Apple Inc.v.ZiiLabs Inc., Ltd.

Patent Trial and Appeal Board

Oct 1, 2015

09280250 (P.T.A.B. Oct. 1, 2015)

Trials@uspto.gov Paper No. 8
571.272.7822 Entered: October 1, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC.,
Petitioner,

v.

ZIILABS INC., LTD.,
Patent Owner.
____________

Case IPR2015-00963
Patent 6,977,649 B1
____________

Before MICHAEL R. ZECHER, TREVOR M. JEFFERSON, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314(a) and 37 C.F.R. § 42.108

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I. INTRODUCTION
Petitioner, Apple Incorporated (“Apple”), filed a Petition requesting
an inter partes review of claims 21, 25, and 33 of U.S. Patent No. 6,977,649
B1 (“the ’649 patent,” Ex. 1001). Paper 1 (“Pet.”). Patent Owner, ZiiLabs
Incorporated, Limited (“ZiiLabs”), timely filed a Preliminary Response.
Paper 7 (“Prelim. Resp.”).
We have jurisdiction under 35 U.S.C. § 314(a), which provides that an
inter partes review may not be instituted unless the information presented in
the Petition shows “there is a reasonable likelihood that the petitioner would
prevail with respect to at least 1 of the claims challenged in the petition.”
Taking into account the arguments presented in ZiiLabs’ Preliminary
Response, we conclude that the information presented in the Petition does
not establish that there is a reasonable likelihood that Apple will prevail in
challenging claims 21, 25, and 33 of the ’649 patent as unpatentable under
35 U.S.C. §§ 102(e) and 103(a). We, therefore, deny the Petition.
A. Related Matter
The ’649 patent has been asserted in a co-pending district court case
titled ZiiLabs Inc., Ltd. v. Samsung Elec. Co., Ltd., No. 2:14-cv-00203-JGR-
RSP (E.D. Tex.). Pet. 1–2 (citing Exs. 1011, 1012); Paper 4, 1.
B. The ’649 Patent
The ’649 patent, titled “3D Graphics Rendering with Selective Read
Suspend,” issued December 20, 2005, from U.S. Patent Application
No. 09/280,250, filed on March 29, 1999. Ex. 1001, at [54], [45], [21], [22].
The ’649 patent claims priority to U.S. Provisional Application No.
60/109,733, filed November 23, 1998. Id. at [60].
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The ’649 patent generally relates to computer graphics and, in
particular, to memory read and write commands between primitives.
Ex. 1001, 1:14–16. According to the ’649 patent, if a display is unchanging,
no demand is placed on the rendering operations. Id. at 1:64–65. Some
common operations, e.g., zooming and rotation, however, require every
object in the image space to be re-rendered. Id. at 1:66–2:1. Slow rendering
will make the rotation and zoom appear jerky, which creates an effect that is
undesirable. Id. at 2:1–3.
The ’649 patent further discloses that, in prior art graphics systems, a
read-modify-write operation is relied on when rendering primitives.
Ex. 1001, 2:38–39. In a heavily pipelined system, the individual functions
of this read-modify-write operation may experience wide separations in
time. Id. at 2:42–44. One solution to this problem is to force all outstanding
writes to complete before any reads for the new primitive begin. Id. at 2:53–
55. Implementation of this solution is generally through a message passing
mechanism that includes suspend and resume commands. See id. at 2:55–
3:11. There are, however, significant time delays between these commands
reaching the memory controller and being acted upon. Id. at 3:13–15. Such
delays present a bottleneck that must be overcome to increase the rendering
rate. Id. at 3:15–16, 3:22–25.
The ’649 patent purportedly solves these problems by disclosing a
method and system for increasing the rendering efficiency in pipelined
graphics systems. Ex. 1001, Abstract, 3:28–30. In one embodiment, a
record is kept of destination pixels. Id. at 8:36–38. Read units may record
the pixels that have been read and remove them from the record when an
update has occurred or the pixel has been discarded, i.e., no update has
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occurred. Id. at 8:38–41. When a destination pixel is read, the record kept
by the read units is checked to determine whether the pixel is present, which
indicates that the pixel is either waiting for an update or has yet to be
discarded. Id. at 8:41–44. If the pixel is present in the record, the read is
delayed or suspended until the pixel has been removed from the record. Id.
at 8:44–46. Once the pixel has been removed, the read may resume. Id. at
8:46–47. If the pixel is not in the record, then the read issues immediately.
Id. at 8:47–48. Once the read issues, the record is updated to reflect the new
destination pixel. Id. at 8:48–50.
C. Challenged Claims
Challenged claims 21, 25, and 33 are all independent. Independent
claims 21 and 25 are each directed to a method of computer graphics
memory management, whereas independent claim 33 is directed to a
pipelined graphics system. Independent claims 21, 25, and 33 are
reproduced below:
21. A method of computer graphics memory
management, comprising the actions of:
keeping a record of each pixel affected by a rendered
primitive;
removing a pixel from said record if said pixel
information is updated or discarded; and
suspending reads of pixel information if a primitive to be
rendered will affect a pixel whose entry remains in said record.

