LG Electronics, Inc.v.Advanced Micro Devices, Inc.

Patent Trial and Appeal Board

Sep 4, 2015

09088346 (P.T.A.B. Sep. 4, 2015)

Trials@uspto.gov
571-272-7822
Paper 15
Entered: September 4, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LG ELECTRONICS, INC.,
Petitioner,

v.

ADVANCED MICRO DEVICES, INC.,
Patent Owner.
____________

Case IPR2015-00329
Patent 6,266,715 B1
____________

Before BRIAN J. MCNAMARA, RAMA G. ELLURU, and
JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION
Denying Request for Rehearing
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
LG Electronics, Inc. (“Petitioner”) filed a Petition (Paper 2 (“Pet.”)) to
institute an inter partes review of claims 1, 10, 13, 22, 24, and 25 (the “challenged
claims”) of Patent No. US 6,266,715 B1 (Ex. 1001, “the ’715 patent”), pursuant to
35 U.S.C. §§ 311–319. Pet. 1. Petitioner challenged these claims of the ’715
patent on the following three grounds (Pet. 14–58):
Claims Grounds References
1, 10, and 25 35 U.S.C. § 103(a) USBN9602 (Ex. 1004) and
Intel 8237 (Ex. 1006)
1, 10, and 25 35 U.S.C. § 103(a) EIFUFAL501 (Ex. 1009)
and Intel 8237 (Ex. 1006)
1, 10, 13, 22, 24,
and 25
35 U.S.C. § 103(a) USB97C100 (Ex. 1011) and
Dunnihoo (Ex. 1013)

Advanced Micro Devices, Inc. (“Patent Owner”) filed a Preliminary Response
(Paper 12; “Prelim. Resp.”).
For the reasons discussed in our Decision on Institution (Paper 13, “Dec. on
Inst.”), we denied institution of an inter partes review of any of the challenged
claims. Pursuant to 37 C.F.R. § 42.71(d), Petitioner filed a Request for Rehearing
(Paper 14, “Reh’g Req.”), seeking reconsideration of our Decision on Institution.
For the reasons set forth below, Petitioner’s Request for Rehearing is denied.
II. DISCUSSION
37 C.F.R. § 42.71(d) provides that:
A party dissatisfied with a decision may file a request for rehearing,
without prior authorization from the Board. 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
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where each matter was previously addressed in a motion, opposition,
or a reply.
(Emphasis added.) When rehearing a Decision on Institution, the Board reviews
the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).
Petitioner asserts three bases for its Request for Rehearing. Reh’g Req. 1–2.
First, Petitioner argues that we overlooked or misapprehended evidence regarding
the proper construction of the claim limitation: “a plurality of USB endpoints, each
selectively programmed for one of the/a plurality of DMA channels during the
DMA mode of the USB controller,” and, consequently, we failed to give that
limitation its “broadest reasonable interpretation.” Id. at 2–4. Second, Petitioner
argues that we overlooked or misapprehended evidence with respect to whether the
combination of the teachings of USBN9602 and Intel 8237 would have rendered
the subject matter of certain challenged claims obvious. Id. at 4–6. Third,
Petitioner argues that we misapprehended or overlooked evidence with respect to
whether the combination of the teachings of USB97C100 and Dunnihoo would
have rendered the subject matter of certain challenged claims obvious. Id. at 6–11.
1. Claim Construction
With regard to its first basis, Petitioner argues that we improperly narrowed
our construction of the limitation: “a plurality of USB endpoints, each selectively
programmed for one of the/a plurality of DMA channels during the DMA mode of
the USB controller” by requiring that each USB endpoint be programmed for a
different DMA channel. Reh’g Req. 3. In particular, Petitioner argues that,
because we adopted a construction that was “consistent with the Specification of
the ’715 Patent” (id. (quoting Dec. on Inst. 18)), we adopted a construction that
was narrower than the “broadest reasonable construction” and that improperly
imported limitations from the Specification into the claim limitation (id.).
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In our Decision on Institution, we noted that “[t]here is a presumption that
claim terms are given their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art in the context of the specification.
See In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).” Dec. on
Inst. 7. Consequently, we began our construction with the plain and ordinary
meaning of the limitations of the claim. As we explained in the Decision on
Institution,
Claims 1 and 25 recite “a plurality of USB endpoints, each selectively
programmed for one of [the/a] plurality of DMA channels during the
DMA mode of the USB controller.” Ex. 1001, col. 11, ll. 65–67,
col. 13, ll. 40–42 (emphasis added). Petitioner acknowledges that,
although this limitation may be construed to provide for each USB
endpoint to be programmed for a different DMA channel, the claim
language does not require that construction. Pet. 18. Instead,
Petitioner suggests that limitation may be construed to provide for
each USB endpoint to be programmed for the same DMA channel.
Id. (citing Ex. 1003 ¶¶ 66, 67). We disagree.
Dec. on Inst. 17. We determined that, contrary to Petitioner’s assertion, the plain
and ordinary meaning of the claim limitation requires each USB endpoint to be
programmed for a different DMA channel. We then noted that that Dr.
Bagherzadeh’s unsupported opinion testimony was unpersuasive, and that our
assessment of the plain and ordinary meaning of this limitation was consistent with
the disclosure in the Specification.
1
Id. at 17–18 (citing Ex. 1003 ¶¶ 66, 67 (“I
believe that it is appropriate to disclose how I read the plain language of the
claim.”) (emphasis added)). Thus, we did not overlook or misapprehend

