Marvell Semiconductor, Inc.v.Intellectual Ventures I LLC

Patent Trial and Appeal Board

Jan 14, 2015

10295596 (P.T.A.B. Jan. 14, 2015)

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)

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Patent 6,977,944

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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.

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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.
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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
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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.
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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
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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.

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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