Trials@uspto.gov
`571-272-7822
`
`Paper 30
`Date: January 9, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTEL CORPORATION,
`Petitioner,
`v.
`QUALCOMM, INC,
`Patent Owner.
`
`IPR2018-012611
`Patent 9,535,490 B2
`
`
`
`
`
`
`
`
`
`Before DANIEL N. FISHMAN, DANIEL J. GALLIGAN, and
`AARON W. MOORE, Administrative Patent Judges.
`FISHMAN, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`1 IPR2018-01293, IPR2018-01295, IPR2018-01344, and IPR2018-01346,
`each directed to claims of this same patent, have been consolidated with the
`instant proceeding in accord with 37 C.F.R. § 42.122(a).
`
`
`
`
`571-272-7822
`
`Paper 30
`Date: January 9, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTEL CORPORATION,
`Petitioner,
`v.
`QUALCOMM, INC,
`Patent Owner.
`
`IPR2018-012611
`Patent 9,535,490 B2
`
`
`
`
`
`
`
`
`
`Before DANIEL N. FISHMAN, DANIEL J. GALLIGAN, and
`AARON W. MOORE, Administrative Patent Judges.
`FISHMAN, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`1 IPR2018-01293, IPR2018-01295, IPR2018-01344, and IPR2018-01346,
`each directed to claims of this same patent, have been consolidated with the
`instant proceeding in accord with 37 C.F.R. § 42.122(a).
`
`
`
`
`
`IPR2018-01261
`Patent 9,535,490 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Intel Corporation (“Petitioner”) requests inter partes review of
`claim 31 of U.S. Patent No. 9,535,490 B2 (the “’490 patent,” Ex. 1001)
`pursuant to 35 U.S.C. § 311 et seq. Paper 3 (“Petition,” “Pet.,” or
`“1261PET”). Qualcomm, Inc. (“Patent Owner”) filed a Preliminary
`Response. Paper 7 (“Prelim. Resp.”). On January 15, 2019, based on the
`record before us at that time, we instituted an inter partes review of claim 31
`on the sole ground of unpatentability asserted in the Petition. Paper 8
`(“Decision on Institution” or “Dec. on Inst.”).
`Concurrently with the filing of this Petition, Petitioner filed four
`additional petitions in each of IPR2018-01293, IPR2018-01295, IPR2018-
`01344, and IPR2018-01346. Each of those four petitions challenge other
`claims of the ’490 patent.2 Patent Owner filed a Preliminary Response in
`each of these additional cases presenting similar arguments to those
`presented in the Preliminary Response in the instant case. The grounds
`asserted, the references relied upon for those grounds, and the arguments
`presented, in each of these four additional petitions are similar to those of
`the instant matter. In each of these four additional, concurrently filed
`petitions, based on the record before us and for reasons similar to those in
`the instant case, we instituted review on all asserted grounds for the claims
`challenged in each petition. In an Order entered January 29, 2019, we
`consolidated cases IPR2018-01293, IPR2018-01295, IPR2018-01344, and
`
`
`2 Where all five petitions are substantively the same, we cite only to the
`petition in the instant case (IPR2018-01261). In like manner, where each of
`our five Decisions on Institution reaches the same conclusion, we cite only
`to our Decision on Institution for the instant case (IPR2018-01261).
`
`2
`
`
`
`IPR2018-01261
`Patent 9,535,490 B2
`IPR2018-01346 into the instant case. Paper 10. Having instituted all
`challenged claims in each of the petitions on all grounds, the consolidated
`proceeding involves inter partes review of claims 1–6, 8, 9, 11–13, 16, 17,
`20, 22–24, 26–28, 30, and 31 (the “challenged claims”).
`In this consolidated proceeding, Patent Owner filed a Patent Owner’s
`Response (Paper 21, “PO Resp.”),3 Petitioner filed a Reply (Paper 20,
`“Reply”), and Patent Owner filed a Sur-Reply (Paper 23, “Sur-Reply”).
`Oral argument was held on October 9, 2019 and a transcript of that
`hearing is in the record. Paper 29 (“Tr.”).
`Upon consideration of the complete record, we determine by a
`preponderance of the evidence that claims 1–6, 8, 9, 11–13, 16, 17, 20, 22–
`24, 26–28, 30, and 31 (all challenged claims) are unpatentable.
