Trials@uspto.gov
`571-272-7822
`
` Paper 38
`
`
` Entered: April 24, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMC CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01106
`Patent 6,516,442 B1
`____________
`
`
`
`Before JUSTIN T. ARBES, BRIAN J. McNAMARA, and MINN CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`571-272-7822
`
` Paper 38
`
`
` Entered: April 24, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMC CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01106
`Patent 6,516,442 B1
`____________
`
`
`
`Before JUSTIN T. ARBES, BRIAN J. McNAMARA, and MINN CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`IPR2016-01106
`Patent 6,516,442 B1
`
`
`
`I. INTRODUCTION
`Intellectual Ventures II LLC (“Patent Owner”) filed a Request for
`Rehearing (Paper 37, “Req. Reh’g”) of our Final Written Decision (Paper
`36, “Final Dec.”) determining claims 1, 5, 9, 10, 12, 24, 28, 32, 33, and 34 of
`U.S. Patent No. 6,516,442 B1 (Ex. 1001, “the ’442 patent”) to be
`unpatentable. Patent Owner’s Request for Rehearing is solely focused on
`the issues relating to full-duplex channels. Patent Owner points to two
`alleged defects in our Final Written Decision—namely, we misapprehended
`or overlooked (1) the alleged lack of evidence in the Petition that Reschke
`discloses a full-duplex channel (Req. Reh’g 11–12) and (2) Patent Owner’s
`argument in Patent Owner’s Sur-Reply (Paper 33, “PO Sur-Reply”)
`regarding the purported lack of inherent disclosure of full-duplex channels in
`Reschke (Req. Reh’g 12–14). In addition, Patent Owner repeats its assertion
`made in its Sur-Reply that it was deprived of due process because Patent
`Owner was not permitted to submit declaration evidence on “the lack of
`inherent disclosure [in Reschke] of full-duplex communications” after the
`oral hearing. Id. at 14–15; see PO Sur-Reply 6.
`In view of these alleged oversights, Patent Owner requests that we
`(1) vacate the Final Written Decision and find that the challenged claims
`have not been shown to be unpatentable or, in the alternative, (2) “reopen the
`record” to allow Patent Owner to submit a declaration regarding the
`purported lack of inherent disclosure of a full-duplex channel in Reschke.
`Req. Reh’g 2, 15. For the reasons set forth below, Patent Owner’s Request
`for Rehearing is denied.
`
`
`2
`
`
`
`IPR2016-01106
`Patent 6,516,442 B1
`
`
`
`II. STANDARD OF REVIEW
`A party requesting rehearing bears the burden of showing that the
`decision should be modified. 37 C.F.R. § 42.71(d). The challenging party
`“must specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed” in a paper of record. Id. With this in mind, we
`address the arguments presented by Patent Owner.
`
`
`III. ANALYSIS
`A. Alleged Lack of Evidence on Full-Duplex Communication in the Petition
`Patent Owner asserts that the Petition contained no argument or
`evidence that Reschke discloses full-duplex communication. Req. Reh’g 11.
`Patent Owner further argues that our Institution Decision (Paper 9, “Inst.
`Dec.”) and Final Written Decision overlooked this lack of evidence in the
`Petition and erroneously determined that Petitioner met its burden at each
`stage. Req. Reh’g 12.
`Patent Owner mischaracterizes our decisions as well as the record
`evidence underlying the decisions. As discussed in our Institution Decision
`and Final Written Decision, the Petition identified separate circuitries for
`forward and reverse communication pathways in Reschke’s channels and
`argued, based on this disclosure, that Reschke teaches bi-directional and
`full-duplex channels. See Pet. 38–41 (identifying separate circuitries for a
`“forward” pathway (in Fig. 4A) and “reverse” pathway (in Fig. 4B) of a
`channel in Reschke) (citing Ex. 1003, col. 11, ll. 37–40, col. 14, ll. 8–11,
`
`3
`
`
`
`IPR2016-01106
`Patent 6,516,442 B1
`
`
`Figs. 4A, 4B; Ex. 1002 ¶¶ 136–140); Inst. Dec. 28–30 (citing Pet. 38–41);
`Final Dec. 45 (citing Pet. 39–41), 47–48.