1
In its arguments with respect to each of the bases for its Request for Rehearing,
Petitioner asserts that “the Patent Owner provided no expert testimony regarding
its interpretation of this claim language but relied purely on attorney argument.”
Reh’g Req. 3; see id. at 5–6, 9. However, Patent Owner may not present new
testimonial evidence at this stage of the proceeding. 37 C.F.R. § 42.107(c).
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Petitioner’s evidence, but we were not persuaded that Petitioner’s proposed
construction is the broadest reasonable interpretation of this limitation. Id. at 18
(citing Translogic Tech. Inc., 504 F.3d at 1257).
2. Combination of the Teachings of USBN9602 and Intel 8237
With regard to Petitioner’s second basis, Petitioner argues that we
improperly imported two additional limitations into our construction of the claims
and then found that the proposed combination of the teachings of USBN9602 and
Intel 8237 failed to teach or suggest those limitations. Reh’g Req. 4. In particular,
Petitioner notes that we stated in our Decision on Institution that “such a
combination [of USBN9602 and Intel 8237] only permits one of the plurality of
endpoints of USBN9602 to be connected to one DMA channel of Intel 8237 at a
time.” Id. (quoting Dec. on Inst. 19 (emphasis added by Petitioner)). Petitioner
argues that this analysis improperly imports a “temporal limitation” into the claim.
Id. Further, Petitioner notes that we stated in our Decision on Institution that
“Petitioner’s proposed combination of two USBN9602 controllers would not
necessarily teach the same Function Address for each of the plurality of
endpoints.” Id. (quoting Dec. on Inst. 19) (emphasis added). Petitioner argues that
this analysis improperly imports a requirement that the “USB controller . . . have
the same Function Address for all of the endpoints” into the claim. Id. at 5.
We determined that the proposed combination does not teach or suggest the
existing limitation that each USB endpoint is programmed for a different DMA
channel. Dec. on Inst. 19. Because “USBN9602 teaches that, ‘[a]ccording to the
USB specification, up to 31 such endpoint pipes are supported at any given time,
each with the same Function Address’” (Dec. on Inst. 20 (quoting Ex. 1004, 4)),
we were persuaded that Petitioner failed to demonstrate that a person of ordinary
skill in the art would have had reason to combine the two USBN9602 controllers
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with one Intel 8237 controller in the manner proposed in the Petition to achieve the
USB device, USB host, or USB controller, as recited in the challenged claims (id.
at 19–20).
With respect to the combination of the teachings of two USBN9602
controllers and Intel 8237 controller, Petitioner argues that we were “mistaken as
to how the USBN9602 controllers operate.” Reh’g Req. 5. In particular, Petitioner
argues that two USBN9602 controllers “would only support a maximum of 14 total
endpoints, “well below the maximum number of 31 endpoint pipes required by the
USB specification.” Id. (citing Dec. on Inst. 19, 20). Nevertheless, Petitioner fails
to show where this argument was raised in its Petition. See 37 C.F.R. § 42.71(d).
In addition, Petitioner argues that “Patent Owner summarily asserts that a person of
ordinary skill in the art would not add a second USBN9602 controller to the device
because of the ‘significant modifications that would be required and that were
contrary to prevailing market forces.’” Id. (citing Prelim. Resp. 28). Petitioner
contends that Patent Owner’s arguments are unsupported and conclusory. Id. at 6.
We did not rely, however, on Patent Owner’s argument, quoted by Petitioner, in
reaching our decision; and Petitioner fails to show otherwise. We could not
overlook or misapprehend arguments that Petitioner did not make or evidence that
Petitioner did not present. Patent Owner’s arguments, upon which we did not rely,
are not relevant to the reconsideration of our Decision on Institution.
3. Combination of the Teachings of USB97C100 and Dunnihoo
With regard to Petitioner’s third basis, Petitioner presents three arguments
relating to the combination of the teachings of USB97C100 and Dunnihoo in
support of its Request for Rehearing. Reh’g Req. 6–11. First, Petitioner argues
that we misapprehended the relevance of Dunnihoo’s arbiter’s effect on the data
path. Id. at 6–8. Second, Petitioner argues that we improperly concluded that
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Petitioner’s reason for combining the teachings of these references to increase the
number of data paths between the USB device and the USB host was based on
improper hindsight. Id. at 8–10. Third, Petitioner argues that we overlooked or
