Takeaway: A petitioner relying upon a single prior art reference as teaching all the limitations of an independent claim, only adding secondary references for the limitations of the dependent claims, assumes the risk that institution will be denied for all claims if any limitation is found lacking in the alleged anticipatory reference.

In its Decision, the Board denied institution of inter partes review of claims 1-16 of the ‘126 patent because Petitioner did not establish a reasonable likelihood of prevailing on any challenged claim.

The ‘126 patent describes “a structure for efficiently connecting a variety of functional circuits on a single silicon chip.” In particularly, the patent describes using “unidirectional buses only, central shared memory controllers, and separate interconnects for high-speed and low-speed peripherals.”

Petitioner relied upon eight prior art references and alleged 21 specific grounds of unpatentability in the Petition. Patent Owner filed a Preliminary Response.  In a footnote, the Board indicated that Patent Owner had attached a declaration to the Preliminary Response.  The Board stated that the declaration was new testimony evidence submitted without Board authorization and contrary to the Board regulations.  Thus, the declaration was not considered.

The Board then addressed claim construction, indicating that the claims are to be construed using the broadest reasonable construction, giving the terms their ordinary and customary meaning as understood by a person of ordinary skill in the art. First, the Board construed the term “peripheral,” citing a dictionary definition and the specification, as meaning “a functional module – other than a processor or memory – such as a timer, DMA engine, interrupt controller or memory controller; a peripheral may or may not have direct access to shared memory.”  Next, the Board agreed with Petitioner’s unopposed constructions for the terms “master/slave.”  Then the Board addressed the parties’ competing constructions for the term “I/O backplane.”  The Board adopted a construction that appeared to be consistent with Petitioner’s proposed construction, but that was somewhat broader.  Finally, the Board construed the term “an [I/O] backplane that allows a processor to configure and control any of its slave peripherals” such that “all of the processor’s slave peripherals must be connected to the processor via the p-bus controller and p-bus.”

Turning to the grounds of unpatentability, the Board noted that each of the grounds relied upon one of three prior art references: AMBA1999, Ramaklus, and Flynn. In this regard, Petitioner alleged that AMBA1999, Remaklus, and Flynn each anticipated claim 1, which is the only independent claim of the ‘126 patent.  The dependent claims were either challenged on anticipation grounds citing these same references or on obviousness grounds based on the same references in combination with others.  However, as the Board noted, the obviousness grounds relied upon the assertion that the base claim was anticipated by one of the three above references.

Patent Owner argued, and the Board agreed, that AMBA1999 does not disclose the claimed “p-bus controller . . . providing for an [I/O] backplane that allows a processor to configure and control any of its slave peripherals.” Therefore, the Board declined to institute trial with respect to the grounds of unpatentability based upon the AMBA1999 reference.

The grounds based on Remaklus were similarly denied institution. The Board agreed with Patent Owner that Remaklus does not disclose a “p-bus controller . . . providing for an [I/O] backplane that allows a processor to configure and control any of its slave peripherals.”  The Board denied the anticipation ground based on Remaklus, and because each related obviousness ground alleged that Remaklus disclosed the limitations of the base claim, the Board denied those grounds as well.

The remaining grounds, anticipation and obviousness based on the Flynn reference, were denied for essentially the same reasons as discussed above.

Mediatek Inc. v. Netvinci, Inc., IPR2014-00328
Paper 24: Decision Denying Institution of Inter Partes Review
Dated: June 30, 2014
Patent 6,601,126
Before: Karl D. Easthom, Benjamin D.M. Wood, and Peter P. Chen
Written by: Wood
Related Proceeding: PalmChip Corp. v. Ralink Tech. Corp., ED CV13-1567 PSG (C.D. Cal. Western Div.)