Marvell Semiconductor, Inc.v.Intellectual Ventures I LLCDownload PDFPatent Trial and Appeal BoardJan 14, 201510295596 (P.T.A.B. Jan. 14, 2015) Copy Citation Trials@uspto.gov Paper 19 571-272-7822 Entered: January 14, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ MARVELL SEMICONDUCTOR, INC., Petitioner, v. INTELLECTUAL VENTURES I LLC, Patent Owner. ____________ Case IPR2014-00547 Patent 6,977,944 ____________ Before THOMAS L. GIANNETTI, JAMES A. TARTAL, and PATRICK M. BOUCHER, Administrative Patent Judges. GIANNETTI, Administrative Patent Judge. DECISION Request for Rehearing 37 C.F.R. § 42.71(d) IPR2014-00547 Patent 6,977,944 2 INTRODUCTION Petitioner, Marvell Semiconductor, Inc., filed a Petition requesting an inter partes review of claims 7–12 and 19–24 of U.S. Patent No. 6,977,944 (“the ’944 patent”). Paper 13 (“Pet.”). In our Decision dated December 3, 2014, we denied the Petition and declined to institute inter partes review of the challenged claims. Paper 17 (“Decision”). Petitioner requests rehearing of our decision not to institute inter partes review. Paper 18, (“Req. Reh’g”). Petitioner’s stated grounds for rehearing are that (1) the Board overlooked or misapprehended that the law does not require Petitioner to “map” the Sherman reference to its priority application; and (2) the Board misapprehended Petitioner’s argument for combining the Chan and Choi references. Req. Reh’g 1. For the reasons that follow, Petitioner’s request for rehearing is denied. ANALYSIS The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: 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 where each matter was previously addressed in a motion, opposition, or a reply. IPR2014-00547 Patent 6,977,944 3 I. The Sherman Patent Sherman (Ex. 1004, U.S. Patent No. 7,046,690) was relied upon by Petitioner alone and in combination with certain admitted prior art against all challenged claims of the ʼ944 patent. Decision 9. To qualify as prior art, however, Sherman would have to have an effective date prior to January 12, 2002, the earliest effective filing date of the ʼ944 patent. Petitioner recognized that the ʼ944 patent filing date “is no earlier than January 12, 2002.” Pet. 3. Petitioner, however, provided no proof that Sherman (which claims benefit of provisional applications filed in January 2001) is entitled to an effective date prior to January 12, 2002, and therefore would qualify as prior art under 35 U.S.C. § 102(e). Petitioner’s rehearing request does not dispute these facts. Instead, Petitioner argues that the law does not require the Petition to establish that Sherman qualifies as prior art. Req. Reh’g 4–8. In fact, Petitioner asserts that this requirement is “contrary to established law.” Id. at 4–5. We are not persuaded by this argument. In our Decision, we cited In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010), where the Court made it clear that “an applicant is not entitled to a patent [under § 102(e) (2)] if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application . . . .”)(emphasis added). And we also cited Ex Parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008) (precedential), where the Board affirmed the Examiner’s rejections under 35 U.S.C. § 102(e) based on a patent to Narayanan. Id. at 1608. The Board noted that the filing date of Narayanan’s underlying provisional application would antedate the earliest effective filing date of the rejected application. IPR2014-00547 Patent 6,977,944 4 Id. at 1613. But Appellants took the position that the Examiner had failed to show that the provisional application properly supports the subject matter of the patent relied on in making the rejection. Id. The Board disagreed, and provided a chart correlating the Examiner’s fact findings on anticipation with both the Narayanan patent and Narayanan provisional application. Id. at 1614. The chart demonstrated that the Examiner’s findings were supported by subject matter common to the patent and the provisional application. Id. We are not convinced from Petitioner’s discussion of those cases (Req. Reh’g 6–7) that their guidance was overlooked or misapprehended by the Board. We agree with Petitioner that in Giacomini, there was no discussion of “mapping” of the prior art (Tran) to its provisional application. However, that showing was not necessary because the appellants there never argued that the provisional application did not support the subject matter relied upon by the Examiner. Giacomini at 1383. This waiver by Appellants is clear also from the portion of the Board’s decision affirmed by the Federal Circuit quoted by Petitioner. See Req. Reh’g 7 (quoting Board decision). Nothing in Giacomini endorses Petitioner’s failure to provide any analysis of common subject matter for Sherman and its provisionals. Nor does Yamaguchi support Petitioner. In Yamaguchi, the Board, affirming the Examiner’s rejection over Narayanan, determined that the Examiner’s findings, while “terse and conclusory,” were nevertheless sufficient, and even provided a chart correlating the Examiner’s fact findings on anticipation with both the prior art patent and its provisional application. 