`B. Consolidated Papers and Exhibits
`The petitions filed in each of the consolidated cases are entered in the
`record of this case (IPR2018-01261) as exhibits, namely the petition in
`IPR2018-01293 (“1293PET,” Ex. 1028), the petition in IPR2018-01295
`(“1295PET,” Ex. 1029), the petition in IPR2018-01344 (“1344PET,” Ex.
`1030), and the petition in IPR2018-01346 (“1346PET,” Ex. 1031).
`Several exhibits in each of the consolidated cases are identical but are
`numbered differently in each of the consolidated cases. The parties jointly
`filed a paper describing the correspondence of the substantively identical
`exhibits. Paper 13. For example, Exhibit 1001 in this proceeding (IPR2018-
`
`
`3 Patent Owner filed an earlier Response as Paper 17, which lacked proper
`page numbering. Patent Owner later filed an authorized, corrected version
`of its Response as Paper 21 (PO Resp.) with page numbers added and no
`substantive changes to the arguments. We address Patent Owner’s
`arguments as presented in that corrected Patent Owner Response.
`
`3
`
`
`
`IPR2018-01261
`Patent 9,535,490 B2
`01261), the ’490 patent, is identified as Exhibit 1101 in 1293PET, as Exhibit
`1201 in 1295PET, as Exhibit 1301 in 1344PET, and as Exhibit 1401 in
`1346PET. Paper 13, 1. For all such substantively identical exhibits, despite
`each consolidated petition referring to its unique exhibit numbers, we refer
`to the exhibit numbers used in IPR2018-01261 (this proceeding).
`Of particular note, Petitioner’s expert, Dr. Bill Lin, provides a
`declaration in each of the five consolidated petitions (Ex. 1002 in IPR2016-
`01261, Ex. 1102 in IPR2018-01293, Ex. 1202 in IPR2018-01295, Ex. 1302
`in IPR2018-01344, and Ex. 1402 in IPR2018-01346). Although much of
`Dr. Lin’s analysis is similar or identical in the five cases, the declarations are
`not substantively identical (some arguments apply to claims only challenged
`in the corresponding petition) nor syntactically identical (even for similar
`arguments, page and paragraph numbers are different). Exhibits 1102, 1202,
`1302, and 1402 from these four consolidated proceedings are entered in the
`record of this consolidated case (IPR2018-01261) as Exhibits 1018, 1019,
`1020, and 1021, respectively.
`C. Real Parties in Interest
`Petitioner identifies both Intel Corporation and Apple Inc. as real
`parties in interest. Pet. 1. Patent Owner identifies itself (Qualcomm, Inc.) as
`the sole real party in interest for Patent Owner. Paper 5, 2.
`D. Related Matters
`The parties informed us that the ’490 patent is presently asserted
`against Petitioner in the litigation Qualcomm Inc. v. Apple Inc., Case No.
`3:17-cv-01375-DMS-MDD (S.D. Cal.), and against Apple in a proceeding
`before the International Trade Commission (“ITC”) captioned In the Matter
`of Certain Mobile Electronic Devices and Radio Frequency Components
`Thereof, Inv. No. 337-TA-1065. Pet. 1–2; Paper 5, 2. The ITC investigation
`
`4
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`IPR2018-01261
`Patent 9,535,490 B2
`addressed claim 31 of the ’490 patent and we find the Commission’s final
`Commission Opinion informative in this Decision. See Ex. 1022.
`The parties further informed us that the ’490 patent is at issue in the
`above-identified, concurrently filed petitions for inter partes review of
`claims of the ’490 patent (i.e., cases IPR2018-01293, IPR2018-01295,
`IPR2018-01344, and IPR2018-01346). See Pet. 2; Paper 5, 2. As noted
`above, these four related proceedings before the Board have been
`consolidated into this proceeding.
`E. The ’490 Patent
`The ’490 patent is generally directed to power saving techniques in
`computing devices. Ex. 1001, code (54), code (57). According to the ’490
`patent, although stationary desktop computers and servers are generally
`immune to power consumption issues, “mobile devices constantly struggle
`to find a proper balance between available functions and battery life.” Id. at
`1:28–31. The ’490 patent further indicates that mobile devices utilize
`internal bus structures to connect components within the mobile device and
`that increased performance demands have led to use of faster, higher-power-
`consuming interconnect bus structures within mobile devices (e.g.,
`Peripheral Component Interconnect Express “PCIe” and Universal Serial
`Bus “USB” 3.0). Id. at 1:36–60.
