Ex Parte 7266786 et al

Patent Trial and Appeal Board

Oct 8, 2014

95000671 (P.T.A.B. Oct. 8, 2014)

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.
95/000,671 05/31/2012 7266786 ART-12-5016REX 4449
25226 7590 10/08/2014
MORRISON & FOERSTER LLP
755 PAGE MILL RD
PALO ALTO, CA 94304-1018
EXAMINER
SORRELL, ERON J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/08/2014 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. and
QUALCOMM TECHNOLOGIES INCORPORATED,
Requester,

v.

SONICS, INC.,
Patent Owner.
____________

Appeal 2014-006504
Reexamination Control 95/000,671
Patent 7,266,786 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
Appeal 2014-006504
Reexamination Control 95/000,671
Patent 7,266,786 B2

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Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
rejections of claims 1, 8, 12, 29-30, 33, 35-36, and 40 over various
references.
1
PO App. Br. 6. Requester appeals the Examiner’s decision not
to adopt the rejections of claims 1, 8, 12, 29-30, 33, 35-36, 40, and 42 over
various references. 3PR App. Br. 9.
2
We have jurisdiction under 35 U.S.C.
§§ 134 and 315. An oral hearing was conducted on August 27, 2014.

STATEMENT OF THE CASE
This proceeding arose from a May 31, 2012 request by Arteris, Inc.
(“Requester”) for an inter partes reexamination of U.S. Patent 7,266,786 B2,
titled “Method and Apparatus for Configurable Address Mapping and
Protection Architecture and Hardware for On-Chip Systems” and issued to
Chien-Chun Chou, Jay Scott Tomlinson, Wolf-Dietrich Weber, Drew Eric
Wingard, and Sricharan Kasetti, on September 4, 2007 (“the’786 patent”).
The ’786 patent describes a method and system for address mapping
for on-chip systems. Spec. 1:10-11.
Claim 1 reads as follows:
1. A method comprising:
inputting configuration parameters that identify a first
address location to a service module;
inputting protection parameters, wherein the protection
parameters are selected from the group consisting of a number
of different protection keys that can exist for modules in a
device and a number of different protection IDs that can exist
for modules in the device; and

1
We cite to the Corrected Patent Owner’s Appeal Brief dated
November 25, 2013 (“PO App. Br.”).
2
Requestor’s Brief on Appeal dated November 18, 2013 (“3PR App. Br.”).
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determining whether a request from a first module in the
device should be passed on to the service module and executed
based upon the inputted protection parameters and the first
address location of the service module.

The cited references are as follows:
Weir US 4,814,982 Mar. 21, 1989
Laudon US 5,991,895 Nov. 23, 1999
Krueger US 6,775,750 Aug. 10, 2004
Strongin US 6,854,039 Feb. 8, 2005
Segars GB2325061 Nov. 11, 1998

AMBA Specification (Rev 2.0), ARM Limited (1999) (“AMBA”).

Patent Owner appeals the Examiner’s rejections of claims 1, 8, 12, 29-
30, 33, 35-36, and 40 under 35 U.S.C. § 102(b) as anticipated by any one of
Weir, Laudon, Krueger, Strongin, Segars, or AMBA. PO App. Br. 6.
Requester appeals the Examiner’s non-adoption of the rejections of
claims 1, 8, 12, 29-30, 33, 35-36, and 40 under 35 U.S.C. § 103(a) as
unpatentable over any one of Weir, Laudon, Krueger, Strongin, Segars, or
AMBA and claim 42 under 35 U.S.C. § 102(e) as anticipated by Krueger.

