’s questions regarding the scope of “feedback,” that objection is
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`overruled.
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`In sum, we are not persuaded that we overlooked or misapprehended
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`the evidence and arguments presented regarding the construction of
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`“feedback,” and find no reason to modify our construction of “feedback” in
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`the Decision.
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`
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`B. We did not misapprehend or overlook Dworkin’s teaching of
`feedback
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`Petitioner argues that our construction of “feedback” was unfair
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`because Petitioner demonstrated in the Petition and the Reply that Dworkin
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`teaches indirect “feedback” consistent with the reasoning in our Decision to
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`Institute. Req. 2. Petitioner argues that our preliminary construction “[does
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`not] require that output values must be feedback to the controller
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`‘unchanged.’” Id. at 5. According to Petitioner, it presented evidence that
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` 5
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`IPR2014-00180
`Patent 7,634,666 B2
`
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`output values from Dworkin’s sub-ALUs are fed to intermediate
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`components, that those intermediate components change the values of the
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`sub-ALU outputs, and that those changed values eventually reach the
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`controller. Id. at 6–7. We disagree that Petitioner presented any such
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`evidence or argument in either the Petition or the Reply. Rather, this is a
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`third, new theory of Dworkin’s operation presented for the first time in the
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`Request.
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`Petitioner first contended, in the Petition, that Dworkin teaches
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`directly feeding back the outputs of a multiplication unit, a sign inversion
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`unit, and an addition unit to a controller. Pet. 30. Petitioner did not argue
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`that feedback could include data that changed in value from an arithmetic
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`unit to a controller. Such an argument would have been inconsistent with
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`Petitioner’s proposed construction that feedback must be direct. Nor did
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`Petitioner introduce evidence that Dworkin’s sub-ALUs feed their results to
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`adjacent sub-ALUs, which change the results and pass them, eventually, to a
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`controller. See Ex. 1001 ¶¶ 116–18.
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`In the PO Response, Patent Owner introduced evidence that Dworkin
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`does not teach a sign-inversion unit, for example; thus, it cannot teach
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`feeding back (directly or indirectly) the output of a sign-inversion unit to a
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`controller. Dec. 16; PO Resp. 13. Patent Owner also introduced evidence
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`(summarized at Dec. 17–19) that the output of each of Dworkin’s sub-ALUs
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`(save the left-most sub-ALU) is fed to an adjacent sub-ALU and is not fed
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`back to the controller.
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`In the Reply, Petitioner changed its theory on how Dworkin operates.
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`First, Petitioner admitted that Dworkin in fact did not teach feeding back the
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`outputs of a multiplication unit, a sign inversion unit, and an addition unit to
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` 6
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`IPR2014-00180
`Patent 7,634,666 B2
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`a controller. Reply 7. Petitioner then introduced a second theory of
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`Dworkin’s operation, supported by a new declaration from its expert. In
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`particular, the Reply contended that Patent Owner’s description of Dworkin
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`was incorrect and that the outputs of each of the sub-ALUs themselves (not
`
`values changed by intermediate calculations) were left-shifted to the
`
`controller. Reply 8–9.
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`Upon consideration of all the evidence, including that presented in the
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`Petition and the Reply, we found that the evidence presented by Patent
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`Owner was much more consistent with the actual disclosure of Dworkin and,
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`thus, credited Patent Owner’s evidence. Specifically, we weighed the
`
`evidence and made a factual finding that Patent Owner’s expert testimony
`
`was credible, accurately describing Dworkin, and that Petitioner’s expert
`
`testimony lacked credibility, inaccurately describing Dworkin. Dec. 20–21.