`Figure 1C of the ’490 patent is reproduced below.
`
`5
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`IPR2018-01261
`Patent 9,535,490 B2
`
`
`
`Figure 1C is a block diagram of mobile terminal 22 with
`interconnectivity bus 36 coupling application processor 34 and modem
`processor 32. In one embodiment disclosed by the ’490 patent, bus 36 may
`be a PCIe bus. Id. at 8:6–9. According to the ’490 patent, “[w]hile placing
`the interconnectivity bus 36 in a sleep mode generally saves power, such
`sleep modes do have a drawback in that they consume relatively large
`amounts of power as they transition out of the sleep mode.” Id. at 8:9–12.
`According to the ’490 patent, the PCIe bus can be transitioned from a
`low power state (e.g., saving battery life) to an active state in which
`information may be exchanged. Id. at 8:23–26. Figure 3 of the ’490 patent
`is reproduced below.
`
`6
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`IPR2018-01261
`Patent 9,535,490 B2
`
`
`Figure 3 depicts graph 52, without the purported improvement of the
`’490 patent, presenting time on the X-axis versus the power state of a PCIe
`link on the Y-axis. “Downlink data” refers to data received by the device
`(i.e., from a connected network) destined for the host/application processor
`of the device, and “uplink data” refers to data to be sent from the device (i.e.,
`from the host/application processor) to the device (i.e., for transmission to a
`network). Time is shown as a sequence of time slots 58 (n, n+1, etc.). Id. at
`8:20–40, Fig. 3. The ’490 patent asserts that, as practiced prior to its
`purported invention, within a given time slot 58, exchange of downlink data
`54 requires first transition 60 from a low power state to an active power state
`and back to a low power state, followed by a similar second transition 62 for
`exchange of uplink data 54. Id. at 8:21–34. According to the ’490 patent,
`where the time slot duration is one millisecond, as is common, there may be
`thousands of such transitions (60, 62) per second. Id. at 8:34–38.
`Thousands of such transitions per second consume a significant amount of
`power in a battery powered mobile terminal. Id. at 8:38–40.
`
`7
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`IPR2018-01261
`Patent 9,535,490 B2
`The ’490 patent purports to improve battery life by reducing the
`number of such transitions. See, e.g., id. at 5:32–35. Figure 5 of the ’490
`patent is reproduced below.
`
`
`
`Figure 5 depicts graph 100, as purportedly improved by the ’490
`patent, presenting time on the X-axis versus the power state of a PCIe link
`on the Y-axis. According to the ’490 patent, combining transmission of
`downlink data and uplink data during a single active power state period 102
`requires only one transition 104 from a low power state to an active power
`state during a time slot 58. Id. at 10:36–40. According to the ’490 patent,
`reducing the number of transitions increases the duration of the low power
`state in each time slot, thus conserving battery power in a mobile terminal.
`Id. at 10:40–45.
`The ’490 patent proposes a number of structures and techniques
`within a mobile terminal for combining uplink and downlink transmissions
`to reduce the number of low power to active power transitions.
`Figure 2 of the ’490 patent is reproduced below.
`
`8
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`IPR2018-01261
`Patent 9,535,490 B2
`
`
`
`Figure 2 is a block diagram of exemplary mobile terminal 22. Mobile
`terminal 22 comprises application processor 34 and modem 32. Ex. 1001,
`6:58–63, 7:4–12. Modem 32 further comprises modem processor 44,
`receiver path 38, and transmitter path 40. Id. at 6:58–63, 7:7–10. Modem
`processor 44 and application processor 34 are coupled by interconnectivity
`bus 36. Id. In one embodiment, bus 36 may be a PCIe compliant bus. Id. at
`6:66–67, 7:14–15. Mobile terminal 22 further comprises a modem timer
`(not shown). Id. at 4:30–31.
`In one disclosed embodiment of the ’490 patent, the modem processor
`is configured to hold data it has received that is ready to send to the
`application processor (“downlink” data) until a programmed time period of
`
`9
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`IPR2018-01261
`Patent 9,535,490 B2
`the modem timer expires. Id. at 4:32–34. The application processor is
`configured to hold data it has ready to send to the modem processor
`(“uplink” data) until the modem processor pulls any held data from the
`application processor. Id. at 4:38–42.
