Paper 8
`Trials@uspto.gov
`571-272-7822 Entered: January 30, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NVIDIA CORPORATION,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LIMITED,
`Patent Owner.
`____________
`
`Case IPR2017-01819
`Patent 7,124,325 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BARBARA A. PARVIS, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a); 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: January 30, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NVIDIA CORPORATION,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LIMITED,
`Patent Owner.
`____________
`
`Case IPR2017-01819
`Patent 7,124,325 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BARBARA A. PARVIS, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a); 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2017-01819
`Patent 7,124,325 B2
`
`I. INTRODUCTION
`NVIDIA Corporation (“Petitioner”) filed a Petition for inter partes
`review of claims 14, 16–18, and 20 (“the challenged claims”) of U.S. Patent
`No. 7,124,325 B2 (Ex. 1001, “the ’325 Patent”). Paper 2 (“Pet.”). Polaris
`Innovations Limited (“Patent Owner”) filed a Preliminary Response. Paper
`6 (“Prelim. Resp.”).
`Upon consideration of the Petition, the Preliminary Response and the
`supporting evidence, we exercise our discretion to deny institution of trial on
`this Petition under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a).
`Accordingly, we do not institute an inter partes review as to any of the
`challenged claims of the ’325 Patent.
`
`Related Matters
`A.
`The parties state that the ’325 Patent is the subject of a pending
`lawsuit that includes assertions against Petitioner. Pet. 74; Paper 3 (“Patent
`Owner’s Initial Mandatory Notices”), 2–3. Patent Owner identifies a lawsuit
`pending in the Northern District of California, i.e., Polaris Innovations Ltd.
`v. Dell Inc., Case No. 4:16-cv-07005 (N.D. Cal.).1 Patent Owner’s Initial
`Mandatory Notices, 2–3.
`Petitioner previously challenged claims 1–20 of the ’325 Patent in
`IPR2017-00382 (“the 382 IPR”). Pet. 74. Institution was denied in the 382
`
`
`1 This lawsuit is referred to herein as the “companion district court lawsuit.”
`The companion district court lawsuit was transferred from the United States
`District Court for the Western District of Texas on December 5, 2016. Id.
`That case was Polaris Innovations Ltd. v. Dell Inc., Case No. 5:16-cv-00451
`(W.D. Tex.). Pet. 74; Patent Owner’s Initial Mandatory Notices, 2.
`2
`
`
`
`IPR2017-01819
`Patent 7,124,325 B2
`
`IPR on June 23, 2017. See Ex. 1006 (Decision denying institution of inter
`partes review in the 382 IPR).
`
`B. The ’325 Patent
`The ʼ325 Patent is directed to trimming interface devices on
`semiconductor devices. Ex. 1001, 1:10–12. Figure 3 of the ’325 Patent is
`reproduced below.
`
`
`Figure 3 illustrates a schematic diagram of a configuration for
`trimming interface devices in a semiconductor device.
`
`3
`
`
`
`IPR2017-01819
`Patent 7,124,325 B2
`
`As shown in Figure 3 above, semiconductor device 1 includes
`trimming unit 5 that is connected to interface devices 10a–10d in a driver
`device. Id. at 7:61–8:6. Trimming unit 5 is connected to test control unit 24
`in test apparatus 2. Id. at 8:8–9. Control path 34 connects test apparatus 2 to
`trimming register 14. Id. at 8:10–11.
`
`C. Illustrative Claim
`Petitioner challenges claims 14, 16–18, and 20 of the ’325 Patent.
`Pet. 1. Claim 14 is an independent claim. Claims 16–18 and 20 depend,
`directly or indirectly, from claim 14. Independent claim 14, reproduced
`below, is illustrative of the claimed subject matter:
`14. A semiconductor device comprising:
`at least one interface device having a settable control element;
`a trimming register connected to said control element; and
`a trimming unit for writing to said trimming register based on a
`measured variable detected on said interface device;
`said trimming unit connected to said interface device and said
`trimming register.