misapprehended Petitioner’s explanation of how each of the endpoints is
programmed selectively for one of the plurality of DMA channels. Id. at 10–11.
a. Arbiter’s Effect on the Data Path
For purposes of our Decision on Institution, we adopted Petitioner’s
construction of the limitation “DMA channel” to mean “a path for moving data
directly to or from memory locations without processor intervention.” Dec. on
Inst. 8 (citing Pet. 11) (emphases added). Referring to Dunnihoo’s Figure 3,
Petitioner argues that Dunnihoo teaches a data path that extends from a first DMA
controller, i.e., SIE DMA 86, to RAM 82 via arbiter 84. Reh’g Req. 7
(reproducing Ex. 1013, Fig. 3). Initially, we determined that, because data is
moved between SIE DMA 86 and RAM 82 via arbiter 84, Dunnihoo does not
describe a “path for moving data directly to or from memory locations.” Id. (citing
Dec. on Inst. 24–25).
In addition, Petitioner’s declarant, Dr. Bagherzadeh, states that “[a]n arbiter
acts as traffic control between the 8051 microcontroller [72], the Intel DMA
Controller[, i.e., 8237 DMA Controller 74,] and the SIEDMA[, i.e., SIE DMA
86].” Ex. 1003 ¶ 98 (citing Ex. 1013, 12); see also Ex. 1013, claim 4 (“said arbiter
arbitrates access of said first DMA controller, said second DMA controller and
said microcontroller to said RAM”). We are persuaded that 8051 microcontroller
72, 8237 DMA Controller 74, or SIE DMA 86 are processors (Ex. 1013, col. 6, ll.
30–31; see Prelim. Resp. 41) or interfaces to processors (see Ex. 1006, 1), and that
Dunnihoo’s Figure 3 depicts each of these devices as providing input to arbiter 84.
Contrary to Petitioner’s assertion in the Request for Rehearing, we are not
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persuaded that any of these devices, e.g., processors (Prelim. Resp. 41 (citing Ex.
1013, col. 6, ll. 30–31)), need be placed between SIE DMA 86 and RAM 84 in
order to intervene in the moving of the data. Because arbiter 84 controls the data
flow to RAM 84 in accordance with signals from 8051 microcontroller 72, 8237
DMA Controller 74, or SIE DMA 86 and “only allows access to the RAM by one
controller at a time” (Prelim. Resp. 41 (citing Ex. 1013, col. 6, ll. 45–48)), we also
are persuaded that 8051 microcontroller 72, 8237 DMA Controller 74, or SIE
DMA 86 intervenes in the flow of data to RAM 84 via arbiter 84. Dec. on Inst. 25.
b. Increasing Dunnihoo’s Data Path to Two Data Paths
In the Decision on Institution, we agreed with Patent Owner that Petitioner’s
reason for increasing Dunnihoo’s data path to two data paths” is not supported by
evidence and “Petitioner’s proposed reason for combining the teaching of these
references is based on hindsight improperly gleaned from the challenged claims.”
Reh’g Req. 8 (quoting Dec. on Inst. 26). Petitioner argues that it provided a reason
for modifying the teachings of Dunnihoo to increase Dunnihoo’s disclosed data
path to two data paths. Id. In particular, Petitioner argues that
one of ordinary skill in the art would be motivated to do so because
packets from the USB host destined for the Dunnihoo controller’s
RAM in the USB device and packets from the USB device destined
for the USB host would no longer share the same data path, thus
increasing the efficiency of the SIE and the Dunnihoo controller as a
whole.
Id. at 8–9 (quoting Pet. 46).
Nevertheless, Petitioner supports this argument only by citation to the
insufficiently supported testimony of Petitioner’s declarant, Dr. Bagherzadeh. Pet.
46 (citing Ex. 1003 ¶ 109). Dr. Bagherzadeh asserts that a person of ordinary skill
in the art would increase the disclosed data path to two data paths, citing to
teachings in the Patent No. US 4,637,015 to Bobey (Ex. 1016) that “[i]t is known
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to incorporate DMA channel handling capabilities in the microprocessor integrated
circuit chip itself, one example of such a chip being the Intel 80186
microprocessor. This microprocessor provides for two DMA channels, which are
typically used respectively for transmitting and receiving data packets.” Ex. 1003
¶ 109 (quoting Ex. 1016, col. 1, ll. 5–36). Petitioner, however, does not indicate
where it included arguments based on the teachings of Bobey regarding packet
transmission and reception via a shared DMA channel in the Petition, and the only
citation that we find to Bobey in the Petition is in Petitioner’s Exhibit List (Pet.
iii.). Although we considered Petitioner’s argument and the relevant testimony of
Dr. Bagherzadeh (Dec. on Inst. 25 (quoting Pet. 46)), after reviewing the
arguments and evidence, we were not persuaded that Petitioner has shown
sufficiently that a person of ordinary skill in the art would have modified the
teachings of Dunnihoo in the manner proposed for the reason proffered (id. at 26).
2

