Trials@uspto.gov Paper 41
`571-272-7822 Entered: April 15, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`RENESAS ELECTRONICS CORPORATION,
`Petitioner,
`
`v.
`
`BROADCOM CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2019-01040
`Patent 8,284,844 B2
`____________
`
`
`
`
`Before THOMAS L. GIANNETTI, PATRICK M. BOUCHER, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing of Final Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`571-272-7822 Entered: April 15, 2021
`
`
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`RENESAS ELECTRONICS CORPORATION,
`Petitioner,
`
`v.
`
`BROADCOM CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2019-01040
`Patent 8,284,844 B2
`____________
`
`
`
`
`Before THOMAS L. GIANNETTI, PATRICK M. BOUCHER, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing of Final Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`IPR2019-01040
`Patent 8,284,844 B2
`
`
`I. INTRODUCTION
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`Renesas Electronics Corporation (“Petitioner”) has filed a Request for
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`Rehearing (Paper 36, “Request”) of the Final Written Decision (Paper 35,
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`“Final Decision”), which determined Petitioner had shown that claims 1 and
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`9–14 of U.S. Patent No. 8,284,844 B2 (“the ’844 patent”) were unpatentable,
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`denied Broadcom Corporation’s (“Patent Owner’s”) Motion to Amend as to
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`proposed substitute claim 15, and granted the Motion to Amend as to
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`proposed substitute claims 16–19. The Request seeks “rehearing to . . . deny
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`Patent Owner Broadcom Corporation’s motion to amend” as to proposed
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`substitute claims 16–19. Request 1. In particular, Petitioner asserts “Patent
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`Owner’s amendments did not address unpatentability, but just attempted to
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`improve its infringement position in district court,” and the Board
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`“misapprehended 37 C.F.R. § 42.121(a)(2)’s requirements for a motion to
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`amend [and] overlooked the precedential standards for applying those
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`requirements in Lectrosonics . . . .”1 Id. For the reasons that follow,
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`Petitioner’s Request for Rehearing is denied.
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`II. THE REQUEST FOR REHEARING
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`In pertinent part, 37 C.F.R. § 42.71(d) states:
`
`The burden of showing a decision should be modified
`lies with the party challenging the decision. The request must
`specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, an opposition, or
`a reply.
`
`
`1 Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 (PTAB Feb.
`25, 2019) (precedential).
`
`2
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`
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`IPR2019-01040
`Patent 8,284,844 B2
`
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`Thus, a request for rehearing is not an opportunity merely to disagree
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`with the Board’s assessment of the arguments or weighing of the evidence,
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`or to present new arguments or evidence.
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`Petitioner argues that reconsideration is appropriate because, but for
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`the Board’s misapprehension, Patent Owner’s proposed substitute claims
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`16–19 should have been denied pursuant to 37 C.F.R. § 42.121(a)(2),
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`providing that “[a] motion to amend may be denied where: (i) [t]he
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`amendment does not respond to a ground of unpatentability involved in the
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`trial; or (ii) [t]he amendment seeks to enlarge the scope of the claims of the
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`patent . . . .” Request 1.
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`We have reviewed Petitioner’s Request and carefully considered all of
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`the arguments presented. For the following reasons, we are not persuaded
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`that we misapprehended or overlooked any arguments or evidence. We,
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`therefore, deny the Request.
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`III. DISCUSSION
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`Petitioner starts with the fact that challenged claim 11 required “all
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`five recited hardware accelerators,” whereas proposed substitute claim 16
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`would “require only ‘at least four of’ the five.” Request 3 (citing Paper 19,
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`4–5). Petitioner further argues that this “broadening modification” did not
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`respond to a ground of unpatentability involved in the trial, as required by
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`37 C.F.R. § 42.121(a)(2)(i).2 Id.
`
`
`2 Petitioner does not dispute that all the proposed substitute claims are
`narrower than challenged claim 1, and therefore, as we determined in the
`Final Decision, those claims comply with the requirement to not enlarge the
`scope of the claims. Final Decision 62 (citing Lectrosonics, Inc. v. Zaxcom,
`Inc., IPR2018-01129, Paper 15 at 6–7 (PTAB Feb. 25, 2019) (Precedential)
`(“A substitute claim will meet the requirements of § 42.121(a)(2)(i) and (ii)
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`3
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`
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`IPR2019-01040
`Patent 8,284,844 B2
`
`
`A. Alleged Broadening of Claim 16
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`Petitioner asserts that the amendment to proposed substitute claim 16
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`broadened the claim “to try to improve its infringement position in a pending
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`district court matter.” Id. at 4. Petitioner argues “allowing patent owners to
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`add claims and use amendments in an inter partes review to improve their
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`infringement positions serves only patent owners’ private interests, not any
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`public ones.” Id. at 6. Therefore, argues Petitioner, we should have denied
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`the motion to amend as to proposed substitute claim 16, as well as proposed
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`substitute claims 17–19, which depend therefrom. Id. at 9.
