Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 13
`Entered: June 8, 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 IPR2014-01562
`Patent 6,977,944 B2
`
`
`Before THOMAS L. GIANNETTI, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`
`
`GIANNETTI, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 CFR § 42.71(d)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 13
`Entered: June 8, 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 IPR2014-01562
`Patent 6,977,944 B2
`
`
`Before THOMAS L. GIANNETTI, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`
`
`GIANNETTI, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 CFR § 42.71(d)
`
`
`
`
`
`
`
`IPR2014-01562
`Patent 6,977,944 B2
`
`
`INTRODUCTION
`Marvell Semiconductor, Inc. (“Petitioner”) filed a Petition pursuant to
`
`35 U.S.C. §§ 311–319 to institute an inter partes review of claims 7–12 and
`19–24 of U.S. Patent No. 6,977,944 B2 (“the ’944 patent”). Paper 2
`(“Pet.”). Intellectual Ventures I LLC (“Patent Owner”) filed a Preliminary
`Response. Paper 7 (“Prelim. Resp.”). In our Decision entered April 16,
`2015, we denied the Petition as to all challenged claims. Paper 11
`(“Decision”).
`Petitioner requests rehearing of our decision denying inter partes
`
`review. Paper 12 (“Req. Reh’g”). Petitioner challenges the conclusion that
`the Petition failed to demonstrate that two limitations of independent claims
`7 and 19 of the ʼ944 patent (the only independent claims challenged) are
`missing from the main prior art reference, U.S Patent 7,046,690 to Sherman
`(Ex. 1104; “Sherman”). Req. Reh’g 1.
`
`The Petition challenged claims 7, 8, 10, 19, 22, and 23 as anticipated
`by Sherman and claims 9, 11, 12, 20, 21, and 24 as obvious over Sherman
`and admitted prior art. Pet. 3. Because Petitioner relies on the same
`arguments for anticipation and obviousness (Req. Reh’g 11), we do not
`separately address obviousness in this decision.
`
`More specifically, Petitioner’s stated grounds for rehearing are that
`(1) the Board overlooked or misapprehended evidence concerning the effect
`on the transmitting station of sending the clear-to-send (CTS) frame
`described in Sherman (Req. Reh’g 3–7); and (2) the Board overlooked or
`misapprehended evidence regarding the CTS frame’s duration field in
`Sherman (id. at 7–10). Petitioner asserts that “by applying Patent Owner’s
`
`2
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`IPR2014-01562
`Patent 6,977,944 B2
`
`
`view of Sherman, the Board overlooked certain incontrovertible truths
`regarding the reference.” Id. at 2. For the reasons that follow, Petitioner’s
`request for rehearing is denied.
`
`
`ANALYSIS
`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.
`
`
`1. Overview
`Independent claims 7 and 19, and the other challenged claims, contain
`
`the limitation of a “transmitter” transmitting a first and a second signal. As
`claimed, the first signal “conveys” at least one data frame. The purpose of
`the second signal, which precedes the first signal, is to reserve the shared
`medium for stations using another protocol. Pet. 23. In the Decision, the
`Board concluded that Petitioner had not met its burden of demonstrating that
`this “transmitter” limitation was met by Sherman. Decision 10–11.
`
`The claims also contain the following limitation: “said second signal
`conveys a frame indicating clear to send that is addressed to the sender of
`said frame indicating clear to send.” Claim 7 and its dependent claims
`further specifies: “said frame indicating clear to send comprises a duration
`
`3
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`IPR2014-01562
`Patent 6,977,944 B2
`
`
`field that has a value based on the expected length of time required to
`transmit at least one data frame.” Claim 19 and its dependent claims
`contain similar language.1 In the Decision, the Board concluded that
`Petitioner had not met its burden of demonstrating that this “duration value”
`limitation was met by Sherman. Decision 11–12.
`2. The “Transmitter” Limitation
`This claim element is discussed at pages 23–24 of the Petition. There,
`in describing how Sherman meets this element, Petitioner relies on Figure 7
`of Sherman, explaining: “If a transmitting station operating under enhanced
`802.11e standards intends to reserve the shared-medium for transmission,
`the transmitting station transmits a signal 80 that includes a clear-to-send
`(CTS) frame (i.e., the second signal) using a protocol understood by all
`stations on the shared medium, to prevent all such stations (not just 802.11e
`stations) from using the medium. See Sherman at 12:10-16.” Pet. 23
`(emphasis added).2 From this analysis, the Board determined that Petitioner
`had failed to demonstrate that the limitation was met. Decision 10. The
`Board determined that, based on the record presented by Petitioner, a station,
`upon receiving a CTS sent to itself would set its network navigation vector
`
`
`1 Claim 19 specifies: “said frame indicating clear to send comprises a
`duration field that has a value based on the expected length of time required
`to transmit the subsequent data frames conveyed by said first signal and said
`third signal.”
`2 The portion of Sherman cited by Petitioner states: “For example, as shown
`in FIG. 7, a station practicing the enhanced 802.11e standards could send a
`signal 80, such as a clear-to-send signal (CTS), to itself with a duration field
`set to a specified duration value. All stations including stations practicing the
`enhanced 802.11e standards would set their network allocation vectors
`(NAV) accordingly.” Ex. 1104, 12:10–16 (emphasis added).
`
`4
`
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`IPR2014-01562
`Patent 6,977,944 B2
`
`
`(NAV) so that for the duration indicated in the CTS signal, it cannot transmit
`the “one or more data frames” called for in the claims. Id. at 10.
