Ex Parte 7299155 et al

Patent Trial and Appeal Board

Nov 19, 2015

95000670 (P.T.A.B. Nov. 19, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,670 05/31/2012 7299155 ART-12-5018REX 9750
25226 7590 11/20/2015
MORRISON & FOERSTER LLP
755 PAGE MILL RD
PALO ALTO, CA 94304-1018
EXAMINER
ENGLAND, DAVID E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/20/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ARTERIS, INC.,
Requester,

v.

SONICS, INC.,
Patent Owner.
____________

Appeal 2015-004350
Reexamination Control 95/000,670
Patent 7,299,155 B2
Technology Center 3900
____________

Before STEPHEN C. SIU, BRADLEY W. BAUMEISTER, and
IRVIN E. BRANCH, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
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Arteris, Inc. (“Requester”) appeals under 35 U.S.C. §§ 134 and 315
the Examiner’s non-adoption of the rejections of claims 1–9, 13, 15, and 18
over various references.1 PO App. Br. 4–5. We have jurisdiction under
35 U.S.C. §§ 134 and 315. An oral hearing was conducted on August 5,
2015.

STATEMENT OF THE CASE
This proceeding arose from a May 31, 2012 request by Arteris, Inc.
(“Requester”) for an inter partes reexamination of claims of U.S. Patent
7,299,155 B2, titled “Method and Apparatus for Decomposing and
Verifying Configurable Hardware” and issued to Jeffrey Allen Ebert, Ravi
Venugopalan, and Scott Carlton Evans, on November 20, 2007 (“the
’155 patent”).
The ’155 patent describes a method and system for hardware
verification. Spec. 1:17–19.
Claims 1 and 9 read as follows:

1. A method comprising:
automatically decomposing a set of one or more units at a first
level of a configurable hardware system design hierarchy into a set of
two or more units of a lower level of the hardware system design
hierarchy, wherein the set of one or more units at a first level includes
one or more units dynamically instantiated at design creation time as
well as at least a first unit composed of a previously instantiated
hardware system composed with two or more levels of units within
the hardware system design hierarchy of the previously instantiated
hardware system; and

1 Brief on Appeal by Appellant Requestor in an Inter Partes Reexamination
Proceeding, dated January 22, 2014 (“3PR App. Br.”).
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individually verifying units of each hierarchy level of the
hardware system design hierarchy successively from the lower levels
to the first level with testbenches, wherein the sequences of test inputs
for the previously instantiated hardware system are reused when
testing that previously instantiated hardware system in the
configurable hardware system.

9. An apparatus, comprising:
a generation and verification unit to automatically generate,
decompose, and verify a configurable hardware system; wherein a
first instance of the configurable hardware system is different in
function than a second instance of the configurable hardware system,
and the generation and verification unit to create code for a unique
instance of a unit from configurable parameters based on
configuration data provided at design creation time.

The cited references are as follows:

Njinda US 6,080,203 June 27, 2000
Bollano WO 02/08966 A2 Jan. 31, 2002
Nadeau US 6,868,532 B2 Mar. 15, 2005
Bortfeld US 7,050,958 B1 May 23, 2006

Requester appeals the Examiner’s non-adoption of the rejection of
claims 1, 4–6, 8, 9, 13, and 18 under 35 U.S.C. § 102(b) as anticipated by
Njinda, under 35 U.S.C. §§ 102(a) and/or 102(e) as anticipated by Nadeau,
and under 35 U.S.C. § 103(a) as unpatentable over either one of Njinda or
Nadeau. Requester also appeals the Examiner’s non-adoption of the
rejection of claims 2, 3, 7, and 15 under 35 U.S.C. § 103(a) as unpatentable
over any one of Njinda or Nadeau in combination with any one of Bortfeld
or Bollano.
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ISSUE

Did the Examiner err in not rejecting claims 1–9, 13, 15, and 18?

