Trials@uspto.gov
`571-272-7822
`
` Paper No. 8
` Entered: January 23, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`QUALCOMM, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01346
`Patent 9,535,490 B2
`____________
`
`
`
`Before DANIEL N. FISHMAN, DANIEL J. GALLIGAN, and
`AARON W. MOORE, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
` Paper No. 8
` Entered: January 23, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`QUALCOMM, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01346
`Patent 9,535,490 B2
`____________
`
`
`
`Before DANIEL N. FISHMAN, DANIEL J. GALLIGAN, and
`AARON W. MOORE, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`I. INTRODUCTION
`
`Intel Corporation (“Petitioner”) requests inter partes review of claims
`
`9, 11–13, 26, and 27 (the “challenged claims”) of U.S. Patent No. 9,535,490
`
`B2 (“the ’490 patent,” Ex. 1401) pursuant to 35 U.S.C. §§ 311 et seq. Paper
`
`3 (“Petition” or “Pet.”). Qualcomm Incorporated (“Patent Owner”) filed a
`
`Preliminary Response. Paper 7 (“Prelim. Resp.”).
`
`Institution of an inter partes review is authorized by statute when “the
`
`information presented in the petition . . . and any response . . . shows that
`
`there is a reasonable likelihood that the petitioner would prevail with respect
`
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`
`Upon consideration of the Petition and Patent Owner’s Preliminary
`
`Response, we conclude the information presented shows there is a
`
`reasonable likelihood that Petitioner would prevail in establishing the
`
`unpatentability of at least one challenged claim of the ’490 patent.
`
`Therefore, we institute review of all challenged claims and all asserted
`
`grounds.
`
`A. Real Parties-In-Interest and Related Matters
`
`Apple Inc. is identified as an additional real party-in-interest. Pet. 1.
`
`The parties inform 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 4, 2. The parties further inform us that
`
`the ’490 patent is at issue in inter partes review Cases IPR2018-01261,
`
`IPR2018-01293, IPR2018-01295, and IPR2018-01344. Pet. 2; Paper 4, 2.
`
`2
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`B. The ’490 Patent
`
`The ’490 patent is generally directed to power saving techniques in
`
`computing devices. Ex. 1401, Title (54), Abstract (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.
`
`Figure 1C is a block diagram of mobile terminal 22 with
`
`interconnectivity bus 36 coupling application processor 34 and modem
`
`
`
`3
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`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.
`
`
`
`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. Time is shown as a sequence of time slots 58 (n, n+1,
`
`etc.). Id. at 8:20. The ’490 patent asserts that, 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,
`
`4
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`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.
`
`The ’490 patent purports to improve battery life by reducing the
`
`number of such transitions. Figure 5 of the ’490 patent is reproduced below.
`
`
`
`Figure 5 depicts graph 100, as improved by the purported invention of
`
`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.
`
`5
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`Figure 2 of the ’490 patent is reproduced below.
`
`
`
`Figure 2 is a block diagram of exemplary mobile terminal 22. Mobile
`
`terminal 22 comprises application processor 34 and modem 32. Ex. 1401,
`
`6:58–63. Modem 32 further comprises modem processor 44, receiver path
`
`38, and transmitter path 40. Id. at 6:58–63. 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. 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
`
`6
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`the modem timer expires. Id. at 2:50–52. 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 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
`
`limit, a packet size counter, a packet number counter, etc. Id. at 2:23–34.
`
`C. Illustrative Claim
`
`Challenged claims 9 and 11–13 depend from claim 1. Although claim
`
`1 is not one of the challenged claims in this Petition, independent apparatus
`
`claim 1, reproduced below, is illustrative of the challenged claims:
`
`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;
`
`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 interco1u1ectivity
`bus.
`
`
`
`7
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`Id. at 17:55–18:5.
`
`D. Asserted Ground of Unpatentability
`
`Petitioner asserts claims 9, 11–13, 26, and 27 are unpatentable under
`
`35 U.S.C. § 103 as obvious over Heinrich1 and Balasubramanian.2 Pet. 4.
`
`Petitioner relies on the testimony of Bill Lin, Ph.D. (Ex. 1402) in
`
`support of its assertions.
`
`II. DISCUSSION
`
`A. General Principles
`
`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 said
`
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of 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 nonobviousness,
`
`i.e., secondary considerations.3 Graham v. John Deere Co., 383 U.S. 1, 17–
`
`18 (1966).
`
`
`
`1 Heinrich et al., U.S. Patent No. 9,329,671 B2 (Ex. 1404, “Heinrich”).
