Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 21
`Entered: January 2, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`MARVELL SEMICONDUCTOR, INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00548
`Patent 5,712,870
`____________
`
`
`Before THOMAS L. GIANNETTI, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 21
`Entered: January 2, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`MARVELL SEMICONDUCTOR, INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00548
`Patent 5,712,870
`____________
`
`
`Before THOMAS L. GIANNETTI, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-00548
`Patent 5,712,870
`
`
`INTRODUCTION
`
`Petitioner, Marvell Semiconductor, Inc., filed a corrected Petition
`
`requesting an inter partes review of claims 1–20 of U.S. Patent No.
`
`5,712,870 (“the ’870 patent”). Paper 6 (“Pet.”). In our Decision dated
`
`December 3, 2014 (Paper 16, “Dec.”), we instituted inter partes review of
`
`claims 1, 2, 4–6, 8–11, and 13–20 of the ’870 patent. Dec., 23. Petitioner
`
`requests rehearing (Paper 19, “Req. Reh’g.”) of our decision not to institute
`
`inter partes review of claims 3 and 12 of the ’870 patent. Req. Reh’g. 1.
`
`For the reasons that follow, Petitioner’s request for rehearing is denied.
`
`The applicable standard for a request for rehearing is set forth in 37
`
`C.F.R. § 42.71(d), which provides in relevant part:
`
`A party dissatisfied with a decision may file a request for
`rehearing, without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The 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, opposition, or a
`reply.
`
`
`ANALYSIS
`
`Petitioner contends in its Petition that claims 3 and 12 of the ’870
`
`patent are unpatentable as obvious over Fischer,1 Nakamura,2 and Rhodes.3
`
`Pet. 31–43.
`
`
`1 U.S. Patent No. 5,371,734, issued Dec. 6, 1994 (Ex. 1004, “Fischer”)
`2 U.S. Patent No. 4,856,027, issued Aug. 8, 1989 (Ex. 1005, “Nakamura”)
`3 U.S. Patent No. 4,313,205, issued Jan. 26, 1982 (Ex. 1006, “Rhodes”)
`2
`
`
`
`IPR2014-00548
`Patent 5,712,870
`
`
`Claim 3 depends from claim 2, which in turn depends from claim 1.
`
`Claims 1–3 are reproduced below.
`
`1. A circuit for detecting a message header in a signal which
`has been transmitted using direct sequence spread spectrum
`modulation, comprising a single device having:
`means for receiving an analog signal having modulated
`thereon in a spread spectrum format a message having a
`header portion and a data portion;
`means for converting said analog signal into a digital signal;
`means for demodulating the header of the digital signal
`using digital binary phase shift keyed (BPSK)
`demodulation and for demodulating the data portion of
`the same message using quarter[n]ary phase shift keyed
`demodulation (QPSK);
`means contained on said single device for timing a transition
`from BPSK mo[d]ulation to QPSK modulation; and,
`means for providing the demodulated data signal to a media
`access control (MAC) layer.
`
`
`2. The circuit of claim 1 further comprising means for
`adjusting said means for timing to account for headers of
`variable length.
`
`3. The circuit of claim 2 wherein said means for adjusting is
`contained within said single device and wherein said means for
`adjusting is responsive to a data field within said message
`header.
`
`
`Claim 12 depends from claim 11, which in turn depends from claim
`
`10. Claims 10–12 are reproduced below.
`
`10. In a communication system capable of receiving RF
`direct sequence spread spectrum signals, said system having a
`message header detection circuit comprising a single device
`having:
`
`3
`
`
`
`IPR2014-00548
`Patent 5,712,870
`
`
`an analog receiver for receiving a spread spectrum
`modulated signal having a header portion and a data
`portion;
`an analog-to-digital converter operable on said modulated
`signal;
`a digital demodulator for binary phase shift keyed (BPSK)
`demodulation of said header portion and quaternary
`phase shift keyed (QPSK) demodulation of said data
`portion;
`a timer for transitioning between the BPSK demodulation
`and the QPSK demodulation; and,
`an interface for providing the demodulated data signal to a
`media access control (MAC) layer.
`
`
`11. The circuit of claim 10 wherein said timer is adjustable
`to account for headers of variable length.
`
`12. The circuit of claim 11 wherein the adjustability of said
`timer is based on information contained within a data field of
`said header portion.
`
`
`Petitioner first argues that dependent claims 3 and 12 “do not recite
`
`‘to account for headers of variable length,’ and further states “that phrase is
`
`from earlier claims 2 and 11.” Req. Reh’g., 3. Petitioner’s assertion is
`
`without merit as 35 U.S.C. § 112 makes clear that “[a] claim in dependent
`
`form shall be construed to incorporate by reference all the limitations of the
`
`claim to which it refers.” Thus, it is of no moment whether the limitation is
`
`recited in the dependent claim, or instead appears in the claim from which
`
`the independent claim depends. Each of the limitations of claims 1 and 2 are
`
`required by claim 3, and, likewise, each of the limitations of claims 10 and
`
`11 are required by claim 12.
`
`4
`
`
`
`IPR2014-00548
`Patent 5,712,870
`
`
`Petitioner next argues that because it relies on Rhodes as disclosing
`
`the additional limitations of claims 3 and 12, and “relies on other art for the
`
`earlier claims’ requirement of accounting for headers of variable length,” we
`
`misapprehended “Petitioner’s use of Rhodes.” Req. Reh’g. 3–4. As we
`
`explained in the Decision:
`
`
`Claims 3 and 12 each relate to adjusting the timing of the
`transition from BPSK to QPSK to account for headers of
`variable length based on a data field in the header.