PRINCIPLES OF LAW

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
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, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

ANALYSIS

Claim 1, for example, recites “automatically decomposing a set of one
or more units . . . into a set of two or more units.” Claims 9 and 19 recite a
similar feature. The Examiner states that Nadeau “analyzes . . . blocks
independently of other selected blocks” but fails to disclose “automatically
partitioning [i.e., automatically decomposing] their circuit design for testing”
and that Nadeau discloses “decomposing a set of one or more units . . . but
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none of which are done automatically.” RAN 21, 15, see also RAN 10–11
(citing Nadeau 10:30–36, Fig. 7). Hence, the Examiner finds that Nadeau
discloses “decomposing,” as recited in claim 1, but fails to disclose that the
“decomposing” is performed “automatically,” as recited in claim 1. Patent
Owner concurs with the Examiner. PO Resp. Br. 14–16. Patent Owner
further concurs with the Examiner that one of ordinary skill in the art would
have understood the term “automatically” to mean “having a self-acting or
self-regulating mechanism.” PO Resp. Br. 4.
Claims are to be given their broadest reasonable interpretation
consistent with the specification, and the language should be read in light of
the specification as it would be interpreted by one of ordinary skill in the
art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004)
(citations omitted). “To begin with, the context in which a term is used in
the asserted claim can be highly instructive.” “[T]he claims themselves
provide substantial guidance as to the meaning of particular claim terms.”
Phillips v. AWH Corp., 415 F.2d 1303, 1314 (Fed. Cir. 2005), citing
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
Claim 1 recites “automatically” decomposing one or more units at a
first level into a set of units of a lower level. Claim 1 does not recite
additional characteristics of “automatically.” Thus, based on the context of
the claims themselves, one of ordinary skill in the art would not understand
the term “automatically” to include any specific characteristics.
The Specification “is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term.” Vitronics Corp., 90 F.3d at 1582. In the present case,
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the Specification discloses that a “generation and verification unit
hierarchically decomposes a configurable hardware system into units that
make up the system design” and may “automatically decompose a set of one
or more units . . . into a set of two or more units.” Spec. 2:67–3:2, 3:7–10.
See also Spec. 9:30–32. The Specification also discloses that “any . . . or all
. . . of the methodologies . . . [is] a set of instructions (i.e., software).” See,
e.g., Spec. 11:5–10. In other words, the Specification discloses that
“automatically” decomposing a system is performed by a “generation and
verification unit” that is a “set of instructions.” Based on at least this
disclosure, one of ordinary skill in the art would have understood that
performing an action “automatically,” under a broadest reasonable
construction in light of the Specification, would have included performing
the action by executing computer instructions (or “software”).
We also note that the Specification discloses that “the generation and
verification unit . . . sets some parameters during the . . . decomposition
process,” maps “configuration data . . . onto a selected unit’s parameters” by
a “decomposition module,” “[t]he configuration data . . . may be supplied by
a user through a text file,” and the “decomposition module . . . generates
configuration data . . . specifying the selected unit’s parameters.” Spec. 4:6–
10, 7:66–67, 8:34–35. “[A] program file determines what type and number
of units are being tested.” Spec. 9:2–3. In other words, the computer that
executes software instructions “automatically” may do so with data obtained
from a source external to the computer, such as a “user.”
Even though extrinsic evidence has been considered “less significant
than the intrinsic record,” the court has also stated that “extrinsic evidence
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‘can shed useful light on the relevant art” and that “dictionaries and treatises
can be useful in claim construction.” Phillips, 415 F.3d at 1317–1318
(citing Renishaw PLC v. Marposs Societa per Azioni, 158 F.3d 1243, 1250
(Fed. Cir. 1998) and Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1344
(Fed. Cir. 2001)). As discussed above, both the Examiner and Patent Owner
propose a dictionary definition of the term “automatically” as “having a self-
acting or self-regulating mechanism.” This proposed dictionary definition is
consistent with a computer executing instructions.
Hence, we conclude that under a broadest reasonable construction in
light of the Specification, one of ordinary skill in the art would have
understood that the term “automatically” with respect to performing an
action, includes performing the action utilizing computer-executable
instructions and/or data (of which may be obtained from a source, such as a
person, that is external to the computer).