Ex. 1001, 17:48–56.
25. A method of computer graphics memory
management, comprising the actions of:
tracking each primitive to be rendered and the pixel
information each said primitive will affect; and
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suspending reads of pixel information between rendering
of each said primitive only if the primitive to be rendered will
affect pixel information that has been previously rendered and
has not had sufficient time to update.

Id. at 18:1–9.
33. A pipelined graphics system, comprising:
display hardware; and
video rendering hardware comprising, a read unit to read
information regarding a primitive to be rendered to be displayed
by said display hardware, a write unit to update modified
information regarding primitives, and a read monitor unit to
prevent primitive information which has been modified from
being read by said read unit before said write unit has updated
said information;
wherein said read monitor unit tracks pixel information
affected by previously rendered primitives and suspends reads
if a primitive to be rendered will affect pixel information which
has been affected by a previously rendered primitive until said
pixel information has had time to update.

Id. at 18:44–59.
D. Prior Art Relied Upon
Apple relies upon the following prior art references:
Becker US 5,379,379 Jan. 3, 1995 Ex. 1007
Kenworthy US 5,808,617 Sept. 15, 1998 Ex. 1006
McCormack US 5,870,109 Feb. 9, 1999 Ex. 1010
(filed June 6, 1997)

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E. Asserted Grounds of Unpatentability
Apple challenges claims 21, 25, and 33 of the ’649 patent based on
the asserted grounds of unpatentability (“grounds”) set forth in the table
below. Pet. 3, 26–60.
Reference(s) Basis Challenged Claim(s)
McCormack § 102(e) 21
McCormack and Becker § 103(a) 21
McCormack and Kenworthy § 103(a) 25 and 331
McCormack, Kenworthy, and Becker § 103(a) 25 and 33

II. ANALYSIS
A. Claim Construction
In an inter partes review, we construe claims by applying the broadest
reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir.
July 8, 2015), reh’g en banc denied, 793 F.3d 1297 (Fed. Cir. July 8, 2015).
Under the broadest reasonable interpretation standard, and absent any
special definitions, claim terms or phrases are given their ordinary and
customary meaning, as would be understood by one of ordinary skill in the