`In our Institution Decision, noting that Patent Owner’s Preliminary
`Response did not address Petitioner’s argument and evidence regarding the
`“forward” and “reverse” pathways depicted in Reschke’s Figures 4A and 4B
`(Inst. Dec. 29–30), we invited the parties to address the “channels”
`limitation further in their papers, including whether the “forward” and
`“reverse” pathways in the data switching circuitry of Reschke identified by
`Petitioner “can operate at the same time to provide full-duplex transmission”
`(id. at 30). In its Patent Owner Response (Paper 15, “PO Resp.”), Patent
`Owner rejected our invitation as “improper burden shifting” and did not
`discuss the “forward” and “reverse” pathways of the data switching
`circuitries described in Figures 4A and 4B of Reschke and relied upon by
`Petitioner in the Petition. PO Resp. 50–51.
`As discussed in our Final Written Decision, our invitation to both
`parties to discuss the implications of the data switching circuitry disclosed in
`Figures 4A and 4B of Reschke in no way shifts the burden of proof, which
`remained at all times on Petitioner. Final Dec. 64. More to the point for
`purposes of this Decision, the record shows that Patent Owner was aware of
`our discussion of the evidence in the Petition regarding Reschke’s teaching
`of full-duplex channels and in fact responded to our discussion, if only to
`reject our invitation to discuss the evidence presented in the Petition.
`Nonetheless, Patent Owner in its Request for Rehearing disregards the
`extensive discussion in our decisions (see Req. Reh’g 11 (citing Inst. Dec.
`28–30, Final Dec. 43–44)) and contends we overlooked the purported lack of
`
`4
`
`
`
`IPR2016-01106
`Patent 6,516,442 B1
`
`
`evidence in the Petition. Patent Owner’s argument is unpersuasive because
`it is based on a mischaracterization of our decisions and the underlying
`evidence of record.
`Patent Owner further asserts that our Final Written Decision
`overlooked the testimony of Patent Owner’s declarant, Donald Alpert,
`Ph.D., that “Reschke lacks simple disclosure of a processor that can read
`data from memory simultaneously with writing data to memory, which
`might evince simultaneous communications in both directions.” Req. Reh’g
`14 (citing id. § II.I); see also id. at 10 (citing Ex. 2020 ¶ 81), 7 (citing PO
`Resp. 51–53; Ex. 2020 ¶ 81).
`Patent Owner again mischaracterizes our Final Written Decision and
`the evidence of record. In the cited portion of the Patent Owner Response,
`Patent Owner asserted that “[Reschke’s] Figure 2, like Figure 4, shows data
`proceeding across a data bus in one direction at a time.” PO Resp. 53 (first
`emphasis added) (citing Ex. 2020 ¶ 81). However, as discussed above,
`Patent Owner at the same time did not discuss, due to purported “improper
`burden shifting,” Figures 4A and 4B of Reschke and whether the “forward”
`and “reverse” pathways of the data switching circuitries depicted in Figures
`4A and 4B can operate simultaneously to provide full-duplex
`communication. Id. at 51. On the very same page of the Patent Owner
`Response, Patent Owner lumped Figures 4A, 4B, and 4C of Reschke
`together as “Figure 4” and asserted without adequate explanation that
`“Figure 4 only shows communications crossing the buses in one direction at
`a time, not simultaneously.” Id. (citing Ex. 2020 ¶ 81).
`
`5
`
`
`
`IPR2016-01106
`Patent 6,516,442 B1
`
`
`
`In the cited paragraph of Dr. Alpert’s Declaration, Dr. Alpert similarly
`lumped Figures 4A, 4B, and 4C of Reschke together as “Figure 4” and
`opined that “Reschke’s Figure 4 . . . does not show any bus communicating
`information in both directions at the same time” because “there is no
`indication [in Figure 4] that a PU can read data from memory simultaneously
`with writing data to memory.” Ex. 2020 ¶ 81 (emphases added). Petitioner,
`however, identified precisely those indications in Figures 4A and 4B that Dr.