`In another disclosed embodiment of the ’490 patent, the application
`processor is configured to hold data it has ready to send to the modem
`processor (“uplink” data) until downlink data is received at the application
`processor from the modem processor, which triggers the application
`processor to send its held data to the modem processor. Id. at 2:56–62.
`In yet another disclosed embodiment of the ’490 patent, the
`application processor is configured to hold data it has ready to send to the
`modem processor (“uplink” data) until downlink data is received at the
`application processor from the modem processor or until a programmed time
`period of an uplink timer expires, which triggers the application processor to
`send its held data to the modem processor. Id. at 3:2–6.
`In other disclosed embodiments of the ’490 patent, a variety of
`threshold measures may be used to override the wait for a timer to expire
`including, for example, a byte count threshold, a packet size threshold, a
`packet number threshold, etc. Id. at 2:23–34.
`F. Illustrative Claims
`Independent claims 1 and 31 are illustrative of the claimed subject
`matter and are reproduced below.
`1. A mobile terminal comprising:
`a modem timer;
`a modem processor, the modem processor configured to
`hold modem processor to application processor data until
`expiration of the modem timer;
`an application processor;
`
`10
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`IPR2018-01261
`Patent 9,535,490 B2
`an interconnectivity bus communicatively coupling the
`application processor to the modem processor; and
`the application processor configured to hold application
`processor to modem processor data until triggered by receipt of
`the modem processor to application processor data from the
`modem processor through the interconnectivity bus after which
`the application processor to modem processor data is sent to the
`modem processor through the interconnectivity bus responsive
`to the receipt of the modem processor to application processor
`data from the modem processor through the interconnectivity
`bus.
`Ex. 1001, 17:55–18:5.
`31. A mobile terminal comprising:
`a modem timer;
`a modem processor, the modem processor configured to
`hold modem processor to application processor data until
`expiration of the modem timer;
`an application processor;
`an interconnectivity bus communicatively coupling the
`application processor to the modem processor; and
`the application processor configured to hold application
`processor to modem processor data until the modem processor
`pulls data from the application processor after transmission of the
`modem processor to application processor data,
`wherein the modem processor is further configured pull
`data from the application processor after transmission of the
`modem processor to application processor data and before the
`interconnectivity bus transitions from an active power state to a
`low power state.
`Id. at 21:4–21.
`
`G. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–6, 8, 9, 11–13, 16, 17, 20, 22–24, 26–
`28, 30, and 31 are unpatentable on the following grounds:
`
`11
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`
`
`IPR2018-01261
`Patent 9,535,490 B2
`Claims Challenged
`1, 4–6, 8, 9, 11–13,
`16, 20, 22–24, 26–28,
`30, 31
`2, 3, 17
`
`35 U.S.C. §
`
`References
`
`1034
`
`Heinrich,5 Balasubramanian6
`
`103
`
`Heinrich, Balasubramanian,
`Tsai7
`Petitioner relies on the declarations of Bill Lin, Ph.D. (Exs. 1002, 1018–
`1021,8 1023) in support of its assertions. Patent Owner relies on the
`declaration of R. Jacob Baker, Ph.D. (Ex. 20079).
`II. ANALYSIS
`A. Legal Standards
`1. Obviousness
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter[,] as a whole[,] would have been obvious at the time
`the invention was made to a person having ordinary skill in the art to which
`
`
`4 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C.
`§ 103. See Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011). Because the
`application that resulted in the ’490 patent was filed after the effective date
`of the post-AIA amendment, the post-AIA version of § 103 applies. For the
`same reasons, the post-AIA version of § 102 applies in determining whether
`the applied references qualify as prior art.
`5 Heinrich, US 9,329,671 B2, issued May 3, 2016 (Ex. 1004).
`6 Balasubramanian, US 8,160,000 B2, issued Apr. 17, 2012 (Ex. 1005).
`7 Tsai, US 8,112,646 B2, issued Feb. 7, 2012 (Ex. 1017).
`8 Exhibit 1018 herein is referred to as Exhibit 1002 in 1293PET. Exhibit
`1019 herein is referred to as Exhibit 1002 in 1295PET. Exhibit 1020 herein
`is referred to as Exhibit 1002 in 1344PET. Exhibit 1021 herein is referred to
`as Exhibit 1002 in 1346PET.
`9 Patent Owner filed two exhibits with the exhibit number 2007—Dr.