1 Although Apple omits independent claim 25 in the statement of this
asserted ground (Pet. 3), Apple nonetheless includes this claim in the
corresponding analysis (id. at 36–47). We will treat the incorrect statement
of this asserted ground as a typographical error and presume Apple intended
to assert that both claims 25 and 33 are unpatentable under § 103(a) over the
combination of McCormack and Kenworthy. Accord Prelim. Resp. 1
(confirming Apple asserts that both claims 25 and 33 are unpatentable under
§ 103(a) over the combination of McCormack and Kenworthy).
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art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007).
In its Petition, Apple proposes constructions for the following claim
terms or phrases: (1) “primitive” (all challenged claims); and (2) “tracking
each primitive to be rendered and the pixel information each said primitive
will effect” (claim 25). Pet. 10–14. In response, ZiiLabs contends that an
explicit construction of these claim terms or phrases is not necessary.
Prelim. Resp. 10–12. ZiiLabs then indicates that, for purposes of this
Decision, it accepts Apple’s proposed constructions of the aforementioned
claim terms or phrases, but in the event we institute an inter partes review as
to the challenged claims, it intends to present arguments and evidence
regarding each construction. Id. We, however, need not assess Apple’s
proposed constructions because they are not necessary to resolve the
dispositive issues discussed below. See, e.g., Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms or phrases
that are in controversy need to be construed, and only to the extent necessary
to resolve the controversy).
B. Anticipation by McCormack
Apple contends that independent claim 21 is anticipated under
§ 102(e) by McCormack. Pet. 26–31. Apple explains how McCormack
purportedly describes the subject matter of this challenged claim (id.), and
relies upon the Declaration of Dr. John Owens (Ex. 1003) to support its
positions. We have reviewed Apple’s explanations and supporting evidence,
but we are not persuaded that McCormack properly accounts for
“suspending reads of pixel information if a primitive to be rendered will
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affect a pixel whose entry remains in said record,” as recited in independent
claim 21.
We begin our analysis with the principles of law that generally apply
to a ground based on anticipation, followed by a brief discussion of
McCormack, and then we turn to the parties’ contentions with respect to
independent claim 21.
1. Principles of Law
To establish anticipation, “all of the elements and limitations of the
claim must be shown in a single prior reference, arranged as in the claim.”
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001). “A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987). We analyze this asserted ground based on anticipation
with the principles stated above in mind.
2. McCormack
McCormack generally relates to digital graphic systems and, in
particular, to the detection of overlapping pixels in reading and writing
digital data. Ex. 1010, 1:6–8. Figure 1 of McCormack, reproduced below,
illustrates a block diagram of a portion of a digital graphics system. Id. at
4:15–16.
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As shown in Figure 1, graphic system 100 includes fragment
generator 110 that provides fragments to graphic controller 200. Ex. 1010,
4:30–32. Graphic controller 200 includes, among other things, memory
controller 210, pixel read queue 215, read latency pipeline 225, fragment
test/blend pipeline 230, and pixel write queue 220. Id. at 4:32–5:2.
According to McCormack, fragment overlap detector 235 detects
overlapping fragments associated with the objects forming a graphic image.
Id. at 5:2–6. Fragment overlap detector 235 preferably includes an M-entry
content-addressable memory (“CAM”). Id. at 5:64–65.
McCormack discloses that, from time-to-time, the CAM will fill
completely during operation of graphic system 100. Ex. 1010, 7:34–36.
When the CAM has filled completely, it is cleared, thereby making it
responsive to receipt of the next fragment. Id. at 7:36–38. Thereafter, the
current fragment N-bit address and four-bit byte mask data are stored in the
CAM, and fragment overlap detector 235 tags the fragment before
forwarding it to pixel read queue 215. Id. at 7:38–41.
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McCormack further discloses that, if fragment overlap detector 235
determines that the pixel data currently being requested by the most recently
received fragment is both an address that matches an address of a previously
received fragment, and that is stored in the CAM, fragment overlap detector
235 clears the CAM of the previously stored address. Ex. 1010, 9:30–36.
Thereafter, fragment overlap detector 235 stores the address detected in the
most recently received fragment in the CAM, and then tags the most recently
received fragment prior to forwarding that fragment to the end of pixel read
queue 215. Id. at 9:36–40.
3. Claim 21
Independent claim 21 recites, in relevant part, “suspending reads of
pixel information if a primitive to be rendered will affect a pixel whose entry
remains in said record.” Ex. 1001, 17:54–56.
With respect to the claimed “suspending” step, Apple contends that
McCormack’s fragment overlap detector 235 records the address of pixel
data read from memory to render a primitive. Pet. 30 (citing Ex. 1003