`Id. at 10:26–34.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 14, 16–18, and 20 are unpatentable,
`under 35 U.S.C. § 103(a), based on the following grounds (Pet. 1–2):
`
`4
`
`
`
`IPR2017-01819
`Patent 7,124,325 B2
`
`Reference(s)
`Volk 4502
`Volk 1053
`Volk 450 and Hiraki4
`Volk 105 and Hiraki
`
`
`
`Basis
`§ 102(e)
`§ 102(b), (e),
`(a)
`§ 103(a)
`§ 103(a)
`
`Challenged Claims
`14 and 16–18
`14, 16, and 17
`14, 16–18, and 20
`14, 16–18, and 20
`
`II. ANALYSIS
`
`A. Discretionary Non-Institution
`Patent Owner argues Petitioner used the Preliminary Response in the
`382 IPR5 and the Decision Denying Institution from the 382 IPR6 “as a
`roadmap to mount new challenges to the same claims and has done so
`without offering any reasonable explanation or justification for why it
`deserves to have a second chance to attack the ’325 Patent.” Prelim. Resp.
`16–17. Patent Owner characterizes the Petition in the instant proceeding as
`a “follow-on” Petition and argues it poses an inequity to Patent Owner. Id.
`at 22. Consistent with Patent Owner’s contentions (id. at 1–2), the 382 IPR
`petition presented two challenges to each of claims 1–20 of the ’325 Patent
`(382 Pet. 1) and the instant Petition presents four additional challenges to
`
`
`2 U.S. Patent No. 6,693,450 B1, issued Feb. 17, 2004 (Ex. 1004) (“Volk
`450”).
`3 U.S. Patent No. 6,356,105 B1, issued Mar. 12, 2002 (Ex. 1005) (“Volk
`105”).
`4 U.S. Patent No. 6,201,733 B1, issued Mar. 13, 2001 (Ex. 1008) (“Hiraki”).
`5 IPR2017-00382, Paper 7 and submitted as Exhibit 1007 in the instant
`proceeding.
`6 IPR2017-00382, Paper 10 and submitted as Exhibit 1006 in the instant
`proceeding.
`
`5
`
`
`
`IPR2017-01819
`Patent 7,124,325 B2
`
`independent claim 14 and at least two additional challenges to claims 16–18
`and 20 of the ’325 Patent (Pet. 1).
`Petitioner contends that each of the grounds in the instant proceeding
`is distinct and different from each other and the grounds set forth in the
`earlier challenge and, therefore, the grounds are not redundant. Pet. 70–71.
`Petitioner, additionally, contends that the art presented in the instant Petition
`“addresses the Board’s previous construction of the term ‘interface device’”
`and presents “little to no risk of inequity” to Patent Owner. Id. at 71.
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a) (authorizing institution of an inter partes review under particular
`circumstances, but not requiring institution under any circumstances);
`37 C.F.R. § 42.108(a) (“the Board may authorize the review to proceed”)
`(emphasis added); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367
`(Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is permitted, but
`never compelled, to institute an IPR proceeding”). In assessing the equities
`of allowing Petitioner’s second challenge to certain claims of the ’325
`Patent, multiple factors, as discussed below, weigh in favor of denying
`institution of the present Petition under § 314(a) in light of the specific facts
`of this case. See General Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`Case IPR2016-01357, slip op. at 15–19 (PTAB Sept. 6, 2017) (Paper 19)
`(“General Plastic”) (Section II.B.4.i designated as precedential) (citing
`NVIDIA Corp. v. Samsung Elec. Co., IPR2016-00134, slip op. 6−7 (PTAB
`May 4, 2016) (Paper 9)).
`
`6
`
`
`
`IPR2017-01819
`Patent 7,124,325 B2
`
`1.
`
`First Factor: Petitioner Previously Filed a Petition Challenging All
`of the Claims Presently Challenged
`Petitioner previously challenged claims 1–20 of the ’325 Patent in the
`382 IPR. 382 Pet. Patent Owner filed a preliminary response in that case.
`Ex. 1007. We denied institution of the 382 IPR petition, determining, for
`example, that Petitioner had not established a reasonable likelihood that it
`would prevail in showing that independent claim 14 was unpatentable, under
`35 U.S.C. § 103(a), over the combinations of (1) Tanaka and Ikehashi; and
`(2) Garrett and Hassoun. Ex. 1006, 12–17, 19–29.
`In the present Petition, Petitioner challenges claims 14, 16–18, and 20
`of the ’325 Patent (Pet. 1–2), which are a subset of the claims challenged in
`the 382 IPR petition (382 Pet. 1). Thus, all of the claims challenged in this
`Petition were challenged by the same petitioner in the previous petition.
