Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 14
`Entered: July 11, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TOSHIBA CORPORATION; TOSHIBA AMERICA, INC.;
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC.; AND
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC.,
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner
`_______________
`
`Case IPR2014-00201
`Patent 6,618,788
`_______________
`
`
`Before KEVIN F. TURNER, TREVOR M. JEFFERSON,
`and DAVID C. MCKONE, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`DECISION
`ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 14
`Entered: July 11, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TOSHIBA CORPORATION; TOSHIBA AMERICA, INC.;
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC.; AND
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC.,
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner
`_______________
`
`Case IPR2014-00201
`Patent 6,618,788
`_______________
`
`
`Before KEVIN F. TURNER, TREVOR M. JEFFERSON,
`and DAVID C. MCKONE, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`DECISION
`ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-00201
`Patent 6,618,788
`
`
`I. INTRODUCTION
`In our Institution Decision (Paper 11, “Dec.”), we denied institution of
`an inter partes review of claims 1–27 of U.S. Patent No. 6,618,788
`(Ex. 1001, “the ’788 patent”). Dec. 18–19. Specifically, we concluded that
`Petitioner did not show that Bastiani (Ex. 1003) disclosed or taught “parsing
`the command block into a sequence of ATA [register] operations necessary
`to execute the given ATA register-delivered transaction,” as recited in
`independent claims 1, 10, and 24, or “an ATA command protocol adapter to
`parse a command packet into a sequence of ATA register operations and
`cause that sequence of operations to be performed by the ATA register
`protocol adapter,” as recited in independent claim 24 (collectively, the
`“parsing limitation”). Id. at 9–15, 18.
`Petitioner requests rehearing of the Decision, asserting that we
`misapprehended or overlooked the teachings of Bastiani. Paper 13 (“Req.
`Reh’g”), at 2. Petitioner contends that: Bastiani explicitly discloses the
`parsing limitation (Req. Reh’g 3–8); if Bastiani does not explicitly disclose
`the parsing limitation, it inherently discloses it (id. at 8–9); and we
`improperly relied on several Patent Owner arguments Petitioner deems
`irrelevant (id. at 9–12). None of these contentions is persuasive.
`
`
`II. ANALYSIS
`When rehearing a decision on institution, the Board reviews the
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
`discretion may be indicated if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
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`IPR2014-00201
`Patent 6,618,788
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`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281
`(Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir.
`2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000). The burden
`of showing that the Decision should be modified is on Petitioner, the party
`challenging the Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he
`request must specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed in a motion, an opposition, or a reply.” Id.
`Petitioner first contends that Bastiani expressly discloses the parsing
`limitation. Petitioner argues that Bastiani’s ASP adaptor, shown in Figure 3,
`receives from a host an ASP packet with ATA register values and data
`fields, breaks the packet down into a sequence of ATA register operations,
`and sends the ATA register operations to an ATA device (Petitioner
`identifies IDE device 122). Req. Reh’g 3–4. Petitioner primarily relies on
`Bastiani at column 43, lines 43–49, and column 42, lines 9–13, to show an
`express disclosure of parsing. Req. Reh’g 5–6.
`Regarding Bastiani’s disclosure at column 43, lines 43–49, Petitioner
`did not, in the Petition, cite this passage as disclosing the parsing limitation.
`See Pet. 16–17, 22–23, 28–29. Thus, we could not have overlooked or
`misapprehended the applicability of this passage in the Petition. In any case,
`this passage states that a “device decodes all header fields [of an
`OUTDATA0/1 packet] for correctness and if any of the header fields
`(Packet type, DataType, Byte Count) are not correct the device ignores the
`packet.” Ex. 1003, col. 43, ll. 46–49. Petitioner has not explained
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`IPR2014-00201
`Patent 6,618,788
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`persuasively how this constitutes parsing a command block into a sequence
`of ATA operations.
`Regarding column 42, lines 9–13, of Bastiani, Petitioner argues that
`this discloses an ASP adaptor generating a sequence of ATA register
`operations that are sent to an attached ATA device. Req. Reh’g 6.
`Petitioner contends that we misapprehended Bastiani and failed to recognize
`that “the adapter of Bastiani clearly is doing more than merely ‘passing
`commands’ across the ASP bus because the adapter breaks down the
`Command Block (ATA Command (ATA register values) with associated
`data fields) in the OUTDATA0/1 packet into a standard sequence of ATA
`register operations.” Req. Reh’g 7–8. We considered this argument in the
`Decision and found it unpersuasive, concluding that Petitioner did not
`identify where Bastiani describes the details of the how the ASP adaptor
`and/or the IDE device processes the ASP packets. Dec. 10–12. Thus, we
`did not misapprehend or overlook Petitioner’s argument.