`Baker’s declaration and a transcript of a hearing before the International
`Trade Commission (“ITC”). In this decision, we refer to Dr. Baker’s
`declaration as “Ex. 2007” and we do not need to refer to the ITC transcript.
`
`12
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`IPR2018-01261
`Patent 9,535,490 B2
`said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved based on underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of non-
`obviousness, i.e., secondary considerations.10 Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966).
`B. Level of Ordinary Skill in the Art
`Petitioner argues a person of ordinary skill in the art related to the
`’490 patent would have a Master’s degree in electrical engineering,
`computer engineering, or computer science, and would also have at least two
`years of experience in “mobile device architecture and multiprocessor
`systems.” Pet. 20. In the alternative, Petitioner argues the ordinarily skilled
`artisan would have a Bachelor’s degree in one of the above-identified
`programs and at least four years of experience in the above-identified fields.
`Id.
`
`Patent Owner agrees with Petitioner’s definition of the level of skill,
`emphasizing that “‘relevant experience’ in the context of the ’490 Patent
`refers to experience with mobile device architecture and multiprocessor
`systems.” PO Resp. 19.
`In our Decision on Institution, we adopted Petitioner’s definition of
`the level of ordinary skill in the art, with the exception of the language “at
`least,” and determined that a person of ordinary skill in the art at the time of
`the invention of the ’490 patent would have had a Master’s degree in
`
`10 Patent Owner does not present arguments or evidence of such secondary
`considerations in its briefs. Therefore, secondary considerations do not enter
`into our analysis.
`
`13
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`IPR2018-01261
`Patent 9,535,490 B2
`electrical engineering, computer engineering, or computer science, and two
`years of experience in mobile device architecture and multiprocessor
`systems or, in the alternative, a Bachelor’s degree in one of the above-
`identified programs and four years of experience in the above-identified
`fields. Dec. on Inst. 9–10. On the complete record, we discern no reason to
`modify our determination regarding the level of ordinary skill.
`C. Claim Construction
`In an inter partes review for a Petition filed before November 13,
`2018, a claim in an unexpired patent shall be given its broadest reasonable
`construction in light of the specification of the patent in which it appears. 37
`C.F.R. § 42.100(b) (2017); see also Cuozzo Speed Techs., LLC v. Lee, 136 S.
`Ct. 2131, 2142–46 (2016) (upholding the use of the broadest reasonable
`interpretation standard (“BRI standard”)). Under the BRI standard, claim
`terms generally are given their ordinary and customary meaning, as would
`be understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). “[A] claim construction analysis must begin and remain centered on
`the claim language itself . . . .” Innova/Pure Water, Inc. v. Safari Water
`Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). “Though
`understanding the claim language may be aided by the explanations
`contained in the written description, it is important not to import into a claim
`limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV
`Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
`By contrast, for an expired patent or an unexpired patent challenged in
`a petition filed on or after November 13, 2018, we apply the principles set
`forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en
`
`14
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`banc) (“Phillips standard”). See 37 C.F.R. § 42.100(b) (2019); Wasica Fin.
`GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279 (Fed. Cir. 2017).
`Under either standard for claim construction in our proceedings, there
`is no presumption of validity, and Petitioner’s burden of proof is still by a
`preponderance of the evidence. Moreover, a “claim term will not receive its
`ordinary meaning if the patentee acted as his own lexicographer and clearly
`set forth a definition of the disputed claim term in either the specification or
`prosecution history.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
`1366 (Fed. Cir. 2002). Any special definition for a claim term must be set
`forth in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
`absence of such a special definition or other consideration, “limitations are
`not to be read into the claims from the specification.” In re Van Geuns, 988
`F.2d 1181, 1184 (Fed. Cir. 1993).
`Petitioner applies the Phillips standard for interpreting terms of the
`’490 patent but argues “Petitioner is not aware of any difference in how the
`claims would be construed under the BRI standard.” Pet. 19. Patent Owner
`notes that Petitioner failed to timely file a motion requesting use of the
`Phillips standard for claim construction (under 37 C.F.R. § 42.100(b)) but
`waives any objection to that deficiency. PO Resp. 27. Patent Owner agrees
`with Petitioner that “there is no difference in how the claims would be
`construed under the BRI standard.” Id.