¶¶ 103–09, 156, 181). In particular, Apple argues that fragment overlap
detector 235 compares the address of newly read pixel data to the addresses
already stored in the CAM of fragment overlap detector 235. Id. (citing
Ex. 1010, 8:23–30, 8:44–49; Ex. 1003 ¶¶ 103–09, 156, 181). Apple further
argues that, when McCormack’s fragment overlap detector 235 identifies an
overlap between these addresses, it tags the overlapping fragment request,
and prior to reading the fragment request, memory controller 210 delays or
stalls until the pixel data at all the previous non-overlapping addresses are
rewritten from pixel write queue 220 to frame memory 205. Id. (citing
Ex. 1010, 9:3–19; Ex. 1003 ¶¶ 109, 131). In summary, Apple asserts that
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McCormack describes the “suspending” step because it suspends the reading
of new pixel data when this data overlaps with the address of a previously
rendered pixel remaining in the CAM. Id. at 30–31 (citing Ex. 1003 ¶¶ 180–
82).
In response, ZiiLabs contends that Apple’s position regarding the
claimed “suspending” step is predicated on the notion that the CAM
associated with McCormack’s fragment overlap detector 235 constitutes the
claimed “record.” Prelim. Resp. 20. ZiiLabs argues, however, that
McCormack’s CAM is flushed completely whenever an entry is removed
from the CAM such that no entries remain. Id. at 20–21 (citing Ex. 1010,
7:34–38). As such, ZiiLabs asserts that McCormack does not describe
selective removal of pixel data entries from the CAM such that one or more
entries remain therein. Id. at 23; see also id. 24–25 (arguing that when a
pixel data entry is removed from McCormack’s CAM, all entries are
removed). ZiiLabs also argues that the testimony of Apple’s expert witness,
Dr. Owens, should be entitled to little, if any, weight because Dr. Baker does
not explain adequately how McCormack’s disclosure of delaying or stalling
relates to a pixel data entry that remains in the CAM. Id. at 22–23 (citing
Ex. 1003 ¶ 181).
We are persuaded by ZiiLabs’ arguments for at least two reasons.
First, we recognize that McCormack discloses that memory controller 210
delays or stalls reading pixel data associated with a fragment request that
fragment overlap detector 235 identifies as being overlapping until the pixel
data at all the previous non-overlapping addresses are rewritten from pixel
write queue 220 to frame memory 205. Ex. 1010, 9:3–19. Nonetheless,
McCormack also discloses that, when a pixel data entry associated with a
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fragment request is removed from the CAM, all such entries are removed.
See Ex. 1010, 3:64–4:1 (“the address memory is cleared of the detected first
address, as well as all other addresses stored in the detector, responsive to
the detector detecting a request to read overlapping pixel data associated
with the second address”), 9:35–36 (“fragment overlap detector 235 will
clear the CAM of the previously stored address, then store the address
detected in the most recently received fragment of the CAM”). Given that
McCormack’s CAM is cleared completely whenever an entry is removed
from the CAM, it is not apparent to us how its disclosure of memory
controller 210 delaying or stalling further reads is triggered by a pixel data
entry that remains in the CAM because it has not been updated or discarded.
Second, we accord Dr. Owens’ testimony regarding the claimed
“suspending” step little weight. Dr. Owens’ testimony in this regard is
essentially the same as the contentions Apple offers in its Petition, which we
have considered above and found unpersuasive. Compare Pet. 30–31, with
Ex. 1003 ¶ 181. Dr. Owens does not attempt to reconcile the deficiency we
identified in McCormack—namely, how McCormack’s disclosure of
memory controller 210 delaying or stalling further reads is triggered by a
pixel data entry that remains in the CAM because it has not been updated or
discarded, especially given the fact that the CAM is cleared completely
whenever an entry is removed from the CAM. See Ex. 1010, 3:54–4:1,
9:35–36. Absent a cogent explanation from Dr. Owens, we are not
persuaded that Apple has presented sufficient evidence to support a finding
that McCormack describes the “suspending” step, as recited in independent
claim 21.
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Based on the record before us, Apple has not demonstrated a
reasonable likelihood that it will prevail on its assertion that independent
claim 21 is anticipated by McCormack.
C. Obviousness Over the Combination of McCormack and Becker
Apple also contends that independent claim 21 is unpatentable under
§ 103(a) over the combination of McCormack and Becker. Pet. 31–35. In
this asserted ground based on obviousness, Apple does not apply the
teachings of Becker in such a way that remedies the deficiency in
McCormack discussed above. See generally id. Therefore, for the same
reasons discussed above, Apple has not demonstrated a reasonable
likelihood that it will prevail on its assertion that independent claim 21
would have been obvious over the combination of McCormack and Becker.
D. Obviousness Over the Combination of McCormack and Kenworthy
Apple contends that claims 25 and 33 are unpatentable under § 103(a)
over the combination of McCormack and Kenworthy. Pet. 36–47, 51–57.
Apple explains how this proffered combination purportedly teaches the
subject matter of these challenged claims (id.), and relies upon the
Declaration of Dr. Owens (Ex. 1003) to support its positions. We have