`
`2.
`
`Second Factor: Petitioner Knew, or Should Have Known, of the
`Asserted Prior Art When Filing the Previous Petition
`In determining whether to institute review based on subsequent
`petitions challenging the same claims of the same patent, we look to whether
`the petitioner knew, or should have known, of the prior art asserted in its
`later petition when it filed the earlier one. See Conopco, Inc. v. Proctor &
`Gamble Co., Case IPR2014-00506, slip op. at 4–5 (PTAB Dec. 10, 2014)
`(Paper 25) (informative). Petitioner contends that the Petition in the instant
`proceeding “is based on different art” than was asserted in the 382 IPR. Pet.
`71.
`
`The relevant question under the second factor is whether Petitioner
`knew or should have known of the asserted prior art, i.e., Volk 450, Volk
`105, and Hiraki at the time of filing its 382 IPR petition (December 19,
`
`7
`
`
`
`IPR2017-01819
`Patent 7,124,325 B2
`
`2016). Each of Volk 450, Volk 105, and Hiraki is a U.S. Patent, which
`consistent with Patent Owner’s contentions (Prelim. Resp. 18), was
`published more than 12 years, 14 years, and 15 years, respectively, before
`the filing date of the first Petition. See Ex. 1004, [45]; Ex. 1005, [45];
`Ex. 1008, [45]. Petitioner does not indicate whether it knew of the asserted
`prior art when it filed the 382 IPR petition. Pet. 70–72. Even if Petitioner
`did not know of these references, Petitioner did not provide any explanation
`as to why these references could not have been found with a reasonably
`diligent search at the time of the earlier petition. See General Plastic,
`slip op. at 11 (“Petitioner . . . provided no explanation why it could not have
`found this new prior art earlier—prior to filing the first-filed petitions—
`through the exercise of reasonable diligence.”), 19–20 (“the record is devoid
`of any explanation why Petitioner could not have found the newly asserted
`prior art in any earlier search(es) through the exercise of reasonable
`diligence”).
`
`Third Factor: Petitioner Had the Benefit of Patent Owner’s
`3.
`Preliminary Response and the Board’s Decision on Institution in the
`382 IPR When Filing the Present Petition
`Importantly, Petitioner had the benefit of knowing and learning from
`the arguments made by Patent Owner in the 382 IPR when it filed the
`present Petition. Patent Owner filed its preliminary response in the 382 IPR
`on April 4, 2017. See Ex. 1007, 69. We issued our Decision Denying
`Institution of Inter Partes Review in the 382 IPR on June 23, 2017. Ex.
`1006, 1. Thus, when Petitioner filed the present Petition on July 25, 2017,
`Petitioner had access to both Patent Owner’s preliminary response in the 382
`
`8
`
`
`
`IPR2017-01819
`Patent 7,124,325 B2
`
`IPR and our Decision Denying Institution of an inter partes review in the
`382 IPR.
`The elapsed time between when Petitioner had Patent Owner’s
`Preliminary Response and the Decision Denying Institution addressing the
`382 IPR petition and when Petitioner filed the present Petition provided
`Petitioner sufficient time to take advantage of Patent Owner’s responses and
`the Board’s findings and conclusions with respect to the 382 IPR petition.
`When Petitioner filed the present Petition on July 25, 2017, it had Patent
`Owner’s preliminary response to the 382 IPR petition for over three months,
`and our Decision Denying Institution addressing the 382 IPR petition for
`over one month. See Ex. 1007, 69; Ex. 1006, 1. Thus, Petitioner not only
`had relevant information from Patent Owner and the Board when it filed the
`present Petition, but had ample time to take advantage of that information in
`drafting the present Petition.
`
`4.
`
`Fifth Factor: Petitioner Has Not Provided an Adequate Reason Why
`We Should Permit This Later Attack on the Claims of the ’325 Patent
`Petitioner contends that we denied institution in the 382 IPR because
`we “agreed with the Patent Owner’s construction of the term ‘interface
`device’” and the Petition in the instant proceeding “addresses” our
`construction of the term “interface device” in the 382 IPR that Petitioner
`“could not have known about.” Pet. 71. Petitioner, however, was aware
`when it filed the petition in the 382 IPR that claim construction is always an
`issue. 37 C.F.R. § 42.104(b)(3). Also, we explained in our Decision in the
`382 IPR, we were persuaded based on the “consistent usage” of the term
`“interface device” in the ’325 Patent Specification and we set forth our
`
`9
`
`
`
`IPR2017-01819
`Patent 7,124,325 B2
`
`analysis of the usage of that term throughout the ’325 Patent Specification in
`our Decision. Ex. 1006, 8–10.