`The ’490 patent is not expired, will not likely expire prior to entry of
`this final written decision, neither party has made a request in compliance
`with our rules that the Phillips standard be applied, and the Petition was filed
`prior to the change of our rules regarding claim construction effective for
`petitions filed on or after November 13, 2018. Therefore, as we did in our
`
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`IPR2018-01261
`Patent 9,535,490 B2
`Decision on Institution (see Dec. on Inst. 11–12), we apply the broadest
`reasonable interpretation for any needed claim construction.
`Although the broadest reasonable interpretation standard is broad, the
`Board cannot interpret the words of a claim without regard for the full claim
`language and the written description. See TriVascular, Inc. v. Samuels, 812
`F.3d 1056, 1062 (Fed. Cir. 2016); Microsoft Corp. v. Proxyconn, Inc., 789
`F.3d 1292, 1298 (Fed. Cir. 2015). Our reviewing court has emphasized the
`importance of a patent’s specification as intrinsic evidence for construing
`claim terms. See Phillips, 415 F.3d at 1315–17. Specifically, the Court has
`explained that “the specification . . . is the single best guide to the meaning
`of a disputed claim term.” Id. at 1314 (quoting Vitronics Corp. v.
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “In determining
`the meaning of the disputed claim limitation, we look principally to the
`intrinsic evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`(citing Phillips, 415 F.3d at 1312–17). The court in Phillips stated that
`extrinsic evidence, such as dictionary definitions, may be useful, but is
`unlikely to result in a reliable interpretation of claim scope unless considered
`in the context of the intrinsic evidence. See Phillips, 415 F.3d at 1319.
`Furthermore, only terms that are in controversy need to be construed
`and only to the extent necessary to resolve the controversy. See Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy,
`and only to the extent necessary to resolve the controversy’ . . . .” (quoting
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999))).
`
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`IPR2018-01261
`Patent 9,535,490 B2
`Other than the terms interpreted below, we discern no reason to
`expressly construe any other claim terms.
`1. “Pull”
`Claim 31 includes the recitation, “wherein the modem processor is
`further configured pull data from the application processor.”11
`a) The Parties’ Interpretations
`Petitioner contends “pull,” in the context of the ’490 patent would
`have been understood to mean “receiving data in response to a request for
`the data.” Pet. 20. Petitioner argues “[i]n a pull data transfer, the data is
`transferred in response to a request for data by the intended recipient of the
`data.” Pet. 21 (citing Ex. 1002 ¶ 68). Petitioner further argues the ’490
`patent Specification is consistent with this interpretation in that, although not
`expressly defining the term “pull,” the Specification discloses pulling data
`with no mention of a required address/location, refers to both pulling and
`pushing of data as distinct modes of transfer, and discloses that both
`techniques may be implemented “based on polling, setting doorbell registers,
`or other techniques.” Pet. 20–21 (citing Ex. 1001, 9:61–10:1, 16:34–37).
`Petitioner cites extrinsic evidence in support of its proffered construction.
`Pet. 21 (citing Exs. 1008 (an electrical engineering technical dictionary
`defining “pull technology” to mean “[d]ata distribution, such as that over the
`Internet, in which users receive information by requesting it”), 1009 (a
`computer and Internet technical dictionary defining “pull” to mean “the
`
`
`11 Claim 14 includes a similar recitation that the modem processor is
`configured to pull data from the application processor. Claim 14 is not
`challenged in this consolidated proceeding. However, we may consider use
`of the term “pull” in the context of claim 14 to the extent it aids in our
`construction of the term.
`
`17
`
`
`
`IPR2018-01261
`Patent 9,535,490 B2
`process whereby the user retrieves information from a network at the user’s
`request, as in traditional web browsing”), 1010 (an academic paper
`discussing push and pull data transmission techniques and stating: “In the
`receiver-pull model, it is the receiver who initiates the message transfer by
`explicitly contacting the sender. The sender passively waits for the receiver
`and delivers the entire content upon receiving a request.”)).
`Patent Owner argues that, in the context of the ’490 patent, a pull
`operation requires that the requesting recipient provide location information
`to the sender to locate the data to be sent in response to the pull. See PO
`Resp. 27–28 (“With knowledge of where in a shared memory the
`application-processor-held data, the modem processor is able to reach out
`and access the data from the shared memory based on that specified address
`(i.e., pull the data).” (citing Ex. 2007 ¶ 61)). Patent Owner cites the same
`two portions of the ’490 patent Specification as cited by Petitioner but adds
`that surrounding disclosure of each citation allegedly clarifies that a pointer
`(i.e., an address or location) is provided by the application processor for the
`modem processor to know where data to be transferred is stored. Id. at 29
`(citing Ex. 1001, 9:41–10:10, 15:61–16:37).