88 USPQ2d at 1613-14. Here, Petitioner has provided no analysis at all of IPR2014-00547 Patent 6,977,944 5 the relation of Sherman to its provisionals. Petitioner’s reliance on these cases as a basis for granting rehearing is, therefore, unavailing. Finally, while not central to our Decision, we noted in passing that Petitioner did not provide copies of the Sherman provisionals. Decision 10. Petitioner’s response (Req. Reh’g 8), is that like the provisional applications in Yamaguchi, the Sherman provisional applications are available on PAIR. This argument is unavailing. Yamaguchi does not relieve Petitioner of its obligation under our rules to provide “[t]he exhibit number of the supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised.” 37 C.F.R. § 42.104. II. Combining Chen and Choi In denying the Petition, the Board determined that Petitioner did not present a sufficient rationale for combining Chen (Ex. 1005, U.S. Patent No. 7,177,294) and Choi (Ex. 1007, U.S. Patent No. 7,206,840) under KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)(“‘[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Decision 12. In reaching this conclusion we relied in part on the determination that Chen and Choi were directed to solving different problems. Decision 13. Chen is directed to reducing collisions in a shared wireless network by stopping WLAN traffic. Id. at 11. In Choi, the purpose of pausing WLAN traffic is to assess signal strength. Id. This distinction in purposes between Chen and Choi is acknowledged in the Petition. Pet. 29. IPR2014-00547 Patent 6,977,944 6 Petitioner contends that the Board misapprehended Choi, in that “Choi never mentions a Bluetooth device, much less keeping a Bluetooth device silent.” Req. Reh’g 11. We are not persuaded by this argument. Our Decision relies on the fact (which Petitioner does not dispute) that Chen and Choi are directed to solving different problems, and therefore the rationale for combining them is not sufficiently shown. Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1334 (Fed. Cir. 2013): While a prior art reference may support any finding apparent to a person of ordinary skill in the art, prior art references that address different problems may not, depending on the art and circumstances, support an inference that the skilled artisan would consult both of them simultaneously. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed.Cir.2012) (finding invention nonobvious when none of the “reference[s] relate to the [problem] described in the patents” and no evidence was proffered “indicating why a person having ordinary skill in the art would combine the references”). Our determination is not affected by the alleged failure of Choi to discuss Bluetooth. In any event, it is unclear how Choi’s alleged lack of a teaching that Bluetooth devices are silenced would be helpful to Petitioner’s argument. Our decision was based on the admitted differences in the reason for silencing the signals in Choi (to assess signal strength) and Chen (to avoid collisions), and Petitioner’s failure to present adequate rationale to bridge that evidentiary gap. See Decision 13. Finally, we are not persuaded by Petitioner’s argument that we gave insufficient weight to Dr. Ding’s testimony. Req. Reh’g 13–14. The portions of Dr. Ding’s testimony quoted in our Decision (pp.12, 15), in IPR2014-00547 Patent 6,977,944 7 which he refers to what would be obvious to himself rather than to a person of ordinary skill, were among those cited and relied on by Petitioner (Pet. 29, 42–43). This testimony is not convincing for the reasons discussed in our Decision at 12–13. We are not persuaded we have overlooked or misapprehended anything in giving Dr. Ding’s testimony “little weight.” Decision 13. For instance, we are not persuaded by Petitioner’s argument that Dr. Ding’s credentials “clearly establish” that he is a person of ordinary skill. Req. Reh’g. 14. As Dr. Ding testified: “[i]t is my understanding that a person of ordinary skill in the art . . . is a person with at least a master’s degree . . . in electrical engineering, computer engineering, or computer science . . . in addition to at least two years of post-graduate or equivalent work experience with systems that use communications protocols.” Ex. 1003, ¶ 14. We are not convinced that Dr. Ding’s stated credentials (Ph.D., NASA, full professor, department chair, IEEE Fellow, etc.) meet his own definition of “ordinary” skill. CONCLUSION Petitioner has not carried its burden of demonstrating that our Decision not to institute inter partes review of the ʼ944 patent misapprehended or overlooked any matters. 37 C.F.R. § 42.71(d). For the foregoing reasons, Petitioner’s Request is denied. IPR2014-00547 Patent 6,977,944 8 PETITIONER Walter Renner Jerermy Monaldo Fish & Richardson P.C. axf@fr.com IPR27410-0021IP1@fr.com PATENT OWNER Herbert Hart Kirk Vander Leest Peter McAndrews McAndrews, Held & Malloy, Ltd. hhart@mcandrews-ip.com kvanderleest@mcandrews-ip.com pmcandrews@mcandrews-ip.com Donald Coulman Intellectual Ventures I LLC dcoulman@intven.com Copy with citationCopy as parenthetical citation