`Petitioner also argues that it would not have been possible for
`Bastiani’s host to have communicated with ATA devices using ASP packets
`unless the ASP adaptor was parsing the ASP packets. Req. Reh’g 6. This
`argument is a rephrasing of Petitioner’s argument that “the ASP ADAPTER
`must parse or break down the ATA Command contained in the
`OUTDATA0/1 packets into standard sequence of ATA operations, and the
`ASP ADAPTER then causes those operations to occur by accessing ATA
`registers on the IDE device,” Pet. 17. Petitioner repeats this argument in its
`contention that Bastiani inherently discloses the parsing limitation. Req.
`Reh’g 8–9 (“If the adapter did not [parse ASP packets into ATA register
`commands], then the host (which issues ASP packets) would be unable to
`
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`IPR2014-00201
`Patent 6,618,788
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`communicate with the ATA device (which expects ATA register
`commands).”). We considered this argument and found it unpersuasive. See
`Dec. 13–15. Thus, we did not misapprehend or overlook it.
`Petitioner contends that, in denying the Petition, we improperly
`credited several Patent Owner arguments Petitioner deems “irrelevant.”
`Req. Reh’g 9–12. Petitioner argues that its position is not based on what the
`ATA standards require; rather, Petitioner argues, “[w]hat matters is that
`Bastiani describes an adapter that receives an ATA Command encapsulated
`in an ASP packet, and in response to receiving that ASP packet, causes ATA
`register operations to be performed by the attached ATA device.” Id. at 10–
`11. Similarly, Petitioner contends that it does not matter whether Bastiani’s
`ASP adaptor and the ’788 patent’s bridging circuit comport to the same
`version of the ATA standards; rather, Petitioner argues, “[b]ecause an ATA
`device understands ATA commands (and not ASP or USB packets), the
`adapter in Bastiani and the bridge in the ’788 patent must parse the received
`packets because otherwise the attached ATA device could not be utilized.”
`Id. at 11. Finally, Petitioner argues that it is irrelevant that Bastiani’s ASP
`adaptor and the ’788 patent’s bridging circuit receive different input because
`any received packet must be parsed to generate a sequence of ATA register
`operations. Id. at 12.
`None of these arguments is persuasive. In the Petition, Petitioner
`contended that because both Bastiani and the ’788 patent described systems
`that communicated data between ATA devices and non-ATA devices,
`according to ATA standards, those systems must have converted data in the
`same way, including Bastiani using the parsing technique described in the
`’788 patent. Pet. 16–17. Petitioner relied on its declarant to compare
`
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`IPR2014-00201
`Patent 6,618,788
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`Bastiani and the ’788 patent. Id. Petitioner’s declarant, in turn, relied on the
`disclosure of the ’788 patent to establish that Bastiani’s ATA device would
`require ATA register commands parsed from packets. Ex. 1007 ¶¶ 23–24.
`The declarant specifically relied on the premise that both Bastiani’s system
`and the system described in the ’788 patent “comport to the same standard”
`to conclude that Bastiani’s ASP adaptor must parse packets as described in
`the ’788 patent. Id. ¶ 24. Given Petitioner’s reliance on compliance with
`the ATA standards and their relationship to the ’788 patent and Bastiani, it
`was appropriate to consider whether Petitioner presented persuasive
`evidence of the requirements of the standards and their applicability to
`Bastiani. Thus, consideration of Patent Owner’s arguments did not cause us
`to misapprehend Bastiani.
`
`
`III. CONCLUSION
`Petitioner has not shown that we misapprehended or overlooked the
`contents of Bastiani and, thus, has not shown that we abused our discretion
`by denying the Petition.
`
`
`IV. ORDER
`Petitioner’s Request for Rehearing is denied.
`
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`IPR2014-00201
`Patent 6,618,788
`
`PETITIONER:
`
`Brent Yamashita
`Brent.yamashita@dlapiper.com
`
`Gerald Sekimura
`Gerald.sekimura@dlapiper.com
`
`
`PATENT OWNER:
`
`Robert Sterne
`Rsterne-ptab@skgf.com
`
`Jon Wright
`Jwright-ptab@skgf.com
`
`Jonathan M. Strang
`Jstrang-PTAB@skgf.com
`
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