`
`We disagree. As stated in our Final Decision, proposed substitute
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`claim 16 depends from proposed substitute claim 15, which narrows
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`challenged claim 10 to require, “wherein the plurality of hardware
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`accelerators do not comprise programmable processors which are configured
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`to operate according to different encoding/decoding formats by changing the
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`software executed by those processors.” Final Decision 60.
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`B. Alleged Failure to Respond to a Ground of Unpatentability
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`This amendment to claim 15 attempted to further distinguish the claim
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`as patentable over the references asserted in the instituted grounds. Id. In
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`particular, because Patent Owner expressly addressed the Fandrianto ’459,
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`Fandrianto ’351, and Reader references, which underlay our Institution
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`Decision, the amendment to proposed substitute claim 15 responded to the
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`grounds of unpatentability involved in the trial. Id.
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`Thus, as we determined in the Final Decision, we disagree with
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`Petitioner’s contention that proposed substitute claim 16 does not respond to
`
`
`if it narrows the scope of at least one claim of the patent . . . .”).
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`4
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`
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`IPR2019-01040
`Patent 8,284,844 B2
`
`any ground of unpatentability, because the claim includes the responsive
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`features in the claim 15 amendment, based on claim 16’s dependence on
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`claim 15. Final Decision 61. Claims 17–19 also include the responsive
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`features, based on their dependence on claim 16. Final Decision 61.
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`Petitioner asserts that, in determining whether proposed substitute
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`claim 16 responds to a ground of unpatentability, it was error to take into
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`account the above amendment of proposed substitute claim 15. Request 3–
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`4. There is no basis for Petitioner’s argument. Petitioner cites Lectrosonics
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`as requiring that the responsiveness analysis must be “made on a claim-by-
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`claim basis.” Id. at 2. Actually, the quotation from Lectrosonics that
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`Petitioner refers to deals with the requirement that the Motion to Amend
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`propose a reasonable number of substitute claims, not whether the proposed
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`substitute claims respond to a ground of unpatentability. Lectrosonics,
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`Paper 15 at 5. Lectrosonics requires “review[ing] the entirety of the record
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`to determine whether a patent owner’s amendments respond to a ground of
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`unpatentability involved in the trial.” Id. Nonetheless, our analysis is made
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`on a claim-by-claim basis — as is the case with any dependent claim,
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`proposed substitute claim 16 includes all the limitations of the claim from
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`which it depends, including the limitation that unquestionably is in response
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`to Petitioner’s original invalidity grounds. See 35 U.S.C. § 112(d) (“A claim
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`in dependent form shall be construed to incorporate by reference all the
`
`limitations of the claim to which it refers.”).
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`Petitioner also relies on the statement in Lectrosonics that “once a
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`proposed claim includes amendments to address a prior art ground in the
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`trial, a patent owner also may include additional limitations.” Request 4
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`(citing Lectrosonics, Paper 15 at 6). From this statement, Petitioner would
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`5
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`
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`IPR2019-01040
`Patent 8,284,844 B2
`
`draw the inference that only the language in proposed substitute claim 16
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`itself can include the responsive amendment before a non-responsive
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`amendment would be permitted. Id. at 4–5. Again, there is no basis for this,
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`because by definition a dependent claim includes the limitations of the claim
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`it refers to.3
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`Petitioner further argues in the alternative, that even if it were proper
`
`to consider the responsive amendment of proposed substitute claim 15 (and,
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`as we have determined, it is proper), the additional amendment to proposed
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`substitute claim 16 requiring only four out of five accelerators still should
`
`not be permitted. Request 5–6. Petitioner cites the statement in
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`Lectrosonics that, once a responsive amendment is proposed, additional non-
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`responsive “modifications that address potential 35 U.S.C. § 101 or § 112
`
`issues, for example, are not precluded by rule or statute.” Id. at 5 (citing
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`Lectrosonics, Paper 15 at 6). Petitioner interprets this statement to mean that
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`additional non-responsive amendments are limited to those that address
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`Section 101 or 112 issues. Id. at 6. However, as the quoted statement
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`indicates, addressing Section 101 or 112 issues are examples of permitted
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`non-responsive amendments, not an exclusive list. See, e.g., SZ DJI Tech.