`Furthermore, as we explained in the Decision in the 382 IPR,
`Petitioner did not offer contrary guidance, explicitly or implicitly, as to how
`“interface device” should be interpreted and, instead, identified examples of
`interface devices in the ’325 Patent Specification that are consistent with the
`construction adopted in the 382 IPR Decision. Id. Indeed, as we explained,
`“Petitioner acknowledges that output drivers and terminations are exemplary
`‘interface devices’ contending ‘[i]nterface devices, like output drivers and
`terminations [ ], have parameters that affect reading and writing from a data
`bus.’” Ex. 1006, 8 (alteration in original) (citing 382 IPR Pet. 3). We
`further noted that “[a]dditionally, Dr. Tredennick testifies that ‘interface
`devices include output drivers and terminations.’” Id. (citing 382 IPR Ex.
`1002 ¶ 16). We, therefore, are not persuaded that Petitioner could not have
`known about the broadest reasonable interpretation of “interface device”
`based on the consistent usage of that term in the ’325 Patent Specification,
`consistent with the examples identified by Petitioner.
`Petitioner also contends that the instant Petition “challenges a smaller
`subset” of the claims challenged in the 382 IPR petition. Pet. 71. As we
`indicated in the 382 IPR Decision, with respect to one of the grounds, the
`382 IPR petition “lacks a requisite showing” that components identified in
`the Petition “are associated with an interface.” Ex. 1006, 16–17. With
`respect to the second of the grounds, we noted that certain of Petitioner’s
`contentions were “conclusory” and Petitioner did not provide “sufficient
`explanation as to which of the prior art teachings applies or why and how
`
`10
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`
`
`IPR2017-01819
`Patent 7,124,325 B2
`
`one having ordinary skill in the art would have combined or modified the
`different teachings identified by Petitioner.” Id. at 26–28.
`Petitioner’s strategy of challenging a smaller subset of claims and
`modifying its asserted art and argument based on Patent Owner’s
`contentions and our Decision Denying Institution in the 382 IPR imposes
`inequities on Patent Owner. Furthermore, we are not persuaded that the
`determination regarding the broadest reasonable interpretation of “interface”
`was unexpected and, instead, that determination was consistent with
`Petitioner’s implicit claim construction in its contentions regarding that
`term.
`
`Summary
`B.
`In sum, the factors discussed above support denying institution of the
`Petition, and we determine that none of the other factors discussed in
`General Plastic favor institution. Given the circumstances present in this
`case, we determine that Petitioner used Patent Owner’s preliminary response
`and our previous decision denying institution in the 382 IPR as a “roadmap”
`to modify the grounds asserted and the arguments made in the Petition,
`which is unfair to Patent Owner, and is an inefficient use of the Board’s time
`and resources. We, thus, exercise our discretion to deny institution of the
`Petition.
`
`III. CONCLUSION
`For the foregoing reasons, we exercise our discretion under 35 U.S.C.
`§ 314 and 37 C.F.R. § 42.108(a) not to institute review of claims 14, 16–18,
`and 20 of the ’325 Patent.
`
`11
`
`
`
`IPR2017-01819
`Patent 7,124,325 B2
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that the Petition is denied.
`
`
`
`
`PETITIONER:
`David M. Hoffman
`Jeremy J. Monaldo
`W. Karl Renner
`FISH & RICHARDSON P.C.
`hoffman@fr.com
`jjm@fr.com
`axf-ptab@fr.com
`
`
`PATENT OWNER:
`Matthew Phillips
`Derek Meeker
`Kevin Laurence
`LAURENCE & PHILLIPS IP LAW LLP
`mphillips@lpiplaw.com
`dmeeker@lpiplaw.com
`klaurence@lpiplaw.com
`
`Bryan Richardson
`WiLAN Inc.
`brichardson@wilan.com
`
`
`
`12
`
`
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