reviewed Apple’s explanations and supporting evidence, but we are not
persuaded that the combination of McCormack and Kenworthy properly
accounts for the “suspending” step, as recited in independent claim 21, and
the “read monitor unit tracks pixel information affected by previously
rendered primitives . . . until said pixel information has had time to update,”
as recited in independent claim 33.
We begin our analysis with the principles of law that generally apply
to a ground based on obviousness, followed by a brief discussion of
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Kenworthy, and then we turn to the parties’ contentions with respect to
independent claims 25 and 33.
1. Principles of Law
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). 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; (3) the level of skill in
the art; and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We also recognize
that prior art references must be “‘considered together with the knowledge of
one of ordinary skill in the pertinent art.’” In re Paulsen, 30 F.3d 1475,
1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA
1978)). We analyze this asserted ground based on obviousness with the
principles identified above in mind.
2. Kenworthy
Kenworthy generally relates to graphics rendering and, in particular,
to a method and system for reducing pixel processing and storage in a
graphics rendering system. Ex. 1006, 1:14–16. According to Kenworthy, a
scene, or portions of a scene, may be divided into pixel regions called
chunks. Id. at 8:32–34. After dividing the geometry composing the scene
into chunks, the geometry is pre-sorted into bins based on the chunk into
which the geometry will be rendered. Id. at 8:35–39. This process is
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referred to as chunking. Id. at 8:39. As the scene is animated, the data
structure is modified to adjust for geometry that moves from one chunk to
another. Id. at 8:41–43. In one embodiment, Kenworthy discloses serially
rendering chunks using an image processor called a tiler. See id. at 4:51–67.
3. Claim 25
Independent claim 25 recites, in relevant part, “suspending reads of
pixel information between rendering of each said primitive only if the
primitive to be rendered will affect pixel information that has been
previously rendered and has not had sufficient time to update.” Ex. 1001,
18:5–9.
With respect to the claimed “suspending” step, Apple first directs us
to the supporting testimony of Dr. Owens that purportedly explains the
scope and meaning of this disputed limitation. Pet. 44–45 (citing Ex. 1003
¶¶ 203–06). Apple then focuses on the claim phrase “pixel information that
has been previously rendered and has not had sufficient time to update,”
before addressing the “suspending” step in its entirety. Id. at 45–47. In
particular, Apple contends that McCormack describes fragment overlap
detector 235 recording the addresses of pixels affected by each primitive.
Id. at 45 (citing Ex. 1010, 8:7–16; Ex. 1003 ¶¶ 103–05, 156). Apple argues
that McCormack’s fragment test/blend pipeline 230 then modifies the pixel
information associated with a stored address before forwarding such pixel
information to pixel write queue 220. Id. (citing Ex. 1010, 3:14–18, 8:22–
23). Apple, therefore, asserts that the addresses stored in fragment overlap
detector 235 represent “pixel information that has been previously rendered
and has not had sufficient time to update,” as claimed. Id. (citing Ex. 1003
¶ 207).
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When addressing the “suspending” step in its entirety, Apple contends
that McCormack discloses that pixel overlaps and suspends will not occur
within a single primitive. Pet. 46 (citing Ex. 1010, 8:30–35; Ex. 1003
¶ 181). Apple argues that, in order to address problems associated with
read-modify-write conflicts, McCormack discloses suspending reads of pixel
information between rendering of each primitive such that all reads and
writes for one object are processed before reading any pixel data for another
object. Id. (citing Ex. 1010, 1:63–64). Apple further argues that
McCormack recognizes that, if not done selectively, this method results in
significant system overhead and unacceptable delays. Id. (citing Ex. 1010,
2:4–5; Ex. 1003 ¶¶ 181, 209). Apple, therefore, asserts that McCormack
teaches the “suspending” step, as claimed. Id. at 47 (citing Ex. 1003 ¶ 210).
We are not persuaded by Apple’s contentions because we are unable
to discern how each of the cited disclosures in McCormack work in
conjunction to account for all the features recited in the “suspending” step.
The Office Patent Trial Practice Guide suggests that parties requesting inter
partes review should “avoid submitting a repository of all the information
that a judge could possibly consider, and instead focus on concise, well-
organized, easy-to-follow arguments supported by readily identifiable
evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). Here,
Apple directs us to disparate disclosures in McCormack, and then generally
asserts that McCormack accounts for all the features recited in the
“suspending” step. For instance, Apple cites to and relies upon the
following disclosures in McCormack: (1) the “Background Art” section,
see, e.g., Ex. 1010, 1:63–64, 2:4–5; (2) the “Summary Disclosure of the
Invention” section, see, e.g., id. at 3:14–18; and (3) the “Best Mode for
