Toshiba Corporation, Toshiba America Electronic Components, Inc. and Toshiba America Information Systems, Incv.Intellectual Ventures I LLC

Patent Trial and Appeal Board

Mar 3, 2016

11424610 (P.T.A.B. Mar. 3, 2016)

Trial@uspto.gov Paper 34
571-272-7822 Entered: March 3, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TOSHIBA CORPORATION, TOSHIBA AMERICA, INC.;
TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC.; and
TOSHIBA AMERICA INFORMATION SYSTEMS, INC.,
Petitioner,
v.
INTELLECTUAL VENTURES I LLC,
Patent Owner.
_______________

Case IPR2014-00310
Patent 7,836,371
_______________

Before KEVIN F. TURNER, TREVOR M. JEFFERSON,
and DAVID C. MCKONE, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION
Request for Rehearing
37 C.F.R. §§ 42.71

IPR2014-00310
U.S. Patent 7,836,371
2
I. INTRODUCTION
Toshiba Corporation, Toshiba America, Inc., Toshiba America Electronic
Components, Inc., and Toshiba America Information Systems, Inc. (collectively,
“Petitioner”) filed a request for rehearing (Paper 31, “Reh’g Req.”) of the final
written decision (Paper 30, “Dec.”), which held that claims 1 and 3–6 of U.S.
Patent 7,836,371 (“the ’371 Patent”) were unpatentable. Dec. 17. That same
decision found that Petitioner had not demonstrated by a preponderance of the
evidence that claims 2 and 7–10 were unpatentable. Id. at 16.
Petitioner originally filed its request on August 7, 2015, but also filed a
Notice of Appeal (Paper 32) on September 3, 2015, such that consideration of the
rehearing request was held in abeyance until Petitioner subsequently filed a Notice
(Paper 33), on November 6, 2015, indicating that its Notice of Appeal had been
withdrawn. Paper 33, Attachment A.
In its request, Petitioner essentially contends that the Board misapprehended
the meanings of specific terms in claim 2, in view of the disclosure of the ’371
Patent and other evidence, and thus erred in determining that claim 2 was not
anticipated. Reh’g Req. 1. The request for rehearing is denied.
II. ANALYSIS
When rehearing a decision on institution, the Board will review the decision
for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may
be determined if a decision is based on an erroneous interpretation of law, if a
factual finding is not supported by substantial evidence, or if the decision
represents an unreasonable judgment in weighing relevant factors. See Star Fruits
IPR2014-00310
U.S. Patent 7,836,371
3
S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362
F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed.
Cir. 2000).
In the final written decision, we determined that Levine, U.S. Patent
5,802,273 (Ex. 1004), did not anticipate claim 2, pursuant to the instituted
anticipation ground over Levine. Dec. 3, 11–12. We agreed with Patent Owner
that Levine does not incorporate the entire PowerPC manual1 and that any interface
with the processor in Levine need not be a serial or parallel I/O port. Id. at 11. We
also addressed Petitioner’s argument that Patent Owner’s statement was
unsupported and that a “port” need not require a peripheral. But we were
persuaded that an interface and a port are not synonymous, with the latter having a
known configuration, and the former not needing to have a known configuration.
Id. at 11–12.
Petitioner now counters that the ’371 Patent uses the term “interface” in
describing the structure being claimed in claim 2, and requires us to find that one
of ordinary skill in the art would have concluded that the recited ports of claim 2
include parallel and serial forms of interfaces. Reh’g Req. 1. Petitioner continues
that the section of the ’371 Patent relied upon in the Decision (Dec. 12; Ex. 1001,
6:41–49) makes clear that the ports recited in claim 2 “must include serial and
parallel forms of interfaces, because that is how the ’371 patent describes the
structure being claimed.” Reh’g Req. 4. Petitioner also argues that the
correspondence between the Specification and claim 2 provides strong intrinsic