`Alpert did not find in “Figure 4”—that is, the separate circuitries in Figures
`4A and 4B comprising the “forward” and “reverse” communication
`pathways that may be used to transmit data in full-duplex mode “from the
`processors (purple) and memories (yellow) to respective switch interfaces”
`(Pet. 39–40 (underlined emphases added) (discussing the “forward” portions
`of Reschke’s channels described in Figure 4A)) and “from switch interfaces
`to the processors . . . and shared memory” (id. at 40–41 (underlined
`emphases added) (discussing the “reverse” portions described in Figure
`4B)). Dr. Alpert simply disregarded this evidence presented in the Petition,
`as well as our invitation to discuss the significance of Petitioner’s evidence,
`and stated in a conclusory fashion and without adequate explanation that
`“there is no indication that a PU can read data from memory simultaneously
`with writing data to memory.” Ex. 2020 ¶ 81.
`Hence, the record shows that Patent Owner and Dr. Alpert made only
`conclusory statements regarding “Figure 4” and did not address the
`circuitries described in the very same evidence, i.e., Figures 4A and 4B of
`Reschke. We did not misapprehend or overlook Patent Owner’s argument
`or Dr. Alpert’s testimony regarding “Figure 4”; we simply found them
`
`6
`
`
`
`IPR2016-01106
`Patent 6,516,442 B1
`
`
`unpersuasive, given Petitioner’s arguments and evidence that Patent Owner
`and Dr. Alpert did not address.
`
`B. Alleged Lack of Inherent Disclosure of Full-Duplex Channels in Reschke
`Patent Owner contends that our Final Written Decision
`misapprehended the law on inherent disclosure and overlooked Patent
`Owner’s argument that Reschke does not inherently discloses full-duplex
`channels. Req. Reh’g 12–14. Patent Owner’s argument is not persuasive
`because Petitioner did not argue inherent disclosure of full-duplex channels
`in Reschke. Instead, Petitioner argued, and we agreed, that Reschke
`discloses a full-duplex channel to a person of ordinary skill in the art. See,
`e.g., Pet. 41 (“Reschke discloses . . . bi-directional, full-duplex, point-to-
`point channels that transfer packets.”); Paper 18 (“Pet. Reply”), 26 (“[A]
`person of ordinary skill would not believe Reschke to be a half-duplex
`system.” (emphasis added)); Paper 34 (“Pet. Sur-Sur-Reply”), 2
`(“Petitioner’s position is that a person of ordinary skill in the art, reading
`Reschke, would understand that the disclosed channels are capable of full-
`duplex communication and thus are full-duplex.” (emphasis added) (citing
`In re Preda, 401 F.2d 825, 826 (CCPA 1968)), 3 (“Reschke discloses to a
`[person of ordinary skill in the art] that its channels are full-duplex, not half-
`duplex.”); Final Dec. 45 (“We . . . are persuaded that a person of ordinary
`skill in the art would have understood that in Reschke’s system, data can be
`transmitted separately on these separate pathways at the same time.”
`(emphasis added)).
`As discussed above, Petitioner in the Petition identified separate
`circuitries for forward and reverse communication pathways in Reschke’s
`
`7
`
`
`
`IPR2016-01106
`Patent 6,516,442 B1
`
`
`channels and argued that Reschke discloses bi-directional and full-duplex
`channels. See Pet. 38–41. In its Reply, Petitioner responded to Patent
`Owner’s arguments in Patent Owner Response, as well as our invitation to
`discuss whether the “forward” and “reverse” pathways of Reschke can
`operate at the same time to provide full-duplex transmission, and argued that
`Reschke’s channels are capable of full-duplex transmissions because nothing
`in Reschke prevents communications occurring simultaneously on both
`pathways. Pet. Reply 21.
`More importantly, citing the testimony of its declarant, Douglas W.
`Clark, Ph.D., and the supporting evidence discussed in Dr. Clark’s
`Declaration, Petitioner further argued that, in architectures like Reschke’s
`with separate input and output ports (or separate “forward” and “reverse”
`pathways), a control mechanism is necessary for half-duplex operation to
`ensure and enforce that a channel is never used to transmit data on both
`directions at the same time, and that the lack of any such control or
`enforcement mechanism in Reschke shows that a person of ordinary skill in
`the art would not understand Reschke to disclose a half-duplex system, but,
`rather, would understand that Reschke’s channels are full-duplex channels.