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
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(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
Claims 1, 8, 12, 29, 30, 33, 35, 36, and 40 – Patent Owner’s Appeal
The Examiner rejects claims 1, 8, 12, 29-30, 33, 35-36, and 40 under
35 U.S.C. § 102(e) as anticipated by Krueger. RAN 6-10.
3
Patent Owner
argues that “[e]ach prior art reference fails to disclose multiple claim
limitations.” PO App. Br. 7. As explained below, we disagree with Patent
Owner for at least the reasons set forth by the Examiner and Requester. See,
e.g., RAN 18–140; 3PR Resp. Br. 3–15.
4

Patent Owner argues that each of the cited references fails to disclose
“inputting of protection parameters at design time.” PO App. Br. 7. Claim 1
recites inputting protection parameters. As Requester points out, claim 1
does not recite inputting protection parameters “at design time,” but, instead
is “silent with respect to the time at which ‘inputting protection parameters’
occurs.” 3PR Resp. Br. 4.
Patent Owner does not assert or demonstrate that any of the cited
references fails to disclose inputting protection parameters. Instead, Patent
Owner argues that even though claim 1 merely recites inputting protection

3
Right of Appeal Notice dated July 16, 2013 (“RAN”).
4
Respondent Brief by Third Party Requestor dated December 23, 2013
(“3PR Resp. Br.”).
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parameters, the recited step of “inputting protection parameters”
nevertheless must be performed “at design time” because “[t]hese acts were
clearly understood to . . . occur[] at design time as described and discussed
in the design time embodiment in light of the examples of the ’786
specification and as understood by one skilled in the art . . . having read the
’786 Specification.” PO App. Br. 17. Hence, Patent Owner argues that
claim 1 requires inputting protection parameters at design time and that each
of the cited references fails to disclose this alleged claim requirement.
The Specification discloses an “embodiment of the invention” in
which “the necessary address mapping and protection functionality is
provided in hardware” and that a “request is sent . . . to the address mapping
and protection module” that includes (i.e., is “extracted out of”) a “source
protection ID.” Spec. 2:42-45, 3:39-43. It is undisputed that the request and
“source protection ID” are not “input” “at design time.” Hence, the
Specification discloses an embodiment in which a protection parameter (i.e.,
“source protection ID”) is input during a time period other than “at design
time.” This fact indicates that inputting a protection parameter need not be
performed “at design time.”
Patent Owner argues that the Specification also discloses an alternate
embodiment in which “a product designer . . . [configures] the address
mapping and protection module at design time.” PO App. Br. 14. The
Specification discloses “[t]he ability for a designer to configure the address
mapping and protection hardware module at design time.” Spec 3:1-3.
Presumably, Patent Owner contends that a designer “configuring” the
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module includes inputting protection parameters, as recited in claim 1, for
example.
However, even assuming that “configuring” must include “inputting
protection parameters,” and even assuming Patent Owner’s contention to be
correct that the Specification also discloses one embodiment in which a
protection parameter is input “at design time,” we decline to import this
specific feature of one example allegedly disclosed in the Specification into
the claims, particularly given the fact that the Specification discloses that a
protection parameter is input at a time other than “at design time” (see
previous discussion).
Hence, Patent Owner fails to demonstrate persuasively that the
Specification discloses (and that claim 1 requires) that inputting protection
parameters must be performed “at design time.”
Patent Owner also argues that each of the cited prior art references
fails to disclose that “the ‘security checking logic/comparator’ is
geographically located in the routing path in between the first processing
module and the service module in order to pass on the request.” PO App.
Br. 18. Claim 35 recites security checking logic to determine whether a
request from a first module in the device should be passed on to the service
module and executed based upon the inputted protection parameters and the
first address location of the service module. Claims 36 and 40 recite a
similar feature. As Requester points out (3PR Resp. Br. 6-7), none of
claims 35, 36, or 40 recites a security checking logic (or comparator) that is
geographically located in the routing path in between the first processing
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module and the service module. Therefore, we are not persuaded by Patent
Owner’s arguments with respect to this issue.
Patent Owner argues that the Specification discloses an example in
which a “protection module 306 is graphically shown in between the
processor modules 302 and service modules 318” and that the Specification
discloses that Figure 3 illustrates that “[i]n the middle of the system is an
address mapping and protection module 306.” PO App. Br. 18 (citing
Spec. at Fig. 3, 3:27-32). We are not persuaded by Patent Owner’s