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`The argument Petitioner now presents in the Request was not
`
`presented in either the Petition or the Reply and is not supported by either
`
`declaration of its expert (the first declaration was directed to the first theory
`
`in the Petition and the Reply declaration was directed to the second theory in
`
`the Reply). A request for rehearing is not an opportunity to expand on
`
`evidence and arguments not presented, or to mend gaps in the evidence
`
`relied on in the Petition. We could not have misapprehended or overlooked
`
`Petitioner’s third theory regarding Dworkin’s operation when argument and
`
`evidence supporting such a theory was not developed sufficiently in the
`
`Petition or the Reply. Moreover, this new theory is inconsistent with
`
`Petitioner’s contention in the Petition that Dworkin “describes several
`
`computation arithmetic units, where the output of each unit is directly sent
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`back to the arithmetic controller.” Pet. 17. In sum, we are not persuaded
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` 7
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`IPR2014-00180
`Patent 7,634,666 B2
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`that we overlooked or misapprehended the evidence and arguments
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`presented regarding Dworkin’s teaching of “feedback,” and find no reason to
`
`modify our Decision.
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`
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`C. We did not misapprehend or overlook Petitioner’s evidence of a
`reason to combine Matsuzaki and Dworkin
`
`In our Decision, we considered the evidence presented in the Petition,
`
`the Reply, and the corresponding expert declarations, and found that
`
`Petitioner’s stated reasons to combine Matsuzaki and Dworkin amounted to
`
`nothing more than that those references had substantial similarities.
`
`Dec. 21–29. We concluded that these reasons to combine were insufficient
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`to show obviousness. Id. at 29–30. As to Petitioner’s “common sense”
`
`argument, after weighing the evidence, we found a lack of evidentiary
`
`support. Id. at 26.
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`Petitioner first argues that we improperly required Petitioner to
`
`explain how Matsuzaki and Dworkin would have been combined. Req. 9.
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`Petitioner is correct that the law does not require a showing that Matsuzaki
`
`and Dworkin could be bodily incorporated into one another. See In re
`
`Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). We imposed no such
`
`requirement. Rather, in evaluating the scope and content of the prior art, we
`
`observed that the evidence presented in the Petition failed to show how or
`
`why the teachings of Dworkin were being applied to those of Matsuzaki.
`
`Dec. 16–17. Specifically, as explained above, the Petition contended that
`
`Dworkin disclosed directly feeding back the outputs of multiplication, sign-
`
`inversion, and addition units to a controller. Petitioner later admitted that
`
`this explanation of Dworkin was incorrect and advanced a new theory of
`
` 8
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`IPR2014-00180
`Patent 7,634,666 B2
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`Dworkin’s operation. Reply 7. Our Decision found that the Petition,
`
`because it was based on the first theory, lacked an explanation of how or
`
`why a skilled artisan would have modified Matsuzaki under Petitioner’s
`
`second theory of Dworkin’s teachings. Dec. 16–17.
`
`Petitioner next lists several arguments that it alleges it presented
`
`during the trial and that we overlooked or misapprehended. For example,
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`Petitioner contends that we overlooked evidence in the Petition that Dworkin
`
`teaches feeding back the output of generic computational units to a
`
`controller. Req. 10. The Petition is unambiguous as to Petitioner’s
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`contention that Dworkin teaches feedback: “Dworkin discloses wherein the
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`outputs of the multiplication unit (e.g., sub-ALU 18), the addition unit (e.g.,
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`sub-ALU 18) and the sign inversion unit (e.g., sub-ALU 18) are directly sent
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`back to the arithmetic controller (e.g., controller 20).” Pet. 30. Petitioner
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`did not argue in the Petition that Dworkin teaches feeding back the outputs
`
`of generic computational units. Petitioner only introduced that argument in
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`the Reply, after conceding the argument presented in the Petition.
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`Petitioner contends that we overlooked evidence in the Petition that
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`pipeline feedback (purportedly described in Matsuzaki) and cascade
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`feedback (purportedly described in Dworkin) were “known and predictable
`
`solutions, i.e., alternatives.” Req. 10–11 (citing Pet. 15; Ex. 1001 ¶¶ 42–43,
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`118). Petitioner’s evidence, at most, purports to show that the Examiner,
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`during prosecution of the ’666 patent, considered pipeline feedback and
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`cascade feedback to be different and patentably distinct. Ex. 1001 ¶¶ 42–43.
