Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 65
`Entered: December 11, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELPHI TECHNOLOGIES, LLC1,
`Petitioner,
`
`v.
`
`MICROCHIP TECHNOLOGY INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00861
`Patent 7,627,708 B2
`____________
`
`
`
`Before BRIAN J. McNAMARA, DANIEL N. FISHMAN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`1 Petitioner filed a notice of its name change from “Delphi Technologies,
`Inc.” to “Delphi Technologies, LLC.” Paper 53, 1–2.
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 65
`Entered: December 11, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELPHI TECHNOLOGIES, LLC1,
`Petitioner,
`
`v.
`
`MICROCHIP TECHNOLOGY INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00861
`Patent 7,627,708 B2
`____________
`
`
`
`Before BRIAN J. McNAMARA, DANIEL N. FISHMAN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`1 Petitioner filed a notice of its name change from “Delphi Technologies,
`Inc.” to “Delphi Technologies, LLC.” Paper 53, 1–2.
`
`
`
`IPR2017-00861
`Patent 7,627,708 B2
`
`
`INTRODUCTION
`I.
`Microchip Technology Inc. (“Patent Owner”) requests rehearing
`(“Req. Reh’g.” or “Request,” Paper 64) of our Final Written Decision
`(“Dec.” or “Decision,” Paper 63), which determined that Petitioner had
`shown, by a preponderance of the evidence, that claims 1, 3–5, 7–9, 11–15,
`18–21, 23, and 25 of U.S. Patent No. 7,627,708 B2 (Ex. 1001, the “’708
`patent”) are unpatentable (Dec. 72).
`For the reasons below, the request is denied.
`
`
`LEGAL STANDARD
`II.
`“The burden of showing a decision should be modified lies with the
`party challenging the decision,” and, “[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 the record. 37
`C.F.R. § 42.71(d).
`
`
`III. DISCUSSION
`Patent Owner’s Request does not identify any arguments that we
`“misapprehended or overlooked” let alone “specifically identify” all such
`matters. Thus, Patent Owner’s Request fails to comply with our rules.
`Despite this failure of Patent Owner’s Request, we address the substance of
`Patent Owner’s arguments below.
`
`
`A. Claim 25 “ACR” Information
`Patent Owner argues our analysis regarding claims 17, 22, and 24
`regarding “dedicated address, configuration, and response [(‘ACR’)]
`
`
`
`IPR2017-00861
`Patent 7,627,708 B2
`
`information” should have been applied equally to a similar recitation in
`claim 25 and, thus, we should find the Petition failed to establish
`unpatentability of claim 25 for the same reasons as claims 17, 22, and 24.
`Req. Reh’g. 1. Patent Owner acknowledges it “did not specifically argue
`this additional limitation of Claim 25.” Id. Regardless, Patent Owner
`contends our Decision should be modified to find claim 25 was not shown to
`be unpatentable for the same reasons as claims, 17, 22, and 24. Id.
`First, we are not persuaded that our Decision misapprehended or
`overlooked an argument that Patent Owner acknowledges it did not make.
`We could not have overlooked or misapprehend arguments or evidence not
`presented and developed by Patent Owner in its papers.
`Furthermore, even considering Patent Owner’s argument first
`presented in its Request, we remain unpersuaded that our Decision was in
`error regarding claim 25 because claim 25 has a different scope than claims
`17, 22, and 24. Claim 17 further limits the multi-host device controller of
`the USB device of claim 7, from which it depends, such that it is
`“configured” to maintain the ACR information. Claim 22 further limits the
`method of claim 18, from which it depends, such that the method adds the
`step of maintaining ACR information. Claim 24 further limits the controller
`of the USB device of claim 23, from which it depends, such that the
`controller is “operable” to maintain the ACR information. Thus, claims 17,
`22, and 24 arguably limit the structure or method to require certain
`functionality (i.e., a device “configured to” or “operable to”).
`By contrast, claim 25 recites that the controller of claim 23, from
`which it depends, includes an endpoint buffer corresponding to each USB
`host “for storing respective dedicated address, configuration and response
`
`
`
`IPR2017-00861
`Patent 7,627,708 B2
`
`information.” Unlike the limitations of claims 17, 22, and 24, claim 25’s
`recitation of the type of data stored in such a memory (buffer) does not limit
`the structure of the endpoint buffer, USB device, or the controller.
