Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 54
`Entered: November 30, 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.
`
`ORDER
`37 C.F.R. § 42.5(a) and § 42.71(a)
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 54
`Entered: November 30, 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.
`
`ORDER
`37 C.F.R. § 42.5(a) and § 42.71(a)
`
`
`
`
`
`
`
`
`IPR2014-00548
`Patent 5,712,870
`
`
`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.”). Based on the
`information provided in the Petition, we instituted a trial pursuant to
`35 U.S.C. § 314(a) of: (1) claims 1, 2, 4–6, 8, 10, 11, 13, 14, and 16–20 as
`obvious over Fischer1 and Nakamura2 under 35 U.S.C. § 103(a); and, (2)
`claims 9 and 15 as obvious over Fischer, Nakamura, and Tsuda.3 Paper 16
`(“Institution Decision, or “Inst. Dec.”). We did not institute trial on claims
`3, 7, or 12. Id.
`After institution of trial, Patent Owner, Intellectual Ventures I LLC,
`filed a Patent Owner’s Response (Paper 30, “Response” or “PO Resp.”) and
`Petitioner filed a Reply (Paper 35, “Reply”). In its Response, Patent Owner
`raised for the first time an issue with our decision to institute trial on claims
`8 and 9, which depend from claim 7. PO Resp. 37–38, 40. In our
`Institution Decision, we denied institution on claim 7 because Petitioner had
`not shown a reasonable likelihood of prevailing. In particular, Petitioner
`failed to identify in the Petition, as required by 37 C.F.R. § 42.104(b)(3),
`the specific portions of the specification that describe the structure
`corresponding to the claimed “means to evaluate . . . and to select” recited in
`claim 7. Inst. Dec. 18–19.
`Claim 8 recites “[t]he circuit of claim 7 wherein the circuit is
`contained on a single monolithic device.” Ex. 1001, 10:45-49. Claim 9
`
`
`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. 5,619,507, issued Apr. 8, 1997 (Ex. 1009, “Tsuda”) from
`U.S. Application Number 08/268,454 filed June 30, 1994.
`2
`
`
`
`IPR2014-00548
`Patent 5,712,870
`
`recites “[t]he circuit of claim 8 wherein said circuit acquires a unique word
`within a message header and if no unique word is acquired within a
`predetermined period of time resets the circuit.” Id. at 10:50–51. Thus, the
`additional limitations of claims 8 and 9 do not limit the means recited in
`claim 7 to any specific structure. Accordingly, having failed to show a
`reasonable likelihood of prevailing on claim 7, Petitioner necessarily failed
`to show a reasonable likelihood of prevailing on dependent claims 8 and 9.
` Patent Owner argues that, “[b]ecause claim 8 includes all of the
`limitations of parent claim 7, and the Petition relies on the asserted
`unpatentability of claim 7 as supporting the unpatentability of claim 8,
`Petitioner has not shown that claim 8 is obvious over Fischer and
`Nakamura.” PO Resp. 38. Patent Owner makes essentially the same
`argument with respect to claim 9. Id. at 40. Thus, while neglecting to raise
`the issue earlier in the proceeding through a request for rehearing at the
`appropriate time, Patent Owner now seeks to benefit from our decision
`instituting on claim 8 and 9 by arguing for a final decision in its favor by
`virtue of our decision not to institute on claim 7.
`Petitioner argues in reply that the record developed by the parties
`since the Institution Decision includes the requisite identification of
`structure, and that the decision not to institute on claim 7 “no longer has any
`bearing on the Board’s ability to evaluate claim 8” or claim 9. Reply 19–20,
`25. Petitioner further asserts that Patent Owner waived its objection to
`institution of trial on claims 8 and 9 by failing to request reconsideration of
`the Institution Decision, and asserts that it would be unfairly prejudiced
`
`3
`
`
`
`IPR2014-00548
`Patent 5,712,870
`
`should a final written decision on the patentability of claims 8 and 9 be
`issued based on the non-institution of review for claim 7. Id. at 18–19, 25.
`We have considered all of the arguments of both parties in regard to
`claims 8 and 9. Because our decision to institute trial on claims 8 and 9 was
`improvidently granted based on our misapprehension of their dependency,
`we vacate the Institution Decision and dismiss inter partes review solely
`with respect to claims 8 and 9 and of claims 8 and 9, and do not issue a final
`written decision under 35 U.S.C. § 318(a) with respect to the patentability of
`claim 8 or claim 9. See 37 C.F.R. § 42.5(a) and § 42.71(a).
`
`ORDER
`
`In consideration of the foregoing, it is hereby:
`ORDERED that the decision to institute inter partes review of claim 8
`and claim 9 of the ’870 patent in the Institution Decision is vacated;
`FURTHER ORDERED that inter partes review of claim 8 and claim
`9 of the ’870 patent is dismissed;
`FURTHER ORDERED that no other change is made to the Institution
`Decision; and
`FURTHER ORDERED that no final written decision shall be issued
`in this proceeding with regard to the patentability of claim 8 or claim 9 of
`the ’870 patent.
`
`
`
`
`4
`
`
`
`IPR2014-00548
`Patent 5,712,870
`
`PETITIONER
`Walter Renner
`Jeremy Monaldo
`Indranil Mukerji
`Adam Shartzer
`David Holt
`Joseph V. Colaianni, Jr.
`FISH & RICHARDSON, P.C.
`axf@fr.com
`IPR27410-0023IP1@fr.com
`IPR27410-0021IP1@fr.com
`
`PATENT OWNERS
`
`Herbert D. Hart, III
`Jonathan R. Sick
`Peter McAndrews
`Michael Carrozza
`Aaron Barkoff
`Kirk Vander Leest
`Michael Cruz
`McANDREW, HELD & MALLOY, LTD.
`hhart@mcandrews-ip.com
`jsick@mcandrews-ip.com
`pmcandrews@mcandrews-ip.com
`mcarrozza@mcandrews-ip.com
`abarkoff@mcandrews-ip.com
`kvanderleest@mcandrews-ip.com
`mcruz@mcandrews-ip.com
`
`James Hietala
`Tim Seeley
`INTELLECTUAL VENTURES I LLC
`jhietala@intven.com
`tim@intven.com
`
`
`
`5
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