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Carrying Out the Invention” section, see, e.g., 8:7–16, 8:22–23, 8:30–35.
Apple, however, does not provide a credible or sufficient explanation as to
how one of ordinary skill in the art might combine these disparate
disclosures to arrive at the “suspending” step.
As we explain in our Introduction Section above, § 314(a) places the
burden on Apple to demonstrate that there is a reasonable likelihood that the
combined teachings of McCormack and Kenworthy render obvious
independent claim 25, which includes, among other things, offering concise,
well-organized, easy-to-follow arguments as to how these asserted prior art
references account for all the features recited in the “suspending” step. We
decline to shoulder this burden and, as a result, we will not attempt to fit the
disparate disclosures from McCormack together into a coherent explanation
to supplement Apple’s insufficient arguments presented in its Petition.
Cf. United States v. Lanzotti, 205 F.3d 951, 957 (7th Cir. 2000) (“It is not
this court’s responsibility to research and construct the parties’ arguments.”).
To the extent that Apple relies upon the supporting testimony of Dr.
Owens to bridge the gap between the disparate disclosures of McCormack,
we are not persuaded. The testimony of Dr. Owens relied upon by Apple to
support its position that McCormack teaches the “suspending” step either
reiterates disclosures in McCormack with minimal discussion regarding the
level of skill in art, see e.g., Ex. 1003 ¶¶ 103–05, 156, 181, or essentially
repeats the contentions offered by Apple in its Petition, see e.g., id. ¶¶ 207–
10. Rarely, however, will minimal discussion regarding the level of skill in
the art, without further explanation, act to bridge gaps in the substantive
presentation of an asserted ground based on obviousness. See Al-Site Corp.
v. VSI Int’l, Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999). Consequently, we
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do not credit Dr. Owens’ cited testimony because it does not provide
additional insight beyond Apple’s insufficient arguments presented in its
Petition that helps us evaluate how one of ordinary skill in the art might
combine the disparate disclosures of McCormack to arrive at the
“suspending” step.
Based on the record before us, Apple has not demonstrated a
reasonable likelihood that it will prevail on its assertion that independent
claim 25 would have been obvious over the combination of McCormack and
Kenworthy.
4. Claim 33
Independent claim 33 recites, in relevant part, “read monitor unit
tracks pixel information affected by previously rendered primitives . . . until
said pixel information has had time to update.” Ex. 1001, 18:54–59.
Apple contends that McCormack’s fragment overlap detector 235
amounts to the claimed “read monitor unit” because it stores the addresses of
pixel data that has been modified, i.e., that has been “affected by previously
rendered primitives,” and pixel information related to primitives to be
rendered even though McCormack’s system does not need to store the
primitive’s associated with the pixel. Pet. 56 (citing Ex. 1003 ¶¶ 159–62,
194, 244). Apple then argues that, because McCormack’s fragment overlap
detector 235 stores addresses for pixel information that has been read and
modified, it tracks pixel information affected by previously rendered
primitives. Id. (citing Ex. 1003 ¶¶ 195–97, 207–13, 244). Apple, therefore,
asserts that “the [claimed] ‘read monitor unit’ of a combined
McCormack/Kenworthy system would ‘track[] pixel information affected by
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previously rendered primitives.’” Id. (citing Ex. 1003 ¶ 245) (emphases
omitted).
In response, ZiiLabs contends that Apple does not attempt to address
whether the claimed “read monitor unit tracks pixel information affected by
previously rendered primitives . . . until said pixel information has had time
to update.” Prelim. Resp. 48. ZiiLabs argues that McCormack does not
contemplate that the clearance of the CAM associated with fragment overlap
detector 235 is related, or dependent upon, the pixels in pixel write queue
220 being written or, alternatively, pixels in the pipeline being discarded.
Id. at 49. Instead, ZiiLabs argues that McCormack’s CAM is filled
continually by new fragment addresses when no overlap is detected by
fragment overlap detector 235. Id. (citing Ex. 1010, 7:34–45). ZiiLabs
further argues that the CAM is cleared only when fragment overlap detector
235 detects an overlap or it becomes completed filled—not when the pixel
write queue 220 is serviced. Id. (citing Ex. 1010, 3:64–4:1, 7:36–38).
We are persuaded by ZiiLabs’ arguments because we cannot discern
how McCormack’s fragment overlap detector 235 tracks pixel information
until the pixel information has had time to update, as required by
independent claim 33. At best, McCormack discloses that fragment overlap
detector 235 tracks pixel information to determine if there is overlap
between the most recently received pixel information and previously
received pixel information, and tracks pixel information to determine
whether the CAM has reached full capacity. See Ex. 1010, 7:36–38, 9:30–
35. Apple does not direct us to, nor can we find, a disclosure in McCormack
that indicates fragment overlap detector 235 tracks pixel information until it
determines that pixel write queue 220 has sufficient time to write or update
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Patent 6,977,649 B1