`2 Balasubramanian, U.S. Patent No. 8,160,000 B2 (Ex. 1405).
`3 Patent Owner does not present arguments or evidence of such secondary
`considerations in its Preliminary Response. Therefore, at this preliminary
`stage, secondary considerations do not constitute part of our analysis.
`
`8
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`2.
`
`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. 19. 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.
`
`Prelim. Resp. 14.
`
`On the record before us and for purposes of this preliminary decision,
`
`we are persuaded by Petitioner’s definition of the level of ordinary skill in
`
`the art, with the exception of the language “at least,” and we find this
`
`definition is commensurate with the level of ordinary skill in the art as
`
`reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`
`(Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in
`
`the art does not give rise to reversible error where the prior art itself reflects
`
`an appropriate level and a need for testimony is not shown.”) (internal
`
`quotation marks omitted); see also In re GPAC Inc., 57 F.3d 1573, 1579
`
`(Fed. Cir. 1995). Here, we discern the prior art, as well as the ’490 patent,
`
`require a degree of knowledge that is specific to “mobile device architecture
`
`and multiprocessor systems,” as Petitioner has argued.
`
`Accordingly, on this record and for purposes of this preliminary
`
`decision, we adopt Petitioner’s definition of the level of ordinary skill in the
`
`art, with the exception of the language “at least,” and determine that a person
`
`9
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`of ordinary skill in the art at the time of the invention of the ’490 patent
`
`would have had a Master’s degree in 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.
`
`B. Claim Construction
`
`As a step in our analysis for determining whether to institute a review,
`
`we determine the meaning of the claims for purposes of this preliminary
`
`decision. 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 broadest
`
`reasonable interpretation 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).
`
`10
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`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
`
`banc) (“Phillips standard”). See Wasica Fin. GmbH v. Cont’l Auto. Sys.,
`
`Inc., 853 F.3d 1272, 1279 (Fed. Cir. 2017); Changes to the Claim
`
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,340 (Oct, 11,
`
`2018) (to be codified at 37 C.F.R. pt. 42). “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).
`
`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. 18–19. Patent
`
`Owner asserts that, under our rules, the BRI standard should be applied.
`
`Prelim. Resp. 14 (citing 37 C.F.R. § 42.100(b)).
`
`We agree with Patent Owner and discern no reason that we would not
`
`apply the BRI standard here. On the record before us, the ’490 patent is not
`
`expired, the patent will not likely expire prior to any potential final written
`
`decision, neither party has made a request in compliance with our rules that
`
`11
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`the Phillips standard be applied,4 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, for purposes of this preliminary
`
`decision, we apply the broadest reasonable interpretation for any needed
`
`claim construction.
`
`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))). Petitioner proposes a construction of the term “triggered by” as it
`
`appears in claim 1. Pet. 19–20. Patent Owner contends no terms require
`
`construction “at this stage in the proceeding.” Prelim. Resp. 14.
`
`Other than the term identified below, we discern no reason on this
`
`preliminary record and for this preliminary decision to construe any other
`
`claim terms.
`
`“Triggered By”
`
`Each of claim 1, from which challenged claims 9 and 11–13 depend,
`
`and independent claims 26 and 27 includes a recitation in which the
`
`application processor is configured to hold data destined to the modem
`
`
`
`4 The applicable version of 37 C.F.R. § 42.100(b) requires that a request to
`apply the Phillips standard “must be made in the form of a motion under
`§ 42.20, within 30 days from the filing of the petition.” Petitioner’s
`suggestion that the Phillips standard be applied is not compliant with this
`rule.
`
`12
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`processor until triggered by receipt of data from the modem processor.
`
`Petitioner argues the term “triggered by” means “initiated in response to.”
`
`Pet. 19. Petitioner argues the ’490 patent Specification does not expressly
`
`define the term but the Specification, prosecution history, and the claims
`
`impliedly support its proffered construction. Pet. 19–20 (citing Ex. 1401,
`
`2:3–6, 11:15–18, 11:39–46; Ex. 1403, 145). Petitioner further cites to
`
`extrinsic evidence (three dictionaries defining “trigger”) in support of its
`
`proffered construction of triggered by. Pet. 20 (citing Exs. 1412, 1413,
`
`1414).
`
`As noted above, Patent Owner does not specifically address
`
`construction of this or any other claim terms but, instead, argues no claim
`
`construction is necessary at this stage of the proceeding. Prelim. Resp. 14.
