Qualcomm Incorporatedv.NVIDIA Corporation

Patent Trial and Appeal Board

Mar 10, 2016

09730639 (P.T.A.B. Mar. 10, 2016)

Trials@uspto.gov Paper: 7
571-272-7822 Entered: March 10, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

QUALCOMM, INCORPORATED,
Petitioner,

v.

NVIDIA CORPORATION,
Patent Owner.
____________

Case IPR2015-01862
Patent 6,690,372 B2
____________

Before KEVIN F. TURNER, BEVERLY M. BUNTING, and
JON B. TORNQUIST, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
A. Background
Qualcomm Incorporated (“Petitioner”) filed a Petition (Paper 1,
“Pet.”) requesting inter partes review of claims 1–6, 9–16, and 19–25 (“the
challenged claims”) of U.S. Patent No. 6,690,372 B2 (Ex. 1001, “the ’372
Patent”). NVIDIA Corporation (“Patent Owner”) filed a Preliminary
Response (Paper 6, “Prelim. Resp.”) to the Petition.
We have jurisdiction under 35 U.S.C. § 314(a), which provides that an
inter partes review may not be instituted “unless . . . there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.” For the reasons given below, we
determine that Petitioner has not demonstrated a reasonable likelihood of
prevailing with respect to the challenged claims. Accordingly, we do not
institute an inter partes review.

B. Related Proceedings
The parties inform us that the ’372 Patent is the subject of proceedings
between the parties in NVIDIA Corp. v. Samsung Electronics Co., Ltd., No.
1-14-cv-01127 (D. Del.), an investigation before the International Trade
Commission: Certain Consumer Electronics and Display Devices with
Graphics Processing and Graphics Processing Units Therein, Investigation
No. 337-TA-932 (USITC), and Samsung Elecs. Co., LTD., Samsung Elecs.
America, Inc., and Samsung Semiconductor, Inc. v. Nvidia Corp., IPR2015-
01070 (PTAB). Pet. 1–2; Paper 5, 2.

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C. The ’372 Patent
The ’372 Patent is directed to the field of 3D graphics processing,
with disclosure of a system, method, and article of manufacture for shadow
mapping while rendering a primitive in a graphics pipeline. Ex. 1001, 1:24–
25, Abs. The ’372 Patent discloses “an improved shadowing algorithm” that
“decouples” the variables by splitting them into two calculations, allowing
for “very flexible shadowing operations.” Id. at 4:9–15, 13:1–19. One
embodiment describes a “Reflective Bump Mapping” process, involving
multiple shading calculations and decoupled variables. Id. at 10:7–23.
Specifically, the first shading calculation uses a variable “hs,” which is not
used in the second shading calculation, and the second shading calculation
uses the variable “ex,” which is not used in the first shading calculation,
making the variables decoupled. Id.
The ’372 Patent claims priority as being a continuation-in-part of
patent application No. 09/640,505, filed August 16, 2000, now U.S. Patent
No. 6,593,923, and being a continuation-in-part of patent application No.
09/585,809 (“the ’809 Application”), filed May 31, 2000, now U.S. Patent
No. 6,532,013 (“the ’013 patent”). Id. at [63]; Ex. 1014 ¶ 31.

D. Illustrative Claim
Of the challenged claims, claims 1, 9, 10, 11, 19, 20, and 21 are
independent. Claim 1 is illustrative of the challenged claims and is
reproduced below:
1. A method for performing shading calculations in a graphics
pipeline, comprising:
performing a first shading calculation in order to generate
output;
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saving the output; and
performing a second shading calculation using the output in
order to generate further output;
wherein the first and second shading calculations together
include a plurality of decoupled variables.
Ex. 1001, 13:28–37 (emphasis added).