arguments.
The Specification discloses that figure 3 “illustrates one embodiment
of the invention showing in a block diagram form an on-chip system . . .”
Spec. 1:61-62. Because Figure 3 of the Specification is “in a block diagram
form,” one of ordinary skill in the art would not have understood that such a
figure discloses information regarding geographical locations. Hence, even
assuming that Figure 3 of the Specification illustrates a protection module
“in between the processor modules 302 and service modules 318,” as Patent
Owner asserts, we disagree with Patent Owner that the Specification further
requires that security checking logic (or a comparator) be “geographically
located in the routing path in between the first processing module and the
service module.”
We also note that the Specification discloses that the system
illustrated in Figure 3 is “one embodiment” (not the only embodiment) and
further discloses that “it is to be understood that other embodiments may be
utilized and that logical, mechanical, electrical, and other changes may be
made . . .” Spec. at 11:8-10. In other words, contrary to Patent Owner’s
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contention, the Specification does not disclose a requirement as to where
security checking logic (or a comparator) must be positioned with respect to
other components in the system, much less that security checking logic (or a
comparator) must be “geographically located in the routing path in between
the first processing module and the service module.”
Also, we are not persuaded by Patent Owner’s argument that the
alleged disclosure in the Specification of one embodiment in which the
address mapping and protection module 306 may be “in the middle of the
system” indicates that the address mapping and protection module 306 must
be “geographically located in the routing path in between the first processing
module and the service module.” Even if a module is “in the middle of the
system,” the module may not be specifically “geographically located in the
routing path in between” two specific components within the system. In
other words, Patent Owner does not show sufficiently that a generalized
statement of a component being “in the middle of the system” provides
information about the specific relative placement of the component with
other specific components within the system.
Patent Owner further argues that security checking logic (or a
comparator), as recited in claim 35, for example, must be geographically
located in the routing path in between the first processing module and the
service module based on testimony from Dr. Kees Goossens. PO App.
Br. 18 (citing Affidavit of Dr. Kees Goossens, dated October 5, 2012, at
¶¶ 5, 6b, 9, 12, 15, 18a, 21, 24, 25 and Supp. Affidavit of Dr. Kees
Goossens, dated March 26, 2013, at ¶¶ 4, 6, 13, 14, and 19). We have
reviewed carefully the cited portions of the Affidavit and Supplemental
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Affidavit of Dr. Goossens but do not find evidence persuasive to
demonstrate that claim 35 requires that the security checking logic be
geographically located in the routing path in between the first processing
module and the service module.
Patent Owner argues that Krueger discloses a module that “sits to the
side” and “is not in the request routing path . . .” as claim 35 allegedly
requires. PO App. Br. 22. As described above, though, we disagree with
Patent Owner that claim 35 recites this alleged requirement.
Patent Owner also argues that Krueger discloses “abort[ing] the
processors from . . . generating the request when no authorization exist[s],”
in which case “no determination is being made whether . . . to pass on the
request” (not having generated a request in the first place). PO App. Br. 22.
Patent Owner does not assert or sufficiently refute the Examiner’s prima
facie showing that Krueger discloses determining whether to pass on a
request when authorization exists and a request is generated. We are not
persuaded by Patent Owner’s arguments.
Claims 12 and 33 recite “means for inputting protection parameters.”
“The use of the word ‘means,’ which is part of the classic template for
functional claim elements, gives rise to ‘a presumption that the inventor used
the term advisedly to invoke the statutory mandates for means-plus-
functions clauses.’” Sage Products, Inc. v. Devon Industries, Inc., 126 F.3d
1420, 1427 (Fed. Cir. 1997) citing York Prods., Inc. v. Cent. Tractor Farm
& Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996). Claims 12 and 33
recite the word “means” for functional claim elements. Therefore, a
presumption of a means-plus-function clause arises, and we “must look to
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the specification and interpret that language in light of the corresponding
structure, material, or acts described therein, and equivalents thereof, to the
extent that the specification provides such disclosure.” In re Donaldson Co.,
Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994).
We agree with the Examiner and Requester that the “address mapping
and protection module 306” corresponds to the claimed means for inputting
protection parameters because, at least, the “address mapping and protection
module 306” permits a user to perform the recited function of inputting