Nadeau Reference

Nadeau discloses that a “circuit is divided into hierarchical blocks or
modules” and that “each of one or more selected hierarchical blocks [are
analyzed] independently of other selected blocks.” Nadeau 2:11–12, 21–22.
Nadeau also discloses that “embodiments of the invention are capable of
being distributed as a program product” that includes “recordable type media
such as volatile and non-volatile memory devices, floppy disks, hard disk
drives, CD-ROM’s, and DVD’s.” Nadeau 4: 21–27. In other words,
Nadeau discloses the use of a computer in the various embodiments. Hence,
Nadeau discloses decomposing a system (i.e., dividing a circuit into
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hierarchical blocks) “automatically” (i.e., with a computer utilizing
computer-executable instructions and/or data).
Patent Owner argues that Nadeau “fails to expressly disclose
automatic decomposition.” PO Resp. Br. 14. To the extent that Patent
Owner argues that Nadeau fails to disclose the term “automatically,” we are
not persuaded by Patent Owner’s argument, at least because Patent Owner
has not demonstrated sufficiently that the use of the specific term
“automatically” in the Nadeau reference is required.
Patent Owner argues that “nothing in Nadeau . . . discloses or suggests
that the described hierarchy was created with automatic decompositions.”
PO Resp. Br. 15. We are not persuaded by Patent Owner’s argument
because, as discussed above, Nadeau discloses the use of computer
executable instructions and/or data (e.g., instructions stored on a “program
product”), which one of ordinary skill in the art would have understood, in
light of the Specification, to be included in “automatically” performing an
action.
Patent Owner argues that Nadeau fails to disclose “any type of
decomposition.” PO Resp. Br. 15. However, Patent Owner fails to
demonstrate sufficiently a difference between a “decomposition,” as recited
in claim 1, for example, and Nadeau’s disclosure of a circuit that is “divided
into hierarchical blocks or modules.” Nadeau 2:10–11. We are not
persuaded by Patent Owner’s argument.
Claim 9 recites “wherein a first instance of the configurable hardware
system is different in function than a second instance of the configurable
hardware system.” Claims 10–18 depend from claim 9. Patent Owner
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argues that Nadeau fails to disclose a first instance different in function than
a second instance. PO Resp. Br. 16. This argument was raised for the first
time in Patent Owner’s Comments on Statement of Reasons for Patentability
Confirmation for Inter Partes Reexamination, dated May 16, 2013
(“PO Comments after ACP”), which was filed in response to the Examiner’s
Action Closing Prosecution (ACP). The Examiner found that Patent
Owner’s new argument was untimely presented2 and declined to consider
Patent Owner’s argument. RAN 17–18.
Patent Owner now presents again in Patent Owner’s Respondent Brief
the previously improperly and untimely presented argument. Patent Owner
does not indicate how the argument that was previously found to be
untimely presented is now somehow timely. Also, “[t]he respondent brief
shall be limited to issues raised in the appellant brief to which the respondent
brief is directed.” 37 C.F.R. § 41.68(a)(3). Because Patent Owner’s
Respondent Brief is limited to issues raised in Requester’s Appellant Brief
and because Patent Owner does not demonstrate sufficiently that this issue
was raised in Requester’s Appellant Brief, Patent Owner’s argument
pertaining to this issue is improper.
In any event, claim 9 recites that a first instance of the configurable
hardware system is different in function than a second instance of the
configurable hardware system. Patent Owner argues that one of ordinary
skill in the art would have construed “different in function,” as recited in
claim 9, broadly but reasonably, to require “structurally different in a