`
`We find Petitioner’s proffered construction of triggered by is
`
`persuasive. Specifically, claim 1 sufficiently defines the condition that
`
`triggers the defined response—i.e., data is held by a first processor until
`
`receipt of data from a second processor after which the first processor sends
`
`its held data to the second processor. The receipt of data is the event that
`
`
`
`5 Petitioner cites, “See Ex-1403 [8/24/2016 Response], 14” referring to page
`14 of the identified document from a plurality of documents merged into
`Exhibit 1403 as originally numbered. Exhibit 1403 is properly annotated by
`Petitioner with sequential page numbers as required by our rules. We
`identified the cited quotation on page number 45 of the properly annotated
`Exhibit. Petitioner repeats this citation method in various citations to
`exhibits (e.g., exhibits 1412, 1413, 1414). For further filings, we request
`both parties annotate non-patent literature exhibits with sequential page
`numbers (e.g., so-called Bates numbers) and cite to the annotated sequential
`page numbers rather than the original page numbering of the document.
`
`13
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`triggers further action (transmission of the held data from the first processor
`
`to the second processor) following the event.
`
`Therefore, for purposes of this preliminary decision, we adopt the
`
`definition proffered by Petitioner and find that “triggered by” some
`
`condition means “initiated in response to” the condition.
`
`C. Section 314(a) Discretion
`
`Patent Owner argues we should exercise our discretion to deny this
`
`Petition under 35 U.S.C. § 314(a) for two reasons: (1) the late stage of
`
`related litigation proceedings and (2) the filing of multiple petitions
`
`challenging the ’490 patent. Prelim Resp. 15–23. Petitioner does not
`
`address this discretionary denial issue in its Petition. We address Patent
`
`Owner’s arguments below.
`
`1. Late Stage of Related Litigations
`
`Patent Owner argues we should exercise our discretion under Section
`
`314(a) to deny this Petition in view of the late stage of parallel proceedings
`
`in the ITC and the U.S. District Court for the Southern District of California
`
`(“SDCA”). Prelim. Resp. 15–20. More specifically, Patent Owner argues
`
`the ITC and SDCA proceedings are both in late stages and, although not
`
`addressing these challenged claims, the ITC and SDCA proceedings address
`
`“the same underlying issues” by addressing similar limitations in claim 31
`
`and addressing the same combination (Heinrich and Balasubramanian) as
`
`applied to claim 31. Prelim. Resp. 17–18. Patent Owner further argues that
`
`“by filing the Petition so late, Petitioner and Apple seek to re-litigate an
`
`issue that has already been fully litigated in a different forum and will be
`
`decided in two different forums well before the Board can reach a final
`
`14
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`written decision.” Id. at 19. Patent Owner identifies three prior decisions of
`
`the Board as allegedly supporting its position urging discretionary denial of
`
`this Petition. Id. at 15–16 (citing NetApp, Inc. v. Realtime Data LLC, Case
`
`IPR2017-01195 (PTAB Oct. 12, 2017) (Paper 9) (“NetApp”); Nautilus
`
`Hyosung, Inc. v. Diebold, Inc., Case IPR2017-00426 (PTAB June 22, 2017)
`
`(Paper 17) (“Nautilus”); and NHK Spring Co. v. Intri-Plex Tech., Inc., Case
`
`IPR2018-00752 (PTAB Sept. 12, 2018) (Paper 8) (“NHK”)).
`
`We are not persuaded by Patent Owner’s arguments that we should
`
`exercise our discretion to deny. We find these cases to be distinguishable.
`
`For example, in NetApp and Nautilus, the exercise of discretion to deny
`
`institution was based primarily on the filing of an earlier petition before the
`
`Board (by the same or a related party). See Nautilus at 12–16; NetApp at
`
`10–13. Here, Petitioner has not filed an earlier petition directed to these
`
`challenged claims.6 NHK addresses a fact pattern more similar to the facts
`
`here. However, NHK is distinguishable in that the patent at issue had
`
`expired and, thus, the panel there applied the same claim construction
`
`standard as the court in the parallel District Court litigation—i.e., the
`
`Phillips standard. Here, as discussed above, we apply the BRI standard for
`
`claim construction.
`
`In addition, the Board’s decision whether to exercise discretion to
`
`deny institution under § 314(a) is “part of a balanced assessment of all
`
`relevant circumstances in the case, including the merits.” See Office Patent
`
`
`
`6 We address below the fact that Petitioner has filed other petitions directed
`to other claims of the ’490 patent—filed substantially concurrently with this
`Petition.