1 PowerPC 604 User’s Manual (Ex. 1008)
IPR2014-00310
U.S. Patent 7,836,371
4
evidence that the scope of “port” must include “interface.” Id. Petitioner
concludes that “there is no special configuration described in the specification for
the ‘serial I/O (SIO)’ and ‘parallel I/O (PIO),’ other than they be a serial or parallel
form of ‘interface.’” Reh’g Req. 4–5.
We find that the inclusion of an “interface” within a definition of “port” to
be irrelevant to the discussion of whether Levine discloses a “port,” as recited in
claim 2. If claim element “A” is shown to be equivalent to “B+C,” the
demonstration of “B” or “C” alone is insufficient to demonstrate disclosure of “A.”
The fact that Levine discloses interfaces is insufficient to demonstrate that it
necessarily discloses ports, even if the latter includes the former.
To the extent that Petitioner is arguing that the Specification of the ’371
Patent only discloses interfaces, we cannot agree. The Specification of the ’371
Patent does distinguish between ports and interfaces because it uses both terms
separately and does not clearly assert that they are the same or equivalent terms. If
the patentee uses different terms to identify similar claim limitations, those terms
should have different meanings. See Bancorp Servs., L.L.C. v. Hartford Life Ins.
Co., 359 F.3d 1367, 1373 (Fed. Cir. 2004). In the instant proceeding, we find that
the Specification makes reference to both interfaces (210, 216) and a port (217)
(Ex. 1001, 6:41–49), as well as “separate serial or parallel port” (Ex. 1001
Abstract), such that the terms “interface” and “port” cannot be held to be
interchangeable. As such, the recitation of types of “ports,” in claim 2, requires
that any prior art reference seeking to anticipate that claim must disclose, explicitly
or inherently, the types of ports claimed. Per our discussion in the Decision, we
IPR2014-00310
U.S. Patent 7,836,371
5
remain persuaded that Levine does not disclose serial or parallel I/O ports. Dec.
11–12.
Petitioner also argues that the cited extrinsic evidence does not require any
special structure for the “parallel I/O” and “serial I/O,” and does not support our
conclusion that “one of ordinary skill in the art would have identified a port as
having a known configuration . . . as opposed to ‘interface,’ that need not have a
known configuration.” Reh’g Req. 5–7 (citing Dec. 12; Ex. 2003, 552, 696). We
cannot agree that the extrinsic evidence does not support the proposition because
citations from Exhibit 2003 clearly convey that an interface need not have a
specific, known configuration. For example, the “interface” entries recite “such as
a Centronics parallel interface” and “such as a USB,” such that the parallel and
serial interfaces may have, but are not limited to, specific configurations. Ex.
2003, 552, 696. In contrast, the entry for “parallel port” identifies it as “a
computer port utilizing a parallel interface.” Id. at 552. A computer port would be
understood by one of ordinary skill in the art as having a known configuration. As
such, we are not persuaded that the finding in the Decision is not supported by
substantial evidence.
Lastly, Petitioner argues that the testimony of Patent Owner’s declarant
(Ex. 2001) does not support the position taken in the Decision, namely the
differences between ports and interfaces. Reh’g Req. 7–8. Petitioner argues that
the declarant argues that a peripheral is required with a port, but we found that “a
‘port’ need not require a peripheral.” Reh’g Req. 8 (citing Dec. 11; Ex. 2001, 15–
18). We do not agree. The testimony of Patent Owner’s declarant clearly
demonstrates the understanding of “serial I/O port” and “parallel I/O port” by one
IPR2014-00310
U.S. Patent 7,836,371
6
of ordinary skill in the art (Ex. 2001 ¶ 37) and that not every “interface” connotes a
“port” (Ex. 2001 ¶ 39). Although we found that a port need not include a
peripheral (Dec. 11), that does not detract from the fact that a port may be designed
to interface with a peripheral and thus would have a known configuration. As
such, we are not persuaded that the finding in the Decision is not supported by
substantial evidence.
For the foregoing reasons, Petitioner has not shown that the Board’s finding
that a port has a known configuration, whereas an interface does not, is not
supported by substantial evidence, nor that the Board abused its discretion in
determining that Petitioner failed to demonstrate that claim 2 is anticipated by
Levine.
III. CONCLUSION
Petitioner’s Request for Rehearing is denied.

IPR2014-00310
U.S. Patent 7,836,371
7
For PETITIONER:
Gerald T. Sekimura
Alan A. Limbach
DLA PIPER LLP
gerald.sekimura@dlapiper.com
alan.limbach@dlapiper.com
IV-Toshiba-DLA-Team@dlapiper.com

For PATENT OWNER:
Lori A. Gordon
Michael D. Specht
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
lgordon-PTAB@skgf.com
mspecht-PTAB@skgf.com

Donald J. Coulman
Tim R. Seeley
INTELLECTUAL VENTURES
dcoulman@intven.com
tim@intven.com