`In support of its proffered construction, Patent Owner points to
`deposition testimony of Petitioner’s expert in the parallel ITC proceeding,
`Dr. Yalamanchili, who testifies, inter alia, that, in a pull operation, “[t]he
`location of the data has to be known in order to effect any transfer, so the
`data can be accessed,” that, in a pull operation, supplying an address of the
`data “would be typical,” and that some identifier or information related to
`where the data is located would be part of the initiation of the pull. PO
`Resp. 28–29 (quoting excerpts of Ex. 2008). Patent Owner further argues
`Petitioner’s expert in this proceeding (Dr. Lin) agrees that an exemplary pull
`
`18
`
`
`
`IPR2018-01261
`Patent 9,535,490 B2
`operation in the ’490 patent “uses doorbell registers and address-indicating
`pointers” in performing a pull operation. Id. at 29 (citing Ex. 2010, 27:5–7).
`Furthermore, Patent Owner argues the extrinsic evidence proffered by
`Petitioner (Exs. 1008–1010) in support of its interpretation of “pull”
`supports Patent Owner’s position because they refer to typical Internet
`access such as web browsing in which a user supplies an address or
`hyperlink that specifies the location of the data to be pulled. PO Resp. 29–
`30.
`
`Moreover, Patent Owner asserts Petitioner’s proffered construction, as
`supported by Dr. Lin’s testimony, is contrary to positions articulated by
`Petitioner’s expert (Dr. Yalamanchili) in the related ITC proceeding and,
`thus, Dr. Lin’s testimony interpreting “pull” should be given little weight.
`PO Resp. 29; see also Sur-Reply 2–6.
`Accordingly, Patent Owner argues “pull” should be interpreted to
`mean “accessing data based on a specified location of that data.” PO Resp.
`32 (citing Ex. 2007 ¶ 66).
`Petitioner replies that Patent Owner’s narrower construction requiring
`that a “pull” operation include a “specified location of the data” to be pulled
`is inconsistent with the intrinsic and extrinsic evidence. Reply 4. In
`particular, Petitioner argues Patent Owner relies on an exemplary
`embodiment in the ’490 patent that uses a direct memory access (“DMA”)
`read transaction on a PCIe bus, which includes specifying an address in
`memory for the data to be pulled from the application processor. Reply 5
`(citing PO Resp. 29, 55 (“DMA read request includes the address in memory
`of the data to be pulled”)). Petitioner contends the ’490 patent Specification
`does not “suggest any intent to limit the ‘pull’ of claim 31 to PCIe and/or
`DMA-based transfers,” but, instead, repeatedly refers to pulling data without
`
`19
`
`
`
`IPR2018-01261
`Patent 9,535,490 B2
`reference to DMA or PCIe exemplary embodiments. Id. (citing Ex. 1001,
`4:40–41, 9:66–10:2, 16:35–37). Petitioner further contends that the ’490
`patent Specification makes clear that a PCIe implementation is intended
`merely as exemplary and discloses other interconnectivity busses and
`techniques that may be employed. Reply 7 (citing Ex. 1001, 6:66–7:3).
`b) Analysis
`Both parties’ proffered interpretations are consistent with the
`Specification of the ’490 patent. However, we are persuaded that the
`broadest reasonable interpretation of “pull,” consistent with the Specification
`and the plain meaning, at least encompasses Petitioner’s proffered
`interpretation, which is broader than Patent Owner’s proffered interpretation
`because it does not require that a “pull” specify a location from which the
`data is to be pulled.
`As our reviewing court held, we focus on the intrinsic evidence
`(claims, Specification, prosecution history) to construe the terms in the
`claims. DePuy, 469 F.3d at 1014. Here, the intrinsic evidence provides
`scant aid in interpreting the term “pull.” There is no express definition of
`“pull” in the intrinsic evidence. Claim 14 (not challenged here) recites, in
`essence, that the modem processor pulls uplink data from the application
`processor in response to receipt of downlink data or the expiration of
`information. Claim 31 recites, in essence, that the application processor
`holds (e.g., buffers) uplink data until the modem processor pulls the held
`data and the modem processor pulls the held uplink data from the
`application processor after transmitting downlink data to the application
`processor and
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