`Id. at 26 (citing Ex. 1028 ¶¶ 63–66; Ex. 2003; Ex. 1036, 9). Dr. Clark
`further opined, citing supporting evidence in the record, that one of ordinary
`skill would not have contemplated incurring additional cost to add the extra
`control mechanism necessary for half-duplex transmission, just to reduce the
`performance in Reschke’s system, i.e., limit the transmission of data to one
`direction at a time. Ex. 1028 ¶¶ 62–66. Petitioner also highlighted these
`points during the oral hearing. See Paper 35 (“Tr.”), 9:14–26; 46:11–25.
`
`8
`
`
`
`IPR2016-01106
`Patent 6,516,442 B1
`
`
`
`Although Patent Owner was provided an opportunity to respond to
`Petitioner’s argument and evidence after the oral hearing, Patent Owner’s
`Sur-Reply did not address Petitioner’s argument and evidence that a person
`of ordinary skill in the art would understand Reschke to disclose full-duplex
`channels because Reschke’s data switches do not include additional controls
`that would be necessary for Reschke to perform half-duplex operation. See
`Final Dec. 47 (noting that Patent Owner did not address Petitioner’s
`argument regarding the lack of additional controls in Reschke for enabling
`half-duplex communications). Instead, Patent Owner asserted Petitioner’s
`argument must be an argument for inherent disclosure and argued that
`Petitioner failed to prove inherent disclosure of full-duplex channels in
`Reschke. PO Sur-Reply 3–4.
`In its Sur-Sur-Reply, Petitioner emphasized that it does not rely on
`inherency1 and reiterated that “Petitioner’s position is that a person of
`ordinary skill in the art, reading Reschke, would understand that the
`disclosed channels are capable of full-duplex communication and thus are
`full-duplex.” Pet. Sur-Sur-Reply 2 (citing Preda, 401 F.2d at 826).
`Although Reschke does not use the word “full-duplex” to describe its
`channels, it is well-settled that “the [prior art] reference need not satisfy an
`ipsissimis verbis test,” i.e., identity of terminology is not required, to
`
`
`1 Patent Owner in its Sur-Reply also asserted that Petitioner failed to prove
`yet another argument Petitioner did not make—namely, “Petering-type”
`anticipation. PO Sur-Reply 4–5 (citing In re Petering, 301 F.2d 676 (CCPA
`1962)). Petitioner in its Sur-Sur-Reply similarly noted that Petitioner never
`relied on “Petering-type” anticipation. Pet. Sur-Sur-Reply 2. For the
`reasons discussed below, and because Petitioner never made these
`arguments, they have no bearing on the outcome of this case.
`9
`
`
`
`IPR2016-01106
`Patent 6,516,442 B1
`
`
`disclose a claim limitation. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
`2009). Moreover, the prior art reference is read from the perspective of one
`with ordinary skill in the art. See Star Scientific, Inc. v. R.J. Reynolds
`Tobacco Co., 655 F.3d 1364, 1374 (Fed. Cir. 2011) (“Whether prior art
`invalidates a patent claim as obvious is determined from the perspective of
`one of ordinary skill in the art.”); Wasica Fin. GmbH v. Cont’l Auto. Sys.,
`Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (“Anticipation is an inquiry
`viewed from the perspective of one skilled in the art.”) (citing Dayco Prods.,
`Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003)
`(“[T]he dispositive question regarding anticipation is whether one skilled in
`the art would reasonably understand or infer from the prior art reference’s
`teaching that every claim element was disclosed in that single reference.”));
`Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565,
`1576 (Fed. Cir. 1991) (“[Anticipation requires that there be] no difference
`between the claimed invention and the reference disclosure, as viewed by a
`person of ordinary skill in the art in the field of the invention.”), overruled in
`part on other grounds by Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1293
`(Fed. Cir. 2009). As discussed above, Petitioner’s position has been
`consistently that Reschke discloses a full-duplex channel to a person of
`ordinary skill in the art. See Pet. 41; Pet. Reply 21, 26; Pet. Sur-Sur-Reply
`2–3. Hence, Patent Owner’s assertion that, because Reschke does not
`expressly describe the buses as “full-duplex,” Petitioner’s argument must be
`an argument for inherent disclosure (PO Sur-Reply 3–4; Req. Reh’g 12–13)
`misunderstands or mischaracterizes Petitioner’s argument and evidence.