`According to Petitioner, Fischer discloses adjusting the
`timing of the transition from BPSK to QPSK to account
`for headers of variable length (Pet. 23–24) and Rhodes
`“discloses circuitry that adjusts timing based on detecting
`a unique word (data field) within a preamble (message
`header) of a message.” Pet. 33.
`Petitioner relies on conclusory statements that the
`combination of the asserted references would be
`motivated to provide improved reliability, but does not
`articulate persuasively how the teachings of each
`reference are to be combined to satisfy the limitations of
`claims 3 and 12. In particular, it is unclear how the
`disclosure in Rhodes quoted by Petitioner concerning
`data fields in the header corresponds to timing
`adjustments to account for headers of variable length, as
`claimed. See id.
`
`
`Dec. 19–20.
`
`It is not sufficient for Petitioner merely to show that Rhodes only
`
`discloses the features added by claims 3 and 12, because claims 3 and 12
`
`further require the features of the claims from which they depend. See
`
`Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed.
`
`Cir. 1999) (“proper claim construction ... demands interpretation of the
`
`5
`
`
`
`IPR2014-00548
`Patent 5,712,870
`
`entire claim in context, not a single element in isolation.”) The circuit of
`
`claim 3 must include means for timing a transition between BPSK
`
`demodulation and QPSK demodulation found in claim 1, as well as means
`
`for adjusting the timing means to account for the headers of variable length
`
`found in claim 2. The means for adjusting the timing means in claim 3
`
`must, therefore, account for headers of variable length, and, in so doing,
`
`must also be responsive to a data field within the message header. Claim 12
`
`similarly requires a circuit with a timer adjustable to account for headers of
`
`variable length based on information contained within a data field of a
`
`header portion for transitioning between BPSK demodulation and QPSK
`
`demodulation.
`
`Thus, the claims require a specific relationship between the data fields
`
`in the header and timing adjustments to account for headers of variable
`
`length. Petitioner’s argument insufficiently acknowledges this relationship
`
`that results from the dependency of claim 3 on claim 2, and of claim 12 on
`
`claim 11. Instead, Petitioner addresses the limitations added in claims 3 and
`
`12 in isolation, without considering the context provided by the claims from
`
`which they depend. See Req. Reh’g, 4–7. Petitioner has not shown that we
`
`misapprehended Petitioner’s use of Rhodes and we are not persuaded by this
`
`argument that rehearing should be granted.
`
`Lastly, and as a separate, additional reason to grant its motion,
`
`Petitioner argues that “Patent Owner’s failure to analyze claim 3 caused
`
`misapprehension of the scope of claim 3.” Req. Reh’g., 8. In particular,
`
`Petitioner argues that, in contrast to claim 12, claim 3 only requires means
`
`for adjusting means for timing to account for headers of variable length and,
`
`6
`
`
`
`IPR2014-00548
`Patent 5,712,870
`
`“independently or not,” means for adjusting means for timing responsive to
`
`a data field within a message header. Req. Reh’g., 8–9.
`
`We are not convinced by this argument that rehearing should be
`
`granted. This argument raises a new issue of claim construction, for
`
`Petitioner does not identify where it previously raised the claim-construction
`
`argument distinguishing claim 3 from claim 12 it now presents in its Request
`
`for Rehearing. To the contrary, Petitioner argues in the Petition that claims
`
`3 and 12 are unpatentable for the same reasons. See Pet., 34. We do not
`
`entertain arguments raised for the first time in a request for rehearing, and,
`
`as explained above, the Petition does not sufficiently show that that the
`
`requirements of claim 3 may be divorced from claim 2. The fact that Patent
`
`Owner may not have distinguished between claims 3 and 12 is not
`
`persuasive, as the Petition must demonstrate a reasonable likelihood of
`
`prevailing for a trial to be instituted. Moreover, even if Petitioner’s
`
`proposed new construction of claim 3 were adopted, we are not persuaded
`
`that Petitioner adequately explained in its Petition a rationale for combining
`
`the asserted references to show a reasonable likelihood of prevailing in
`
`demonstrating the unpatentability of claim 3.
`
`
`
`CONCLUSION
`
`Petitioner has not carried its burden of demonstrating that our
`
`Decision not to institute inter partes review of claims 3 and 12 of the ’870
`
`patent misapprehended or overlooked any matters. 37 C.F.R. § 42.71(d).
`
`For the foregoing reasons, Petitioner’s Request is DENIED.
`
`
`
`7
`
`
`
`IPR2014-00548
`Patent 5,712,870
`
`PETITIONER
`
`Walter Renner
`Jerermy Monaldo
`Fish & Richardson P.C.
`axf@fr.com
`IPR27410-0021IP1@fr.com
`
`PATENT OWNER
`
`Herbert Hart
`Kirk Vander Leest
`Peter McAndrews
`McAndrews, Held & Malloy, Ltd.
`hhart@mcandrews-ip.com
`kvanderleest@mcandrews-ip.com
`pmcandrews@mcandrews-ip.com
`
`Donald Coulman
`Intellectual Ventures I LLC
`dcoulman@intven.com
`
`8
`
`
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