E. The Asserted Grounds of Unpatentability
Petitioner asserts that the challenged claims are unpatentable on the
following grounds (see Pet. 29–60):
Claims Challenged Basis Reference(s)
1, 3, 10, 11, 13, and 20–25 § 102(a) Kajiya1
1, 3, 10, 11, 13, and 20–25 § 103 Kajiya and Gossett2
1–6, 9–16, and 19–25 § 103 Kajiya and Woo3

II. ANALYSIS
A. Claim Construction
In an inter partes review, “[a] claim in an unexpired patent shall be
given its broadest reasonable construction in light of the specification of the
patent in which it appears.” 37 C.F.R. § 42.100(b). In determining the
broadest reasonable construction, claim terms generally carry their ordinary
and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007). Nonetheless, a patentee, acting as a lexicographer,

1 U.S. Patent No. 5,977,977 issued Nov. 2, 1999 (Ex. 1002, “Kajiya”).
2 U.S. Patent No. 6,236,413 B1 issued May 22, 2001 (Ex. 1003, “Gossett”).
3Mason Woo et al., OpenGL Programming Guide: The Official Guide to
Learning OpenGL Version 1.1 170–211 (2nd Ed. 1997) (Ex. 1004, “Woo”).
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may set forth an alternate definition of a term in the specification with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
Petitioner proffers claim constructions for several claim terms:
“shading calculation,” “decoupled variables,” “combiner module,” “shading
module,” and “feedback loop,” where the last is recited as being coupled
between and input and an output of the shading module. Pet. 16–18.
Petitioner also proffers whom it would consider to be a person of ordinary
skill in the art. Id. at 15–16. Patent Owner proposes a construction for the
claim term “feedback loop,” as well as a construction for the term “saving.”
Prelim. Resp. 6–8.
Upon review of the record, we determine that not all of the claim
terms argued by either party need be construed for purposes of this decision.
See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999) (“only those terms need be construed that are in controversy, and only
to the extent necessary to resolve the controversy”). Rather, we construe
only a single claim term, as discussed below.
1. “saving”
Claim 1 recites, in part, “saving the output” of a first shading
calculation, claims 9 and 10 recite, in part, “saving the output,” claims 11
and 19 recite, in part, “a code segment for saving the output,” and claims 21
recites in part, “logic for saving the output” of a first shading calculation. In
a related proceeding, we determined that the plain and ordinary meaning of
“save” is “to write data (typically a file) to a storage medium, such as a disk
or tape.” See Ex. 3001, 463 (see also IPR2015-01070, Paper 9). Consistent
with this ordinary meaning, the ’372 Patent discloses that the “saving” may
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be done using a storage device, namely using a First-in-First-Out (“FIFO”)
Buffer. Ex. 1001 7:1–7. The ’372 Patent also discloses that “the loopback
FIFO 407 may be utilized to hold barycentric weights, colors from previous
passes, triangle information, and additional scheduling information,” and
that the “FIFO 407 may include a plurality of bits that can be reconfigured to
store whatever piece of data is appropriate.” Id.
Although there are conceivably multiple way of “saving” output, our
review of the Specification of the ’372 Patent does not indicate a clear intent
to deviate from the plain and ordinary meaning of the term “saving.” As
such, we are persuaded, on this record, that the “saving” limitations recited
in the challenged claims are directed to “saving in a storage device” and
should be construed as such. Patent Owner has acceded to this construction,
and Petitioner provides no specific construction for this claim term. Prelim.
Resp. 6–7; Pet. 14–18.