20
the pixel information. Absent such a disclosure, we are not persuaded that
Apple has presented sufficient evidence to support a finding that
McCormack teaches the “read monitor unit tracks pixel information affected
by previously rendered primitives . . . until said pixel information has had
time to update,” as recited in independent claim 33.
There is at least one additional consideration that weighs in favor of
us determining that Apple has not satisfied the “reasonable likelihood”
threshold standard for instituting an inter partes review of independent claim
33. In its Petition, Apple relies exclusively on the cited testimony of Dr.
Owens to support its position that McCormack’s fragment overlap detector
235 constitutes the claimed “read monitor unit” that performs the function of
“tracking.” A cursory review of the cited testimony of Dr. Owens reveals
numerous nested string citations to other portions of his Declaration. See,
e.g., Ex. 1003 ¶ 160 (citing ¶¶ 103–09, 156), ¶ 194 (citing ¶¶ 60–69), ¶ 195
(citing ¶¶ 103–09, 156, 159, 160), ¶ 207 (citing ¶¶ 109, 181, 182), ¶ 244
(citing ¶¶ 159–62, 195–97, 207–13). These nested citations, in total, amount
to roughly thirty paragraphs of Dr. Owens’ Declaration. In essence, the
Petition provides citations to arguments presented in Dr. Owens’
Declaration, which, in turn, cite to additional paragraphs of his own
Declaration as support for those arguments. Such incorporation by reference
is improper. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be
incorporated by reference from one document into another document.”); see
also DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999)
(Incorporation by reference “amounts to a self-help increase in the length of
the . . . brief . . . . A brief must make all arguments accessible to the judges,
rather than ask them to play archeologist with the record.”).
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21
The nested citations in Dr. Owen’s Declaration effectively obscure the
evidence on which Apple relies as teaching the claimed “read monitor unit”
and the corresponding function of “tracking.” Consequently, we give no
weight to these nested citations because Apple fails to explain their
relevance to its asserted ground based on the combination of McCormack
and Kenworthy. See 37 C.F.R. § 42.104(b)(5) (“The Board may . . . give no
weight to the evidence where a party has failed to state its relevance or to
identify specific portions of the evidence that support the challenge.”).
Based on the record before us, Apple has not demonstrated a
reasonable likelihood that it will prevail on its assertion that independent
claim 33 would have been obvious over the combination of McCormack and
Kenworthy.
E. Obviousness Over the Combination of McCormack,
Kenworthy, and Becker
Apple also contends that independent claims 25 and 33 are
unpatentable under § 103(a) over the combination of McCormack,
Kenworthy, and Becker. Pet. 47–51, 57–60. In these asserted grounds
based on obviousness, Apple does not apply the teachings of Becker in such
a way that remedies the deficiencies in the combination of McCormack and
Kenworthy discussed above. See generally id. Therefore, for the same
reasons discussed above, Apple has not demonstrated a reasonable
likelihood that it will prevail on its assertion that independent claims 25 and
33 would have been obvious over the combination of McCormack,
Kenworthy, and Becker.

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22
III. CONCLUSION
Taking into account the arguments presented in ZiiLabs’ Preliminary
Response, we conclude that the information presented in the Petition does
not establish that there is a reasonable likelihood that Apple will prevail in
challenging claims 21, 25, and 33 of the ’649 patent as unpatentable under
§§ 102(e) and 103(a).

IV. ORDER
In consideration of the foregoing, it is ORDERED that the Petition is
DENIED and no trial is instituted.
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Patent 6,977,649 B1

23
For PETITIONER:
Jeffrey P. Kushan
Michael D. Hatcher
Sidley Austin LLP
jkushan@sidley.com
mhatcher@sidley.com
iprnotices@sidley.com

For PATENT OWNER:

Andy Chan
William D. Belanger
George S. Haight
Andrew Schultz
Pepper Hamilton LLP
chana@pepperlaw.com
belangerw@pepperlaw.com
haightg@pepperlaw.com
schultza@pepperlaw.com

Russell Swerdon
Desmund Gean
Creative Labs, Inc. (Legal Dept.)
russ_swerdon@creativelabs.com
Desmund_gean@creativelabs.com