`
`15
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`Trial Practice Guide Update7
`
` referenced at 83 Fed. Reg. 39,989 (Aug. 13,
`
`2018) at 10–11. Here, as discussed below, we have considered the merits of
`
`Petitioner’s contentions regarding the combination of Heinrich and
`
`Balasubramanian, and we determine Petitioner has met its burden to show a
`
`reasonable likelihood that the references pertain to the same field of use and
`
`has articulated a rational basis for combining the references. In contrast, the
`
`ALJ’s initial determination that “[i]t has not been shown by clear and
`
`convincing evidence that [claim 31] is invalid” (see Ex. 2006, 2), is not only
`
`based on a higher burden of proof than here, but is now being reviewed by
`
`the Commission and may be overturned in a final decision.8 See Ex. 3001
`
`(Commission Review of Initial Determination in Inv. No. 337-TA-1065). In
`
`sum, we are not persuaded that the parallel litigations in the ITC and the
`
`SDCA will necessarily address the same issues, based on the same claim
`
`constructions, same standards of proof, and same evidence, and at least the
`
`ITC determination is under review. Therefore, we decline to exercise our
`
`discretion under 35 U.S.C. § 314(a) to deny this Petition based on the status
`
`of parallel litigations.
`
`
`
`7 Available at https://go.usa.gov/xU7GP.
`8 We also point out that only claim 31 is challenged at the ITC. Thus, the
`ITC will not dispose of all the issues in the related IPRs, which are directed
`to separate claims of the ’490 patent. The evidence and argument is nearly
`the same across all proceedings. If we are to give Petitioner a first chance at
`challenging these claims, the panel would nonetheless need to perform
`nearly the same analysis in related proceedings, regardless of whether it
`exercised discretion to deny institution in this proceeding.
`
`16
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`2. Multiple Petitions
`
`Noting that Petitioner has filed five petitions (including the present
`
`Petition) all addressing claims of the ’490 patent, Patent Owner argues that
`
`such duplication is abusive and wasteful of resources of both the Board and
`
`Patent Owner, and, therefore, argues we should exercise our discretion to
`
`deny this Petition under 35 U.S.C. § 314(a). Prelim. Resp. 20–23. Patent
`
`Owner argues that, because our procedures require instituting on all claims
`
`and grounds asserted in a petition or not instituting on any claims and
`
`grounds, Petitioner has divided its grounds and claims into five petitions so
`
`that potentially weaker arguments for some claims and/or grounds do not
`
`cause us to deny institution for all claims and grounds. Id. at 21. Patent
`
`Owner asserts that “Petitioner has divided its challenges to the ’490 patent
`
`claims that would normally fit into one petition (i.e., two grounds
`
`challenging 22 claims) across five petitions, hoping to increase its odds of
`
`institution.” Id.
`
`We are not persuaded by Patent Owner’s argument that we should
`
`exercise our discretion under section 314(a) to deny this Petition in view of
`
`Petitioner’s strategy to file multiple petitions.
`
`Although, in view of SAS,9 the Board exercises its discretion for each
`
`petition to institute all claims and grounds or no claims and grounds, Patent
`
`Owner’s assertion that splitting the claims and grounds into five petitions
`
`when one would suffice is inapposite. This practice is not necessarily
`
`improper (see Rules of Practice for Trials Before the Patent Trial and
`
`
`
`9 The Supreme Court held that a decision to institute under 35 U.S.C. § 314
`may not institute on fewer than all claims challenged in the petition. SAS
`Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018) (“SAS”).
`
`17
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`Appeal Board and Judicial Review of Patent Trial and Appeal Board
`
`Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,635 (Aug. 14, 2012)
`
`(response to Comment 91, explaining that filing multiple petitions is an
`
`alternative to requesting a waiver of page, now word, counts)). For
`
`example, there may be appropriate reasons for Petitioner to divide the claims
`
`and grounds into multiple petitions, such as to logically separate different
`
`claim sets for purposes of analysis and to avoid subjecting all claims to the
`
`all or nothing decision required by SAS. The SAS decision does not preclude
`
`this practice.
`
`Furthermore, the five petitions were all filed within a few days of one
`
`another.10 The five petitions challenge non-overlapping subsets of the
`
`claims of the ’490 patent. On this record, we discern no prejudice to Patent
`
`Owner in Petitioner’s filing strategy regarding the five petitions directed to
`
`the ’490 patent. Petitioner did not wait to review Patent Owner’s
`
`Preliminary Response or our institution decision in one case before filing a
`
`next petition. Under the circumstances of this case, Petitioner’s decision to
`
`file multiple petitions does not warrant the exercise of our discretion to deny
`
`institution.