B. Anticipation by Kajiya, Claims 1, 3, 10, 11, 13, and 20–25
Petitioner contends that claims 1, 3, 10, 11, 13, and 20–25 of the ’372
Patent are unpatentable under 35 U.S.C. § 102(a) as being anticipated by
Kajiya. Pet. 29–47. In support of its contentions, Petitioner relies on the
Declaration testimony of Dr. Donald Fussell (Ex. 1014). Petitioner contends
that Kajiya teaches all of the elements of the indicated claims. Pet. 29–47.
Petitioner focuses its analysis on claim 21, and contends that independent
claims 1 and 11 are substantially similar to claim 21, so as to require only
minimal analysis. Id. at 43, 45–46. Similarly, Petitioner’s analysis of
independent claim 10 is based largely on the analysis of claim 21, and the
analysis of claim 20 is based on the analysis of claim 10. Id. at 44–47.
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Patent Owner counters that (1) Kajiya fails to disclose “saving the
output,” as required by independent claims 1, 10, 11, 20, and 21; (2) Kajiya
fails to disclose “code segments,” as required by claims 11, 13, and 20; and
(3) Kajiya’s texture filter engine is not a texture look-up module, per claims
10, 20, and 23–25. Prelim. Resp. 18–26. Per the discussion below, we need
only consider Patent Owner’s first contention to determine the efficacy of
this ground of unpatentability.
1. Kajiya
Kajiya discloses a method for performing OpenGL shading
calculations within a graphics pipeline and the structure of such pipeline.
Ex. 1002, Abstract, 2:64–67, 19:33–35. Kajiya recognized that prior art
real-time graphics rendering systems did not adequately support advanced
lighting and shading functions, such that users who require real-time display
must put up with limited rendering flexibility. Id. at 4:49–56. Kajiya
discloses the use of “multi-pass” rendering with a variety of compositing
modes and a flexible shading language to provide rendering effects “such as
shadows (including shadows from multiple light sources), environment
mapped reflective objects, spot lights, ground fog, realistic underwater
simulation, etc.” Id. at 11:8–14.
Kajiya further discloses that Tiler 200 is “a VLSI chip which performs
scan-conversion, shading, texturing, hidden-surface removal, anti-aliasing,
translucency, shadowing, and blending for multi-pass rendering.” Id. at
13:43–46. In one embodiment of the Tiler, Scan Convert Engine 398, and
Pixel Engine 406 are circuitry that perform shading calculations, with the
Scan Convert Engine performing shading calculations on primitives received
from Set Up Block 383, and using texture information retrieved from the
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texture filter engine 403 in combination with the result of the primitive
calculations. Id. at 63:21–28, 64:48–51, 88:17–19, Fig. 9C. The Scan
Convert Engine generates a fragment color Cf and then generates additional
output by calculating Cc, a composed color value, by multiplying a texture
color Ct, which is retrieved from the Texture Filter Engine, by the fragment
color Cf. Id. at 19:20–29, 24:60–62, 63:5–24, 81:44–61. In addition, Kajiya
details a blending operation defined by the equation Cb´=cbCb+ccCc, where
the value Cb is the color value read from Pixel or Fragment Buffers 408 or
410, the value Cc is a new composed color value, values cb and cc are color
factor values that affect how the existing color value (Cb) and new composed
color value (Cc) are blended together, and Cb´ is the new value that is written
into the Pixel or Fragment Buffer. Id. at 81:45–57, 82:1–32.
2. Analysis
Petitioner ascribes the differing embodiments of Kajiya as
“Embodiment A,” that computes fragment color value Cf, and “Embodiment
B,” that computes composed color value Cc. Pet. 32–33. Patent Owner
disputes that Kajiya describes two alternate embodiments, and argues that
Embodiment B represents an inconsistent alternative argument. Prelim.
Resp. 17–18. Having considered both aspects of Kajiya, and determining,
based on the present record, that they fail to teach a specific claim element,
we need not decide if Kajiya discloses the two aspects as separate,
alternative embodiments.
With respect to claim element 21[b], namely “(b) logic for saving the
output,” Petitioner alleges that Kajiya discloses saving the output as required
by the equations discussed supra that determine Cc and Cb´. Pet. 33.
Petitioner continues that “[t]he value Cf is necessarily saved in the Scan
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Convert Engine 398, which is logic, so that it can be used in the second
shading calculation (discussed below) that requires both the Cf and Ct
values.” Id. at 33–34 (citing Ex. 1014 ¶ 97). Patent Owner counters that
there is no evidence that Kajiya necessarily saves Cf, as argued by Petitioner,
let alone in a storage device, because Cf could be passed directly, without
saving, to the logic for the equation. Prelim. Resp. 19–20. Patent Owner
continues that because Cf is both generated and used by the Scan Convert
Engine, there is no reason it must necessarily be saved. Id. at 20. We agree
with Patent Owner.
“To serve as an anticipation when the reference is silent about
the asserted inherent characteristic, such gap in the reference may
be filled with recourse to extrinsic evidence. Such evidence must
make clear that the missing descriptive matter is necessarily
present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill.
Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir.
1991); see also Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d
1376, 1381 (Fed. Cir. 2015) (“[A] reference can anticipate a claim even if it
‘d[oes] not expressly spell out’ all the limitations arranged or combined as in
the claim, if a person of skill in the art, reading the reference, would ‘at once
envisage’ the claimed arrangement or combination.” (citations omitted)).
In the instant case, we are persuaded that Cf could be reused without
saving in a storage device, i.e., directly passed without any saving, in the
context of Kajiya. Although the value could be saved, that is insufficient to
anticipate the claim limitation “(b) logic for saving the output,” based on the
applied claim construction. As discussed above, claims 1, 10, 11, and 20
also contain the same limitation, and those other independent claims cannot
be anticipated by the disclosure of Kajiya.
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With respect to Petitioner’s Embodiment B of Kajiya, we reach the
same conclusion. Petitioner argues that the first shading calculation (Cc) is
stored in the rasterization buffer for use in subsequent shading calculations,
and when there is no existing Cb, Cc is stored in the rasterization buffer for
use in future shading calculations as Cb. Pet. 34 (citing Ex. 1002, 82:30–31,
88:31–35; Ex. 1014 ¶¶ 98–99). Patent Owner, however, points out that Cc is
used directly in a subsequent equation, and that even on a first pass, where
Cb may be zero, Cb’= ccCc, such that Cb’, not Cc, is potentially stored.
Prelim. Resp. 30–32. We are persuaded, based on the present record, that
this other aspect of Kajiya does not necessarily disclose that the output is
saved, as recited in the challenged independent claims.
Lastly, we are not persuaded by Petitioner’s Declarant that Kajiya
anticipates claims 1, 10, 11, 20, and 21, specifically the saving the output
limitation in each. Because the Declarant’s testimony does not augment the
citations and discussion in the Petition, we are not persuaded that the saving
of output in Kajiya must necessarily occur. See Ex. 1014 ¶¶ 96–99.
3. Conclusion
Based on the foregoing, and on the arguments and evidence presented
in the Petition and Preliminary Response, Petitioner has not demonstrated a
reasonable likelihood that claims 1, 3, 10, 11, 13, and 20–25 are anticipated
by Kajiya.

