Intel Corp. v. Acqis LLC

• Decision Date: 05 January 2022
• Docket Number: IPR2021-01105
• Parties: INTEL CORPORATION, Petitioner, v. ACQIS LLC, Patent Owner.
• Court: United States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board

INTEL CORPORATION, Petitioner, v. ACQIS LLC, Patent Owner.

No. IPR2021-01105

United States Patent and Trademark Office, Patent Trial and Appeal Board

January 5, 2022

For PETITIONER: Yung-Hoon Ha Christian Dorman Theodoros Konstantakopoulos DESMARAIS LLP

For PATENT OWNER: Mark Miller Gina Cornelio Case Collard DORSEY & WHITNEY LLP

Before THU A. DANG, JONI Y. CHANG, and SCOTT A. DANIELS Administrative Patent Judges.

DECISION DENYING INSTITUTION OF INTER PARTES REVIEW 35 U.S.C. § 325(D)

DANIELS, ADMINISTRATIVE PATENT JUDGE

I. INTRODUCTION

Intel Corporation ("Petitioner" or "Intel") filed a Petition requesting an inter partes review ("IPR") of claims 1-3, 7-13, and 18-20 ("the challenged claims") of U.S. Patent No. 8, 977, 797 B2 (Ex. 1001, "the '797 patent"). Paper 2 ("Pet."), 1. ACQIS LLC ("Patent Owner" or "Acqis") filed a Preliminary Response (Paper 7, "Prelim. Resp."). Pursuant to our prior authorization, Petitioner filed a Reply to the Preliminary Response. Paper 9 ("Reply"). Patent Owner filed a Sur-reply. Paper 10 ("Sur-reply").

In determining whether to institute an inter partes review, "the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office." 35 U.S.C. § 325(d) (2018). For the reasons stated below, we exercise our discretion under § 325(d) not to institute an inter partes review of the challenged claims of the '797 patent.

A. Related Matters

The parties indicate that, inter alia, the '797 patent is involved in Acqis LLC v. Lenovo Group Ltd. et al., No. 6:20-cv-00967 (W.D. Tex. 2020). Pet. 5; Paper 6, 2. Petitioner also challenges the '797 patent in IPR2021-01104. Paper 3, 5.^[1] B. Real Parties-in-Interest

Petitioner identifies Lenovo Group Ltd.; Lenovo PC HK Limited; LCFC (HEFEI) Electronics Technology Co., Ltd.; Lenovo Information Products (Shenzhen) Co., Ltd.; Lenovo (Beijing) Information Technology Ltd.; and Lenovo Centro Tecnológico S. de R.L. de C.V. as additional real parties-in-interest. Pet. 8.

C. The '797 Patent

The '797 patent relates to computer interfaces, specifically an interface channel that "interfaces two computer interface buses that operate under protocols that are different from that used by the interface channel." Ex. 1001, 3:10-12.

Figure 6 of the '797 patent is reproduced below with a red annotation added by the Board that highlights the interface channel.

(Image Omitted)

Annotated Figure 6 above shows a block diagram of a computer system using an interface. Ex. 1001, 15:15-16. As shown, computer system 600 includes attached computer module (ACM) 605 and peripheral console 610. Id. at 15:16-18. ACM 605 and peripheral console 610 are interfaced through exchange interface system (XIS) bus 615. Id. at 15:23-24. XIS bus 615 includes power bus 616, video bus 617 and peripheral bus (XPBus) 618, which is also referred to as an interface channel. Id. at 15:24-27.

D. Illustrative Claim

Of the challenged claims, claims 1, 7, 10 and 18 are independent method claims. Claims 2 and 3 depend from claim 1, claims 8 and 9 depend from claim 7, claims 11-13 depend from claim 10, and claims 19 and 20 depend from claim 18. Claim 1 is illustrative:

1. A method of improving computer peripheral data communications, comprising:

connecting a Central Processing Unit (CPU) directly to a peripheral bridge on a printed circuit board of a computer system;

connecting a Low Voltage Differential Signal (LVDS) channel directly to the peripheral bridge on the printed circuit board, the LVDS channel comprising two unidirectional, serial channels that transmit data in opposite directions;

increasing data throughput of the serial channels by providing each channel with multiple pairs of differential signal lines;

conveying encoded address and data bits of a Peripheral Component Interconnect (PCI) bus transaction in serial form over the serial channels to preserve the PCI bus transaction;

coupling the peripheral bridge to an Ethernet connection through the LVDS channel to improve data throughput between the CPU and the Ethernet connection;

using the Ethernet connection to connect the computer system to an Ethernet network; and applying power to the computer system.