`
`10
`
`
`
`IPR2016-01106
`Patent 6,516,442 B1
`
`
`
`Similarly, Patent Owner’s assertion in its Request for Rehearing that
`our Final Written Decision misapprehended the law on inherent disclosure
`and overlooked the purported lack of inherent disclosure of full-duplex
`channels in Reschke misunderstands or mischaracterizes the Final Written
`Decision. As discussed above, we determined that, based on the complete
`record, Petitioner had shown sufficiently that Reschke discloses to a person
`of ordinary skill in the art that Reschke’s channels are capable of full-duplex
`communication. Final Dec. 43–48. Having determined that Reschke
`discloses full-duplex channels, it was not necessary for us to also determine
`whether Reschke inherently discloses full-duplex channels to reach a
`decision in this proceeding. Hence, we did not overlook Patent Owner’s
`argument on inherent disclosure (or lack thereof) Patent Owner made in its
`Sur-Reply, but, rather, declined to address the inherency issue that has no
`bearing on the outcome of this case. Also, we could not have
`misapprehended the law on inherent disclosure because our Final Written
`Decision did not include any consideration of any legal issue relating to
`inherent disclosure.
`
`C. Due Process
`Patent Owner asserts that it was deprived of due process because,
`although Patent Owner was allowed to file a Sur-Reply after the oral
`hearing, Patent Owner was not permitted to submit declaration evidence on
`“the lack of inherent disclosure [in Reschke] of full-duplex
`communications” with its Sur-Reply. Id. at 14–15. Patent Owner’s
`arguments in its Request for Rehearing essentially repeat the same due
`
`11
`
`
`
`IPR2016-01106
`Patent 6,516,442 B1
`
`
`process arguments Patent Owner made in its Sur-Reply. See PO Sur-Reply
`6.
`
`In our Final Written Decision, we addressed Patent Owner’s due
`process arguments and determined that Patent Owner had sufficient notice
`and opportunity to be heard. Final Dec. 63–65. Patent Owner’s Request for
`Rehearing does not identify specifically what Patent Owner believes we
`misapprehended or overlooked in the Final Written Decision. Hence, Patent
`Owner’s Request for Rehearing appears to simply disagree with our Final
`Written Decision. Mere disagreement with a decision is not a proper basis
`for rehearing when a party’s arguments were considered and addressed in
`the decision.
`More importantly, the declaration evidence Patent Owner wishes to
`submit relates to the purported “lack of inherent anticipation by Reschke”
`(Req. Reh’g 2) or “the lack of inherent disclosure [in Reschke] of full-
`duplex communications” (id. at 15). Any additional evidence on the
`purported lack of inherent disclosure in Reschke of full-duplex
`communications would not have affected our Final Written Decision
`because the issue of inherent disclosure has no bearing on the outcome of
`this case, for the reasons explained above.
`For the reasons discussed in our Final Written Decision, Patent Owner
`had sufficient notice and opportunity to be heard and, therefore, was not
`deprived of its due process rights in this proceeding. See Final Dec. 63–65.
`
`
`12
`
`
`
`IPR2016-01106
`Patent 6,516,442 B1
`
`
`
`IV. CONCLUSION
`For the foregoing reasons, we decline to modify our Final Written
`Decision. We also decline to reopen the record to allow Patent Owner to
`submit a declaration regarding the purported lack of inherent disclosure of a
`full-duplex channel in Reschke.
`
`
`V. ORDER
`Accordingly, it is ORDERED that Patent Owner’s Request for
`Rehearing is denied.
`
`
`
`
`
`
`
`13
`
`
`
`IPR2016-01106
`Patent 6,516,442 B1
`
`
`PETITIONER:
`
`Peter Dichiara
`Brian Seeve
`Theodoros Konstantakopoulos
`WILMER CUTLER PICKERING HALE AND DORR LLP
`peter.dichiara@wilmerhale.com
`brian.seeve@wilmerhale.com
`theodoros.konstantakopoulos@wilmerhale.com
`
`
`PATENT OWNER:
`
`John R. King
`Ted Cannon
`Bridget Smith
`KNOBBE MARTENS OLSEN & BEAR, LLP
`2JRK@knobbe.com
`2tmc@knobbe.com
`2bzs@knobbe.com
`
`Tim Seeley
`James Hietala
`INTELLECTUAL VENTURES
`tim@intven.com
`jhietala@intven.com
`
`
`
`14
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