`Arguably, such a recitation is merely non-functional descriptive material
`deserving of little or no weight.2
`Therefore, we are unpersuaded by Patent Owner that our reasoning for
`not finding claims 17, 22, and 24 (see Dec. 56–58) unpatentable necessarily
`applies to the recitations of claim 25 (see Dec. 54–56).
`
`
`B. Interpretation Of “Controller” In Claim 25
`Patent Owner argues our Decision changed theories midstream by
`mapping Dickens to the “controller” of dependent claim 25 differently than
`we mapped Dickens to similar recitations in independent apparatus claims 1,
`3, 7, and 23. Req. Reh’g. 2–6. Specifically, Patent Owner argues that our
`Decision on Institution (Paper 14) adopted Petitioner’s argument that
`identified the recited “controller” as controller 140 in Dickens. Id. at 2
`(citing Paper 14, 27, 32, 33). Patent Owner argues that, based on that
`preliminary interpretation that the recited controller is disclosed in Dickens
`as controller 140, Patent Owner argued in its Response that “claim [25]
`
`2 Our reviewing court has held that nonfunctional descriptive material
`cannot lend patentability to an invention that would have otherwise been
`anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
`2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
`when descriptive material is not functionally related to the substrate, the
`descriptive material will not distinguish the invention from the prior art in
`terms of patentability); King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
`1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any
`new and unobvious functional relationship between the printed matter and
`the substrate.’”) (citations omitted).
`
`
`
`IPR2017-00861
`Patent 7,627,708 B2
`
`recites the controller comprises ‘USB interface circuits’ but, . . . , the
`identified USB interface circuits in Dickens (items 150/158) are NOT within
`the data router 140.” Id. (citing Paper 23, 38). Patent Owner contends that
`our Final Written Decision changed the interpretation on which Patent
`Owner’s Response relied by asserting “we can redraw the dashed line in
`Dickens’ Figure 2 to include host controllers 150 within controller 140.” Id.
`at 3 (citing Dec. 55). Patent Owner argues it was denied the opportunity to
`respond to this alleged change in our interpretation. Id. at 4–6. In particular,
`Patent Owner contends Dickens’ USB controllers 150 cannot be both inside
`the controller as required by claim 25 and “coupled between” the host and
`the controller as recited in claim 5. Id. at 5.
`We disagree. Patent Owner addressed whether claim 25 requires the
`USB interface circuits to be in the controller (see, e.g., Paper 23, 38) and our
`Final Written Decision addressed those arguments (Dec. 54–56). We were
`persuaded by Petitioner’s argument that the transition phrase “comprising”
`does not require that the USB interface circuits be physically within the
`controller that comprises those circuits. Id. Our Decision noted that
`Dickens’ Figure 2 depicts controller 140 as a dashed line box surrounding
`various components but expressly discloses that the components of its
`controller 140 may be distributed throughout device 130. Dec. 56. We
`determined,
`Just as a dashed line may be drawn around distinct components
`of Dickens Figure 2 to identify the claimed “device” (see
`section II.A.4.b), we can redraw the dashed line in Dickens’
`Figure 2 to include host controllers 150 within controller 140.
`An ordinarily skilled artisan would reasonably infer such a
`configuration from Dickens.
`
`
`
`IPR2017-00861
`Patent 7,627,708 B2
`
`Dec. 55. Patent Owner’s arguments on rehearing amount to a mere
`disagreement with our analysis or conclusion. Mere disagreement with our
`analysis or conclusion is not a sufficient basis on which to request rehearing.
`
`
`IV. CONCLUSION
`We have reviewed all of the arguments in the Request for Rehearing
`and find them to be without merit. Patent Owner has not persuasively
`shown that our Final Written Decision misapprehended or overlooked any
`argument or evidence relating to our finding that claim 25 is unpatentable.
`
`
`V. ORDER
`In view of the foregoing discussion, it is hereby:
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`
`
`IPR2017-00861
`Patent 7,627,708 B2
`
`PETITIONER:
`Scott A. McKeown
`James L. Davis, Jr.
`ROPES & GRAY LLP
`scott.mckeown@ropesgray.com
`james.l.davis@ropesgray.com
`
`PATENT OWNER:
`Bruce W. Slayden II
`Brian C. Banner
`R. William Beard, Jr.
`Truman H. Fenton
`Jerry F. Suva
`SLAYDEN GRUBERT BEARD PLLC
`bslayden@sgbfirm.com
`bbanner@sgbfirm.com
`wbeard@sgbfirm.com
`tfenton@sgbfirm.com
`jsuva@sgbfirm.com
`
`
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