protection parameters such as receiving a request that contains a “source
protection ID.” See, e.g., Spec. 3:39-44.
Patent Owner argues that the “means for inputting protection
parameters,” as recited in claims 12 and 33, corresponds to a structure in the
’786 patent specification that “functionally inputs these protection
parameters during design time.” PO App. Br. 12. As previously discussed,
though, the Specification discloses an embodiment that includes “[t]he
ability for a designer to configure the address mapping and protection
hardware module at design time” (Spec. 3:1-4) and another embodiment in
which a protection parameter (e.g., “source protection ID”) is input into the
address mapping and protection module at a time other than “at design
time.” Spec. 3:39-44. In other words, contrary to Patent Owner’s
contention, the Specification discloses that inputting protection parameters is
not limited to any specific time. Hence, the corresponding structure
disclosed in the Specification is the address mapping and protection module
306 into which a protection parameter is input at a non-specified time.
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Claim 12 also recites a means for determining whether a request from
a first module in the device should be passed on to the service module and
executed. The ’786 patent specification discloses that, at the “address
mapping and protection module 306,” a determination is made as to
“whether the request should be delivered to the service module because the
protection allows it.” Spec. 3:48-50, Fig. 3. Hence, the “address mapping
and protection module 306” corresponds to the means for determining
whether a request from a first module in the device should be passed on to
the service module and executed (as recited in claim 12, for example)
because, at least, the “address mapping and protection module 306” permits
a user to perform the recited function associated with the claimed means for
determining.
We also note that the “address mapping and protection module 306” is
depicted as a generic box in the ’786 patent specification. Spec. at Fig. 3.
Patent Owner does not point to additional structure of the “address mapping
and protection module 306” in the ’786 patent specification. Hence, the
corresponding structure in the ’786 patent specification of the means for
inputting parameters and means for determining, as recited in claim 12, is
the “address mapping and protection module 306” depicted as a generic box
in the ’786 patent specification (see, e.g., Spec at Fig. 3).
Patent Owner cites the Manual of Patent Examining Procedure
(“MPEP”) stating that the “prior art element [must] perform the identical
Function specified in the claim in substantially the same Way, and produce[]
substantially the same Results as the corresponding element disclosed in the
Specification.” PO App. Br. 11. Even assuming that this one suggested
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guideline of the MPEP is controlling law binding on the Patent and Trial
Appeal Board, Patent Owner does not refute sufficiently the prima facie
showing that the prior art element of Krueger, for example, performs the
“identical function” specified in the claim in “substantially the same way” to
produce substantially the same results. For example, the “function” and the
“way” of performing the “function” as specified in the claim is “inputting
protection parameters” to achieve the result of obtaining protection
parameters. Patent Owner does not assert or demonstrate sufficiently that
Krueger, for example, fails to disclose this feature of inputting protection
parameters (to achieve the result of obtaining the protection parameters).
Patent Owner argues that the “means for determining,” as recited in
claim 12, corresponds to a structure in the ’786 patent specification that “is
geographically separate from the one or more service modules(s) and
processing units themselves” and that the means for determining is required
to be geographically separate from the service modules because such an
orientation “allows other beneficial results” and that “[a] geographically
distinct ‘means for determining whether to pass on’ allows the system
designer to more flexibly determine what access rights and privileges should
be in the system.” PO App. Br. 12. Even assuming Patent Owner’s
hypothesized benefits of positioning such a means for determining within a
system is correct, Patent Owner does not demonstrate sufficiently that the
Specification discloses this requirement for the address mapping and
protection module (see previous discussion above).
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Patent Owner does not provide additional arguments in support of
claims 8, 12, 29-30, 33, 35-36, and 40. The Examiner did not err in rejecting
claims 1, 8, 12, 29-30, 33, 35-36, and 40 as anticipated by Krueger.
Affirmance of the anticipation rejection for the above-referenced
claims based on Krueger renders it unnecessary to reach the propriety of the
Examiner’s decision to reject those claims on a different basis. Cf. In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we need not reach
the propriety of the rejections of those claims based on obviousness over any
of Krueger, Weir, Laudon, Strongin, Segars, or AMBA or anticipation by
any of Weir, Laudon, Strongin, Segars, or AMBA.