2 “After an Office action closing prosecution in an inter partes
reexamination, the patent owner may once file comments limited to the
issues raised in the Office action closing prosecution.” 37 C.F.R. § 1.951(a).
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functional way” and that “Nadeau . . . discloses, all of the lithography masks
. . . have been made . . . [and] structural changes cannot be made to . . . a
first instance of [the hardware system].” PO Comments after ACP 28, 32,
33.
Patent Owner cites various portions of the Specification in support of
this proposed broadest reasonable construction of the term “different in
function.” For example, Patent Owner argues that the Specification
discloses “each instance of a configurable hardware system is different,” “it
is necessary to verify a system’s functionality by testing the system and its
components,” “verifying system functionality can focus on potential
problems,” “[a] first instance of the configurable hardware system may
be different in function than a second instance of the configurable hardware
system,” a library “describes all possible configurations of the system’s
hardware components,” “the topology of units in the first instance of the
configurable hardware system can be modified . . . [and that]
[s]uch modification allows the topology of units in the first instance . .
. to be different from the topology of units in the second instance,” and
that “[t]he configurable hardware system may be customized.” PO
Comments after ACP 28–29 (citing Specification 1:33–50, 4:27–40, 60–67,
7:36–47, 9:40–45).
We are not persuaded by Patent Owner’s arguments at least because
Patent Owner does not demonstrate sufficiently that any of the cited portions
of the Specification indicates that the claimed “different in function” must
also include “structurally different.” At best, the cited portions of the
Specification appear merely to disclose a first instance of a system “different
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in function than a second instance” that can be verified by testing of the
system and that the topology of units in a system may be also modified.
Patent Owner does not point out where the Specification discloses that when
a first instance of a configurable hardware system is “different in function”
from a second instance, it must be structurally different as well.
Patent Owner also cites large portions of the expert testimony of Dr.
Goossens. PO Comments after ACP 29–30. However, Patent Owner does
not demonstrate sufficiently that any of the cited testimony of Dr. Goossens
supports Patent Owner’s contention that one of ordinary skill in the art
would have understood, under a broadest reasonable construction, that the
term “different in function,” in light of the Specification, also requires
“structurally different” as well.
Patent Owner argues that one of ordinary skill in the art would have
understood that the term “different in function” also must require
“structurally different” because of “the plain meaning of the grammar and
context of the claim language as used in issued claim 9.” PO Comments
after ACP 32. We are not persuaded by Patent Owner’s argument at least
because the “plain meaning of the grammar” of the term “different in
function” would have been understood by one of ordinary skill in the art to
mean what it says, i.e., “different in function.” Patent Owner does not point
out specific reasons as to how the “plain meaning of the grammar” of the
term “different in function” would have compelled one of ordinary skill in
the art to include additional non-recited features. Similarly, Patent Owner
does not explain what “context of the claim language” of claim 9 would
have been understood by one of ordinary skill in the art that a recited claim
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limitation (i.e., “different in function”) would have required the additional
non-recited feature of “structurally different” as well.
Hence, we decline to adopt Patent Owner’s proposed construction of
the term “different in function” to also require “structurally different.”
Rather, we broadly but reasonably construe the term “different in function”
to mean precisely what it says – i.e., different in function or having a
function that is different.
Patent Owner argues that Nadeau fails to disclose “different in
function,” in which “different in function” requires being “structurally
different in a functional way.” PO Comments after ACP 32–33. As
previously discussed, we are not persuaded by Patent Owner that one of
ordinary skill in the art would have broadly but reasonably construed the
term “different in function,” in light of the Specification, to also require
“structurally different in a functional way.” Therefore, we need not further
consider Patent Owner’s argument with respect to this issue.
No additional arguments are identified in support of claims 1–9, 13,
15, or 18 or the Bortfeld or Bollano references. The Examiner erred in not
adopting the rejection of claims 1, 4–6, 8, 9, 13, and 18 as anticipated by or
unpatentable over Nadeau and claims 2, 3, 7, and 15 as unpatentable over
Nadeau and any one of Bortfeld or Bollano.
In view of the above, we need not consider the propriety of the
Examiner’s non-adoption of the rejection of claims 1–9, 13, 15, or 18 based
on other grounds (i.e., grounds based on Njinda). Cf. In re Gleave, 560 F.3d
1331, 1338 (Fed. Cir. 2009).

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DECISION
We reverse the Examiner’s non-adoption of the rejection of claims 1,
4–6, 8, 9, 13, and 18 under 35 U.S.C. §§ 102(a) and/or 102(e) and under
35 U.S.C. § 103(a) as anticipated by and unpatentable over, respectively,
Nadeau and claims 2, 3, 7, and 15 under 35 U.S.C. § 103(a) as unpatentable
over Nadeau and any one of Bortfeld or Bollano.
Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversal constitutes
a new ground of rejection. Section 41.77(b) provides that “[a] new ground
of rejection . . . shall not be considered final for judicial review.” That
section also provides that Patent Owner, WITHIN ONE MONTH FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new grounds of rejection to avoid termination of
the appeal proceeding as to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such a
response must be either an amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both.

(2) Request rehearing. The owner may request that
the proceeding be reheard under § 41.79 by the Board
upon the same record. The request for rehearing must
address any new ground of rejection and state with
particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
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Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)–(d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

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PATENT OWNER:
MORRISON & FOERSTER LLP
755 Page Mill Road
Palo Alto, CA 94304-1018

REQUESTER:
Patent Group
c/o DLA Piper US LLP
203 N. Lasalle Street
Suite 1900
Chicago, IL 60601

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