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`Co., Ltd. v. Drone-Control LLC, IPR2018-00207, Paper 44 at 38 (PTAB
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`June 11, 2019). There is no per se rule that would deny such additional
`
`
`3 Petitioner relies on the non-precedential opinion in Apple Inc. v. Valencell,
`Inc., IPR2017-00317, Paper 46 at 54–55 (PTAB June 1, 2018), which, it
`argues, supports its position that a dependent claim must include a
`responsive amendment in the four corners of the claim itself, rather than in
`the claim it refers to. Request 8. Our decision, however, applies the
`precedential Lectrosonics decision and 35 U.S.C. § 112.
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`6
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`
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`IPR2019-01040
`Patent 8,284,844 B2
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`amendments based on speculation as to the motives of Patent Owner that led
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`to the amendment.
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`In sum, we are not persuaded that the Final Decision overlooked or
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`misapprehended the arguments with respect to the Panel’s grant of the
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`Motion to Amend as to proposed substitute claims 16–19.
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`IV. CONCLUSION
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`We have reviewed and considered the arguments in Petitioner’s
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`Rehearing Request and conclude that Petitioner has not carried its burden of
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`demonstrating that the Board misapprehended or overlooked any matters in
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`rendering the Final Written Decision. 37 C.F.R. § 42.71(d).
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`Thus, Petitioner’s challenge does not meet the standard set forth for a
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`request for rehearing.
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`The Request for Rehearing is denied.
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`Outcome of Decision on Rehearing:
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`Claims
`
`
`35
`U.S.C. §
`
`References
`
`Fandrianto ’459
`Fandrianto ’459,
`Fandrianto ’351,
`Reader
`Fandrianto ’459,
`Fandrianto ’351,
`Reader, Harrand
`
`
`1, 9, 10
`11–13
`
`103(a)
`103(a)
`
`14
`
`103(a)
`
`
`
`Overall
`Outcome
`
`
`
`
`
`
`7
`
`Claims
`Shown
`Unpatentable
`1, 9, 10
`11–13
`
`Claims
`Not shown
`Unpatentable
`
`
`
`14
`
`1, 9–14
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`
`
`
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`
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`IPR2019-01040
`Patent 8,284,844 B2
`
`
`Motion to Amend Outcome
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`Claim(s)
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`Original Claims Cancelled by Amendment
`Substitute Claims Proposed in the Amendment
`Substitute Claims: Motion to Amend Granted
`Substitute Claims: Motion to Amend Denied
`Substitute Claims: Not Reached
`
`
`
`15–19
`16–19
`15
`
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`Final Outcome of Final Written Decision after Rehearing:
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`Claims
`
`
`35
`U.S.C. §
`
`References
`
`1, 9, 10
`11–13
`
`103(a)
`103(a)
`
`14
`
`103(a)
`
`
`
`Overall
`Outcome
`
`
`Fandrianto ’459
`Fandrianto ’459,
`Fandrianto ’351,
`Reader
`Fandrianto ’459,
`Fandrianto ’351,
`Reader, Harrand
`
`
`Claims
`Shown
`Unpatentable
`1, 9, 10
`11–13
`
`Claims
`Not shown
`Unpatentable
`
`
`
`14
`
`1, 9–14
`
`
`
`
`
`Motion to Amend Outcome
`
`Claim(s)
`
`Original Claims Cancelled by Amendment
`Substitute Claims Proposed in the Amendment
`Substitute Claims: Motion to Amend Granted
`Substitute Claims: Motion to Amend Denied
`Substitute Claims: Not Reached
`
`
`
`15–19
`16–19
`15
`
`
`
`
`
`
`
`
`8
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`
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`IPR2019-01040
`Patent 8,284,844 B2
`
`
`PETITIONER:
`
`Jonathan Bockman
`Shouvik Biswas
`Fahd Hussein Patel
`MORRISON & FOERSTER LLP
`jbockman@mofo.com
`sbiswas@mofo.com
`fpatel@mofo.com
`
`PATENT OWNER:
`
`John M. Caracappa
`Katherine D. Cappaert
`STEPTOE & JOHNSON LLP
`jcaracap@steptoe.com
`kcappaert@stepxtoe.com
`
`
`
`9
`
`
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