Thus, in the absence of sufficient supporting evidence, we are not persuaded
by Petitioner that we improperly concluded that Petitioner’s reason for combining
the teachings of these references to increase the number of data paths between the
USB device and the USB host was based on improper hindsight.
c. Selecting Tx and Rx Queues Depending on USB Endpoint Polled
Similarly, Petitioner argues that we overlooked Petitioner’s evidence
regarding the modification of Dunnihoo’s path into two paths. Reh’g Req. 9
(citing Pet. 49). In particular, Petitioner argues that, in view of Dunnihoo’s
disclosure of the Tx and Rx queues (Pet. 49 (citing Ex. 1013, col. 6, ll. 53–55)),

2
As noted above, Dr. Bagherzadeh cited to Bobey (Ex. 1016) in his declaration.
Petitioner’s citation to Dr. Bagherzadeh’s testimony (Pet. 46) does not incorporate
Dr. Bagherzadeh’s remarks on Bobey into the Petition. Petitioner fails to explain
the significance of Bobey’s teachings to the applied references or to its arguments
and does not propose to combine expressly Bobey’s teachings with those of the
other applied references in its asserted grounds for unpatentability.
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“Dunnihoo’s disclosure of selecting the appropriate channel depending on the USB
endpoint polled is sufficient and anticipates ‘a plurality of USB endpoints, each
selectively programmed for one of the plurality of DMA channels’” (Reh’g Req.
9–10 (citing Pet. 49)). We noted, however, that Dunnihoo already teaches separate
transmit and receive packet paths 92, 94 (E.g., Ex. 1013, col. 6, ll. 49–59; see Dec.
on Inst. 24 (reproducing Ex. 1013, Fig. 3 (as annotated))) and considered
Petitioner’s arguments regarding these separate paths (see Dec. on Inst. 25–26
(quoting Prelim. Resp. 47 (discussing arguments presented at Pet. 49))). Further,
we note that Dunnihoo teaches that “[the Tx and Rx] queues do not store packets
(the packets are stored in the single ported RAM). Rather, the queue stores packet
numbers or other identifiers for the packets stored in the RAM.” Ex. 1013, col. 4,
ll. 48–51 (emphases added); see id. at col. 6, ll. 15–19. As we indicated in the
Decision on Institution, we did not overlook these arguments; instead, we found
them insufficiently supported and unpersuasive. Dec. on Inst. 26.
III. ORDER
For the reasons given, it is
ORDERED that Petitioner’s Request for Rehearing is denied.

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PETITIONER:

Robert G. Pluta
Bryon Wasserman
Cody Gillians
MAYER BROWN LLP
rpluta@mayerbrown.com
bwasserman@mayerbrown.com
cgillians@mayerbrown.com

PATENT OWNER:

Michael D. Specht
Donald Featherstone
Michael B. Ray
Christian Camarce
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
mspecht-PTAB@skgf.com
donf-PTAB@skgf.com
mray-PTAB@skgf.com
ccamarce-PTAB@skgf.com