Claim 42 – Requester’s Appeal
The Examiner does not adopt the rejection of claim 42 under
35 U.S.C. 102(e) as anticipated by Krueger (3PR App. Br. 9). Claim 42
recites inputting protection parameters at design time. The Examiner states
that Krueger discloses “inputting of protection parameters clearly at
operational time . . . rather than at design time,” as recited in claim 42.
RAN 16. Requester argues that Krueger discloses “inputting the . . .
parameters ‘at design time’ because it discloses configuration of the system
protection map (SPM) prior to the actual operation of the device” and that
“one of ordinary skill in the art would understand that static partitioning [as
disclosed by Krueger] is partitioning that is done at design time.” 3PR App.
Br. 12 (citing Supplemental Affidavit of Robert W. Horst at ¶ 14).
Patent Owner argues that “[o]ne skilled in the art would not
consider . . . [changes to] . . . a fabricated circuit to be design time changes”
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and that “[o]nce the circuit is fabricated/built, then no design time changes
occur.” PO Resp. Br. 11. Patent Owner’s declarant (Dr. Goossens) states
that actions performed at design time “occur prior to the fabrication of the
device.” Affidavit Pursuant to 37 C.F.R. § 1.132 and MPEP 2616, dated
October 5, 2012, ¶ 27. In other words, Patent Owner and Dr. Goossens
construe the term “at design time” to mean “prior to fabrication of the
device” and argue that Krueger fails to disclose inputting protection
parameters “prior to fabrication of the device” (i.e., at design time) whereas
Requester and Dr. Horst construe the term “at design time” to mean “prior to
the actual operation of the device.”
However, Dr. Horst does not assert or provide sufficient evidence
supporting Requester’s construction of the term “at design time.” Instead,
Dr. Horst merely testifies that there are “tradeoffs” between static and
dynamic access limits and that it “would have been obvious to one skilled in
the art how to restrict accesses based only on design-time information.”
Supp. Aff. Of Robert W. Horst ¶ 14. Therefore, we credit Patent Owner’s
expert testimony regarding how one of ordinary skill in the art would have
construed the term “at design time” (i.e., prior to the fabrication of the
device).
While Requester asserts generally that Krueger discloses inputting
protection parameters “prior to the actual operation of the device,” Requester
does not assert or demonstrate persuasively that Krueger discloses inputting
protection parameters “prior to fabrication of the device” (or “at design
time”).
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The Examiner did not err in refusing to adopt the rejection of claim 42
as anticipated by Krueger.

CONCLUSION
The Examiner did not err in rejecting claims 1, 8, 12, 29-30, 33, 35-
36, and 40 under 35 U.S.C. 102(e) as anticipated by Krueger or refusing to
adopt the rejection of claim 42 under 35 U.S.C. § 102(e) as anticipated by
Krueger.

DECISION
We affirm the Examiner’s rejection of claims 1, 8, 12, 29-30, 33, 35-
36, and 40 under 35 U.S.C. 102(e) as anticipated by Krueger and the
Examiner’s decision not to adopt the rejection of claim 42 under 35 U.S.C.
§ 102(e) as anticipated by Krueger.

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.

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AFFIRMED

Morrison & Foerster, LLP
755 Page Mill Road
Palo Alto, CA 94304-1018

Third Party Requester:

Jennifer Lacroix
Patent Group
DLA Piper (US) LLP
203 Lasalle Street
Suite 1900
Chicago, IL 60601