Ex Parte 6816814 et al

Patent Trial and Appeal BoardNov 18, 2015

95000667 (P.T.A.B. Nov. 18, 2015)

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 2015-001312 Reexamination Control 95/000,667 Patent 6,816,814 B2 Technology Center 3900 ____________ Before STEPHEN C. SIU, BRADLEY W. BAUMEISTER, and IRVIN E. BRANCH, Administrative Patent Judges. SIU, Administrative Patent Judge. Appeal 2015-001312 Reexamination Control 95/000,667 Patent 6,816,814 2 DECISION ON REQUEST FOR REHEARING Patent Owner submits a Request for Rehearing (Req. Reh’g.) under 37 C.F.R. § 41.79(a) from the Opinion of the Patent Trial and Appeal Board, dated May 19, 2015 (“Decision”). In the Decision, we affirmed the Examiner’s rejection of claims 1–4, 18–20, and 23–26 as anticipated by Nightingale;1 claims 5–8 and 27–30 as unpatentable over Nightingale; and claims 14–17 and 36–39 as unpatentable over Devins.2 We also reversed the Examiner’s decision not to adopt the rejection of claims 9–13 and 31–35 as anticipated by Nightingale. Decision 15. A “request for rehearing must state with particularity the points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision.” 37 C.F.R. § 41.79(b)(1). Patent Owner argues that Nightingale fails to disclose “at design time.” Req. Reh’g. 4–5, PO App. Br. 11–12. This issue was previously addressed in the Decision. Decision 4–5. We disagree with Patent Owner that we misconstrued Nightingale in view of Nightingale’s explicit disclosure of providing a “configuration file” that “allows the developer . . . to design . . . that component,” as previously explained in the Decision. Decision 5 (emphasis omitted). We also disagree with Patent Owner for at least the reasons set forth by Requester. “Requestor Comments on Request for Rehearing,” filed July 17, 2015 (“3PR Comments”) 2–4. 1 US Patent No. 6,876,941 B2 issued Apr. 5, 2005 (“Nightingale”). 2 US Patent No. 6,427,224 B1 issued July 30, 2002 (“Devins”). Appeal 2015-001312 Reexamination Control 95/000,667 Patent 6,816,814 3 Patent Owner argues that Nightingale fails to disclose a configuration file. Req. Reh’g. 5–6, PO App. Br. 11–12. This issue was previously addressed in the Decision. Decision 4–5. We disagree with Patent Owner that we misconstrued Nightingale at least in view of Nightingale’s explicit disclosure of providing a “configuration file,” as previously explained in the Decision. Id. at 5. We also disagree with Patent Owner for at least the reasons set forth by Requester. 3PR Comments 2–4. Patent Owner argues that Nightingale fails to disclose “automatically decomposing a configurable hardware system into a set of one or more units.” Req. Reh’g. 7–9 (citing PO App. Br. 12–17). This issue was previously addressed in the Decision. Decision 5–8. We disagree with Patent Owner that we misconstrued Nightingale for at least the previously discussed reasons and reasons set forth by Requester. Id., 3PR Comments 4–6. Regarding claim 5, Patent Owner argues that Nightingale fails to disclose verifying units of each hierarchy level. Req. Reh’g. 9–11. This issue was previously addressed in the Decision. Decision 10. Patent Owner argues that we “improperly rel[ied] on the Background section of Nightingale.” Req. Reh’g. 10. We disagree with Patent Owner that citation to any part of the disclosure contained within a section entitled “Background of the Invention” is per se improper, particularly when, as in this case, the cited portion discloses features both known in the prior art and practiced in the disclosed invention (of Nightingale). The cited portion of Nightingale within the “Background” section discloses the known feature of an individual enabled to “design and test the component [in a system].” Appeal 2015-001312 Reexamination Control 95/000,667 Patent 6,816,814 4 Nightingale 1:18–23. These known features are also disclosed to be practiced in Nightingale’s embodiments throughout the disclosure. See, e.g., id. at 3:25–37 (as one example). We also disagree with Patent Owner for at least the reasons set forth by Requester. 3PR Comments 6–7. Regarding claims 9–13 and 31–35, Patent Owner argues that Nightingale fails to disclose a “test environment,” “a set of one or more configurable hardware units,” or a “configurable hardware system.” Req. Reh’g. 12. We disagree with Patent Owner for at least the previously discussed reasons. Decision 9–12. We also disagree with Patent Owner for at least the reasons set forth by Requester. 3PR Comments 8–10. Regarding claims 14–17 and 36–39, Patent Owner argues that Devins fails to disclose “individual units decomposed from a configurable hardware system” because we supposedly “misapprehend[ded] . . . the meaning of ‘decomposition’ and its application to Devins.” Req. Reh’g. 13–14, PO App. Br. 17–18. We disagree with Patent Owner for at least the previously discussed reasons. Decision 12–14. We also disagree with Patent Owner for at least the reasons set forth by Requester. 3PR Comments 10–11. We have considered Patent Owner’s arguments but find no points that we have misapprehended or overlooked. Therefore, the Request for Rehearing is DENIED. DENIED bar Appeal 2015-001312 Reexamination Control 95/000,667 Patent 6,816,814 5 PATENT OWNER: MORRISON & FOERSTER LLP 755 Page Mill Rd Palo Alto, CA 94304-1018 THIRD PARTY REQUESTER: PATENT GROUP C/O DLA PIPER US LLP 203 N. LaSalle Street Suite 1900 Chicago, IL 60601