Takeaway: A motion to exclude is neither a substantive sur-reply nor a proper vehicle for arguing whether a reply or supporting evidence is of appropriate scope.

In its Final Written Decision, the Board found the challenged claims of an interrupt enable circuit patent unpatentable under 35 U.S.C. § 103(a). Specifically, the Board found claims 6-9 of the ‘597 patent obvious under two of three instituted grounds of unpatentability.

The Board first addressed claim construction. Because the ‘597 patent has expired, the Board was “guided by the principle that the words of a claim ‘are generally given their ordinary and customary meaning’ as understood by a person of ordinary skill in the art in question at the time of the invention.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). The Board construed the terms “first logic circuitry” and “second logic circuitry,” even though neither party expressly proposed a construction for any claim term. The Board agreed with Petitioner that the terms do not exclude an AND gate or an OR gate, respectively. Patent Owner’s position, on the other hand, “would exclude most, if not all, of the embodiments disclosed in the ‘597 patent.” The Board did not agree that “the embodiments shown in Figure 2-4 exclude an OR gate alone (e.g., OR gate 28) from a ‘second logic circuitry’ and an AND gate alone (e.g., AND gate 6) from a ‘first logic circuitry.’” Further, “[l]ooking to the specification, [the Board did] not agree with Patent Owner that the Specification disclaims or excludes Figure 2 from the scope of the ‘first logic circuitry’ and ‘second logic circuitry’ limitations.” Petitioner’s implicitly proposed constructions were therefore adopted.

The Board then addressed the first ground of invalidity—obviousness over Tokiwa and Smith. Tokiwa “teaches a virtual machine system with a virtual machine control program (VMCP) that manages machine resources shared among virtual machines (VM).” Smith “discloses a processor capable of reducing its power consumption by executing a WAIT or STOP instruction.” First, the Board rejected Patent Owner’s argument that the “first logic circuitry” and “second logic circuitry” must be separate components, as the literal language “does not expressly require separate components.” The Board declined to address Petitioner’s argument “that collateral estoppel applies as these arguments were not made in response to the office actions in Ex Parte Reexamination No. 90/012781.” In sum, the Board was persuaded that Petitioner has shown—by a preponderance of the evidence—that claims 6-9 are unpatentable over Tokiwa and Smith.

The Board next address the second ground of invalidity—obviousness over Katayose and Smith. Katayose “discloses a data processor with two different interrupt processing modes.” The Board was persuaded that Petitioner has shown—by a preponderance of the evidence—that claims 6-9 are unpatentable over Katayose and Smith.

The Board then addressed the third ground of invalidity—anticipation by Smith. Because the Petition “is unclear how Smith discloses a mask signal” and the Board “decline[d] to speculate on what aspects of Smith satisfy this limitation,” Petitioner had “not shown, by a preponderance of the evidence, that these claims are anticipated by Smith.”

Finally, the Board addressed Patent Owner’s motion to exclude. “A motion to exclude is required to preserve an objection to the admissibility of evidence.” See 37 C.F.R. § 42.64(c). “A motion to exclude is neither a substantive sur-reply, nor a proper vehicle for arguing whether a reply or supporting evidence is of appropriate scope.” Here, because Patent Owner’s Response raised several substantive issues that were not raised in the Petition, “Petitioner was entitled to rebut Patent Owner’s arguments concerning the construction of the first and second logic circuitry limitations.” Moreover, Patent Owner in its motion improperly attempts to “bolster its argument that the claim language ‘first logic circuitry’ excludes an AND gate alone and ‘second logic circuitry’ excludes an OR gate alone.” “Petitioner was also entitled to rebut Patent Owner’s arguments concerning the objective criteria of non-obviousness.” Moreover, “a motion to exclude addresses the admissibility of evidence, and not how much weight to give an argument.” The motion to exclude was denied.

Nissan North America, Inc. v. Norman IP Holdings, LLC, IPR2014-00564
Paper 36: Final Written Decision
Dated: August 26, 2015
Patent: 5,530,597
Before: Bryan F. Moore, Hyun J. Jung, and Frances L. Ippolito
Written by: Ippolito
Related Proceedings: Ex Parte Reexamination No. 90/012,781, Ex Parte Reexamination No. 90/012,901 (not instituted); various federal district court cases