`
`3. Conclusion Regarding Discretion Under Section 314(a)
`
`For the above reasons, on the record before us, we decline to exercise
`
`our discretion to deny this Petition under 35 U.S.C. § 314(a).
`
`
`
`10 This case, IPR2018-01346, was filed July 6, 2018, IPR2018-01261 was
`filed June 29, 2018, IPR2018-01293 was filed June 29, 2018, IPR2018-
`01295 was filed June 29, 2018, and IPR2018-01344 was filed July 6, 2018.
`
`18
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`D. Cited Prior Art References
`
`1. Overview of Heinrich (Ex. 1404)
`
`Heinrich is directed to problems of power efficiency in inter-processor
`
`communications (“IPC”) among multiple processors of a system. Ex. 1404,
`
`1:6–2:8. In battery-powered systems in particular, power consumption is a
`
`critical issue. Id. at 1:18–23. Figure 1 of Heinrich is reproduced below.
`
`
`
`Heinrich’s Figure 1 is a schematic illustration of a communication
`
`system including mobile device 102. Id. at 3:19–20, 4:18–19. Mobile
`
`device 102 may be a mobile phone or tablet connected to radio network 110.
`
`Id. at 4:19–21. Mobile device 102 comprises baseband processor 104 and
`
`application processor 106. Id. at 4:26–29. Baseband processor 104 acts as a
`
`radio frequency (“RF”) modem to modulate and demodulate data exchanged
`
`between mobile device 102 and network 110. Id. at 4:30–33. Physical
`
`interface (labeled IPC in Figure 1) communicatively couples baseband
`
`processor 104 and application processor 106. Id. at 4:44–46. The physical
`
`interface to the IPC may be, for example, a USB interface. Id. at 4:46–48.
`
`19
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`Each processor of mobile device 102 may operate in one of a plurality
`
`of modes, including an “awake” mode ready to process data and a “sleep”
`
`mode not ready to process data but saving power. Id. at 1:54–62. According
`
`to Heinrich, in the prior art, each time baseband processor 104 receives any
`
`quantum of data to be sent to application processor 106, application
`
`processor 106 would have to already be in the awake mode or would have to
`
`be transitioned from the sleep mode to the awake mode. Id. at 1:65–2:2.
`
`Frequent transitions out of sleep mode consume additional power in mobile
`
`device 102. Id. at 2:2–8.
`
`To reduce power consumption of mobile device 102, Heinrich
`
`discloses that baseband processor 104 includes scheduler 120. Id. at 7:8–10.
`
`Scheduler 120 may be configured to reduce power consumption by reducing
`
`the number of times a processor is awakened from its sleep mode. Id. at
`
`7:16–19. Scheduler 120 may be configured to schedule communication in
`
`either direction between baseband processor 104 and application processor
`
`106. Id. at 7:19–21. Alternatively, scheduler 120 may schedule only
`
`communication from baseband processor 104 to application processor 106,
`
`and another scheduler (not shown) implemented within application
`
`processor 106 may schedule communication in the opposite direction. Id. at
`
`7:21–27. In general, scheduler 120 is operable to identify communications
`
`awaiting transmission from one processor to the other processor that are not
`
`real-time critical so that they may be delayed until a later time to avoid
`
`causing another sleep-to-awake mode transition of the other processor. Id. at
`
`7:65–8:1. By grouping the non-real-time sensitive exchanges together and
`
`scheduling them for communicating to the other processor during a period in
`
`which the other processor is continuously in the awake mode, the number of
`
`20
`
`
`
`IPR2018-01346
`Patent 9,535,490 B2
`
`times that the other processor enters and exits the sleep mode is reduced. Id.
`
`at 4:6–11.
`
`Heinrich’s Figure 3 is reproduced below.
`
`
`
`Figure 3 is a flowchart describing operation of a scheduler. At step
`
`S302, scheduler 120 determines which pending communications awaiting
`
`transmission to the other processor are not real-time sensitive. Id. at 8:10–
`
`16. Non-real-time data is that which may be delayed, and, conversely, real-
`
`time data is that which must be transmitted without delay (e.g., voice
`
`communications). Id. at 8:14–20. Step S304 groups the identified non-real-
`
`time data for delayed transmissions and schedules them for transmission
`
`during a single awake mode of the other processor. Id. at 8:21–32. Step
`
`S306 transmits the grouped, delayed, non-real-time data to the other
`
`process
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