`
`In the Rehearing Request, Petitioner relies on two lines of a Sherman
`provisional application (Ex. 1107). Req. Reh’g. 5. Petitioner asserts that
`this provisional application was incorporated by reference into Sherman, and
`therefore is available as part of the reference. Id. at 4, n.1. The lines read as
`follows: “It is possible that the AP [Access Port] would not want to involve
`another terminal. In this case, the AP could send a CTS to itself. The AP
`would of course ignore the CTS.” Id. at 4:1:2.
`
`Petitioner contends that this citation to the Sherman provisional
`application “reveals” that the above reference to “all stations” in Sherman
`really means “all stations other than the CTS-sending station.” Req. Reh’g
`5. We are not persuaded by this argument that anything has been
`overlooked or misapprehended.
`
`First, this is a newly-presented argument and therefore could not have
`been overlooked or misapprehended in the Decision. While Petitioner is
`correct that the two lines from the provisional identified in the rehearing
`request were cited in the Petition, at page 25, the purpose of the citation was
`to establish that Sherman met the claim requirement for a self-addressed
`CTS frame. See Pet. 25 (“In the Sherman Provisional, a station seeking to
`transmit sends a clear-to-send (CTS) frame addressed to itself.”)
`Confirming this, in quoting the two lines from the Sherman provisional, the
`Petition omits the very sentence (“The AP would of course ignore the
`CTS.”) now alleged to have been overlooked by the Board.
`
`5
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`IPR2014-01562
`Patent 6,977,944 B2
`
`
`A second reason why Petitioner’s argument is unavailing is the
`
`context of the two-line statement in the Sherman provisional. The Sherman
`provisional describes several embodiments. The two lines appear in the
`description of an embodiment of the invention in which an AP (described
`there as a specific type of station (abbreviated STA)) wishes to prevent
`legacy terminals from causing a Beacon message which the AP originates
`from being transmitted late. Ex. 1107, 3:11–14. Petitioner does not explain
`how this embodiment would be pertinent to the claimed invention, which is
`directed to different protocols sharing a communications medium.
`
`In the Sherman provisional, the description of the embodiment
`directed to reserving media for protocol sharing is separate from this
`description of the Beacon message embodiment starting at page 4, line 37, of
`the Sherman provisional. Petitioner does not explain how these two
`embodiments, which the Sherman provisional treats separately, should be
`combined, or whether it would be proper to combine them.
`As explained by the Federal Circuit in Net MoneyIN, Inc. v. VeriSign,
`
`Inc., 545 F.3d 1359,1371 (Fed. Cir. 2008): “[U]nless a reference discloses
`within the four corners of the document not only all of the limitations
`claimed but also all of the limitations arranged or combined in the same way
`as recited in the claim, it cannot be said to prove prior invention of the thing
`claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” In Net
`MoneyIN, a prior art reference that disclosed two separate protocols for
`processing Internet credit card transactions did not anticipate a system for
`processing Internet credit card transactions in a patent claim, given that
`neither protocol contained all five links arranged or combined in the same
`
`6
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`IPR2014-01562
`Patent 6,977,944 B2
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`way as claimed in patent. Id. The Court also determined that it was
`“wrong” to combine the separate protocols in concluding that a claim was
`anticipated. Id. The Court relied on In re Arkley, 455 F.2d 586, 587 (CCPA
`1972), which cautions against “picking, choosing, and combining various
`disclosures not directly related to each other by the teachings of the cited
`reference.” For similar reasons, we are not persuaded by Petitioner’s
`argument combining elements from separate embodiments of the Sherman
`provisional.
`
`In summary, Petitioner has failed to demonstrate that the Board
`abused its discretion in denying the Petition on this ground.
`3. The “Duration Value” Limitation
`This claim element is discussed at pages 25–28 of the Petition. In the
`
`Rehearing Request, Petitioner again relies on several lines from the Sherman
`provisional that it contends were overlooked or misapprehended, including
`the following sentence: “The earlier frames therefore include a Duration
`value, which is the time it will take to transmit some of the frames
`immediately following in the sequence.” Req. Reh’g 7–8.
`
`We are not persuaded by this argument that rehearing should be
`granted. Petitioner has not demonstrated that this description relates to the
`protocol sharing example described by Sherman. In fact, the quoted lines
`come from the Background of the Invention section of the Sherman
`provisional, and appear to be describing the Virtual Carrier sense feature of
`the standard 802.11 protocol. Ex. 1107, 1:20–21. Thus, Petitioner has failed
`to demonstrate that the duration value limitation is met by Sherman.
`Instead, Petitioner has combined various disclosures in the Sherman
`
`7
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`IPR2014-01562
`Patent 6,977,944 B2
`
`
`provisional, picking and choosing features from each, an approach that is
`prohibited. Net MoneyIN, Inc., 545 F.3d at 1371.
`CONCLUSION
`Petitioner has not carried its burden of demonstrating that our
`
`Decision denying institution of inter partes review of claims 7–12 and 19–
`24 of the ʼ944 patent misapprehended or overlooked any matters or that the
`Board abused its discretion. 37 C.F.R. § 42.71(d).
`
`For the foregoing reasons, Petitioner’s Request for Rehearing is
`denied.
`
`8
`
`
`
`
`
`
`
`9
`
`IPR2014-01562
`Patent 6,977,944 B2
`
`PETITIONER:
`Walter Renner
`axf@fr.com
`
`Jeremy Monaldo
`IPR27410-0022IP2@fr.com
`
`PATENT OWNER:
`Herbert Hart
`hhart@mcandrews-ip.com
`
`Kirk Vander Leest
`kvanderleest@mcandrews-ip.com
`
`James Hietala
`jhietala@intven.com
`
`Tim Seeley
`tim@intven.com
`
`Michael Cruz
`mcruz@mcandrews-ip.com
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