Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 61
`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 IPR2017-00864
`Patent 7,523,243 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 49, 1–2.
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 61
`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 IPR2017-00864
`Patent 7,523,243 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 49, 1–2.
`
`
`
`IPR2017-00864
`Patent 7,523,243 B2
`
`
`INTRODUCTION
`I.
`Microchip Technology Inc. (“Patent Owner”) requests rehearing
`(“Req. Reh’g.” or “Request,” Paper 60) of our Final Written Decision
`(“Dec.” or “Decision,” Paper 59), which determined that Petitioner had
`shown, by a preponderance of the evidence, that claims 1, 3–5, 7–9, 11–15,
`and 18–21 of U.S. Patent No. 7,523,243 B2 (Ex. 1001, the “’243 patent”) are
`unpatentable (Dec. 82).
`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 argument as follows.
`Patent Owner correctly asserts our Final Written Decision construed
`the term “dedicated USB connection” to mean “a USB connection that may
`include some shared physical communication path and includes a buffer for
`maintaining dedicated address, configuration, and response information for
`
`
`
`IPR2017-00864
`Patent 7,523,243 B2
`
`the connection.” Req. Reh’g. 1. Patent Owner argues our Decision failed to
`apply that construction in our analysis of the anticipation ground for
`independent claims 1, 3, 7, 18, and 23 (and their respective dependent
`claims). Id. at 1–3. Specifically, Patent Owner asserts our Final Written
`Decision identifies the above construction of dedicated USB connection and
`notes that the question is “discussed further below” but Patent Owner argues
`there is no further discussion below in the Final Written Decision of a buffer
`that maintains “dedicated address, configuration, and response information
`for the connection” as allegedly required by our construction. Id. at 1–2
`(citing Dec. 60, 64–65). Patent Owner contends there is no disclosure in
`Dickens of such a buffer memory and nothing in the Petition or evidence of
`record to support such a finding. Id. at 2. Therefore, Patent Owner argues
`our Final Written Decision should find claims 1, 3, 7, 18, and 23 (and their
`respective dependent claims) patentable for the same reasons the Decision
`found claims 17, 22, and 24 patentable—namely, “because they each require
`‘a buffer for maintaining dedicated address, configuration, and response
`information.’” Id. at 3.
`First, we are not persuaded our Decision overlooked or
`misapprehended any argument. Furthermore, we are unpersuaded that our
`Decision was in error regarding independent claims 1, 3, 7, 18, and 23
`because these claims have a different scope than claims 17, 22, and 24. As
`Patent Owner correctly noted, our construction of “dedicated USB
`connection” is “a USB connection that may include some shared physical
`communication path and includes a buffer for maintaining dedicated
`address, configuration and response information for the connection.” Dec.
`33. Thus, a dedicated USB connection must include a buffer that is capable
`
`
`
`IPR2017-00864
`Patent 7,523,243 B2
`
`of storing/maintaining “dedicated address, configuration and response
`information” regardless of whether such data is actually stored/maintained
`therein.
`Independent claims 1, 3, 7, 18, and 23 do not positively recite that the
`buffer actually does store or maintain such information. Rather, they merely
`require a structure that includes a dedicated USB connection—i.e., a USB
`connection that includes a buffer. Our analysis of independent claims 1, 3,
`and 7 finds that the Petition has shown (by a preponderance of the evidence)
`that Dickens discloses the structure of dedicated USB connections including
`a buffer—namely DRAM 144 of controller 140. Dec. 60. The discussion
`further below identified in the Decision refers to the discussion on pages 64
`through 65 addressing the specific recitation of “endpoint buffers” in
`dependent claims 2, 6, 16, and 25. Dec. 64–65. The Petition again identifies
`DRAM 144 within controller 140 of Dickens as the recited endpoint buffers
`but we were unpersuaded because DRAM 144 is not coupled as recited
`between controller 140 and upstream ports 150. See id.
`By contrast, apparatus claim 17, dependent from claim 7, specifically
`recites that the controller is configured to maintain such “dedicated address,
`configuration and response information.” In other words, claim 17
`positively recites that the controller of claim 7 must be configured to
`maintain the recited information in the buffer of the dedicated USB
`connection. In like manner, apparatus claim 24, dependent from claim 23,
`narrows the apparatus of claim 23 to require that the controller is operable
`to maintain the recited “dedicated address, configuration and response
`information.” Claims 17 and 24, therefore, further limit the structure of the
`claimed apparatus to require a particular function of the claimed controller.
`
`
`
`IPR2017-00864
`Patent 7,523,243 B2
`
`Dependent method claim 22 similarly narrows the method of claim 18 to
`require the additional step of maintaining the “dedicated address,
`configuration and response information.” Each of claims 17, 22, and 24
`positively recites a requirement that “dedicated address, configuration and
`response information” be stored/maintained in the buffer of the dedicated
`USB connections. Thus, for each of these dependent claims (17, 22, and
`24), our Decision found the Petition failed to show where in Dickens that
`specific information was stored/maintained as required by each of these
`dependent claims.
`Therefore, we are unpersuaded by Patent Owner that our reasoning for
`not finding claims 17, 22, and 24 (see Dec. 66–67) unpatentable necessarily
`applies to the recitations of independent claims 1, 3, 7, 18, and 23.
`
`
`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
`arguments or evidence relating to our finding that claims 1, 3, 7, 18, and 23
`(and their respective dependent claims) are unpatentable..
`
`
`V. ORDER
`In view of the foregoing discussion, it is hereby:
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`
`
`IPR2017-00864
`Patent 7,523,243 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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