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`Petitioner did not argue that pipeline and cascade feedback were known
`
`alternatives or, for that matter, known to be interchangeable. Thus, we could
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`not have overlooked or misapprehended this argument. Similarly, Petitioner
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` 9
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`IPR2014-00180
`Patent 7,634,666 B2
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`did not argue that Dworkin’s feedback was an improvement that could have
`
`been applied predictably to Matsuzaki (Req. 11–12). We could not have
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`overlooked or misapprehended that argument either.
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`Petitioner also contends that we overlooked evidence that a skilled
`
`artisan would have combined Matsuzaki and Dworkin to “control how
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`computations are performed by the arithmetic unit.” Req. 12 (citing
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`Ex. 1001 ¶ 148). Similarly, Petitioner argues that we overlooked evidence
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`that Matsuzaki and Dworkin both address optimal hardware
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`implementations. Id. at 12–13 (citing Ex. 1001 ¶ 145). Petitioner also
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`contends that we “summarily dismissed” evidence that the presence of
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`Montgomery reduction in both references would have led a skilled artisan to
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`consider Matsuzaki and Dworkin together. Id. at 13 (citing Ex. 1001 ¶ 146).
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`Petitioner’s arguments are not persuasive. We considered each of these
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`arguments and the corresponding declaration testimony in detail in our
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`Decision, at 24–25. We found that this evidence showed nothing more than
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`that the references had similarities. Id. Mere disagreement with our
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`Decision is not grounds for rehearing.
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`Petitioner further argues that a prior panel of this Board found
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`“similarities between the art alone” to be sufficient to show a reason to
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`combine, a decision we should follow in this proceeding to avoid being
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`arbitrary and panel-specific. Req. 14–15 (citing Toyota Motor Co. v. Am.
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`Vehicular Sci. LLC, case IPR2013-00414, 25–26 (Jan. 6, 2015) (Paper 45)).
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`The decision to which Petitioner cites, however, also considered evidence
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`that a non-interactive display was known to be interchangeable with an
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`interactive display and that the substitution would have been a simple design
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`choice, a portion of the decision Petitioner improperly crops out with
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`10
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`IPR2014-00180
`Patent 7,634,666 B2
`
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`ellipses in its explanation. When considered in its entirety, Toyota is
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`consistent with our discussion of Tyco Healthcare Group LP v. Ethicon
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`Endo-Surgery, Inc., 774 F.3d 968, 977–79 (Fed. Cir. 2014). Dec. 28–29.
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`As explained in the Decision, Petitioner did not argue, nor present evidence
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`to support an argument, that the feedback techniques of Matsuzaki and
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`Dworkin were known to be interchangeable. Id. Thus, we could not have
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`overlooked or misapprehended such an argument.
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`Petitioner has not shown that we overlooked or misapprehended the
`
`evidence and arguments presented regarding a reason to combine Matsuzaki
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`and Dworkin, and, therefore, we find no reason to modify our Decision.
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`
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`III. CONCLUSION
`
`Petitioner has not shown that we misapprehended or overlooked any
`
`of its arguments or evidence, or that we misapplied the law. Accordingly,
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`we decline to change our Decision.
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`IV. ORDER
`
`Petitioner’s Request for Rehearing is denied.
`
`
`
`PETITIONER:
`
`Kenneth R. Adamo
`Eugene Goryunov
`KIRKLAND & ELLIS LLP
`kenneth.adamo@kirkland.com
`eugene.goryunov@kirkland.com
`
`
`
`11
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`IPR2014-00180
`Patent 7,634,666 B2
`
`
`PATENT OWNER:
`
`Herbert D. Hart III
`Jonathan R. Sick
`Peter J. McAndrews
`MCANDREWS, HELD & MALLOY, LTD.
`hhart@mcandrews-ip.com
`jsick@mcandrews-ip.com
`pmcandrews@mcandrews-ip.com
`
`
`
`12
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