Ex. 1001, 37:55-38:10.

E. Prior Art Relied Upon

Petitioner relies upon the references listed below (Pet. 9-10):

Name

Reference

Date

Exhibit No.

Chu (“Chu '330”)

U.S. Patent No. 6, 345, 330 B1

Feb. 5, 2002

1003

Name

Reference

Date

Exhibit No.

Peleg (“Peleg '065”)

U.S. Patent No. 6, 557, 065 B1

April 29, 2003

1034

Helms (“Helms '510”)

U.S. Patent No. 7, 146, 510 B1

Dec. 5, 2006

1044

Chu (“Chu '777”)

U.S. Patent No. 6, 643, 777 B1

Nov. 4, 2003

1054

F. Asserted Grounds of Unpatentability Petitioner asserts the following grounds of unpatentability (Pet. 40)^[2]:

Claim(s) Challenged

35 U.S.C. §

Reference(s)/Basis

7-8, 18-20

103(a)

Chu '330, Peleg '065, Helms '510

1-3, 9-13

103(a)

Chu '330, Peleg '065, Helms '510, Chu '777

II. ANALYSIS

A. 35 U.S.C. § 325(d)

Petitioner relies upon Chu '330 in each asserted ground. Pet. 40. Petitioner contends that the United States Patent and Trademark Office ("USPTO" or "Office") overlooked Chu '330 as prior art because "[t]he '797 Patent is, at best, entitled to a priority date only as to the filing date of U.S. Patent No. 8, 234, 436," that is, April 15, 2011. Id. at 24. More specifically, according to Petitioner, the written description support for the "CPU-PB" and "LVDS-PB" limitations in the '797 patent claims "was only added to the specification for the first time in the intervening '436 Patent." Id. at 26. To support its contention, Petitioner argues that "Chu [']330 never incorporated by reference the '886 Provisional. Chu [']330 merely claimed priority to the '886 Provisional." Id. at 28. Thus, Petitioner argues that the challenged claims are not entitled to a priority date based on U.S. provisional application No. 60/083, 886 ("the '886 Provisional" or "Chu '886"), but only that of the '436 patent, April 15, 2011. Id. at 23-39. Therefore, Petitioner argues, Chu '330 qualifies as 35 U.S.C. § 102(b) prior art and is material to the patentability of the claims in the '797 Patent. Id.

Patent Owner counters that the USPTO has already considered and rejected Petitioner's argument regarding the incorporation by reference of Chu '330 and Chu '886. Prelim. Resp. 11-31. Patent Owner argues that the Board should exercise its discretion under § 325(d) to deny institution because the Examiner previously considered and affirmed the efficacy of an incorporation by reference in the context of a priority claim. Id. at 11-12 (citing SMR Auto. Sys. USA, Inc. v. Magna Mirrors of Am., Inc., IPR2018-00931, Paper 7 at 14 (PTAB Sept. 14, 2018)).

For the reasons set forth below, we are persuaded by Patent Owner's arguments to exercise our discretion to deny institution of inter partes review under 35 U.S.C. § 325(d).

Institution of an inter partes review is discretionary. The U.S. Supreme Court has explained that, because § 314 includes no mandate to institute review, "the agency's decision to deny a petition is a matter committed to the Patent Office's discretion." Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2140 (2016); see also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), "the PTO is permitted, but never compelled, to institute an IPR proceeding"). Moreover, 35 U.S.C. § 325(d) states, in relevant part, that "[i]n determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office." 35 U.S.C. § 325(d); see also Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte Gmbh, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential); Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17-18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph).

"Under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims." Advanced Bionics, Paper 6 at 8. If the petitioner fails to show that the Office erred, the Director may exercise his or her discretion not to institute inter partes review. Id.; see also Becton, Dickinson, Paper 8 at 24 (exercising discretion where "Petitioner has not pointed to error by the Examiner").

1. Part I - whether the same or substantially the same arguments previously were presented to the Office

We first determine whether the same or substantially the same arguments previously were presented to the Office. Advanced Bionics, Paper 6 at 8. Patent Owner's Figure, reproduced below, provides a timeline of the priority chain of the '797 patent (light-blue filled box) and other related applications, including Chu '886 (highlighted yellow by the Board) and U.S. Application No. 09/149, 882 ("the '882 application"), which was issued as Chu '330 (highlighted red by the Board). Prelim. Resp. 7.

(Image Omitted)

Patent Owner's Figure above shows the filing dates of the applications in the priority chain of the '797 patent and other related applications. The '797 patent was issued from U.S. Application No. 13/649, 084 ("the...