C. Obviousness over Kajiya and Gossett, Claims 1, 3, 10, 11, 13, and
20–25
Petitioner contends that claims 1, 3, 10, 11, 13, and 20–25 of the ’372
Patent are unpatentable under 35 U.S.C. § 103 as being obvious over Kajiya
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and Gossett. Pet. 47–52. In support of its contentions, Petitioner relies on
the Declaration testimony of Dr. Donald Fussell (Ex. 1014). For the reasons
that follow, we determine Petitioner has not demonstrated a reasonable
likelihood of prevailing as to claims 1, 3, 10, 11, 13, and 20–25 of the ’372
Patent as obvious over Kajiya and Gossett.
1. Gossett
Gossett discloses a computer system with a “graphics processing
subsystem” that is “deeply pipelined to achieve high bandwidth, and is
operable for processing graphics data including a first and second set of
graphics instructions.” Ex. 1003, Abs. The graphics system “includes a
built-in recirculation path for enabling the execution of graphics instructions
by multi-pass.” Id.
Gossett discloses (a) texture environment unit 203 that performs
multi-pass shading; (b) texture address unit 201 and texture filter unit 202
for retrieving texture information; (c) recirculation pipes 210–213 that
“enable the intermediate results of complex operations to be fed back for
additional processing;” and (d) lighting environment unit 205 that combines
the output of the shader with other graphics data. Id. at 3:11–13, 8:17–23,
52–54, 9:33–35, Fig. 2.
2. Analysis
Petitioner proffers this specific ground “to the extent that Patent
Owner may incorrectly argue that Embodiment A fails to disclose the step
of, logic for, or code for saving the output of the first calculation, the
foregoing feedback loop [of Gossett] satisfies these requirements.” Pet. 47.
Petitioner continues that both Kajiya and Gossett relate to the same subject
matter, with Kajiya appearing on the face of Gossett, and that one of
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ordinary skill in the art would have had reason to combine the recirculation
pipes of Gossett with Kajiya to achieve a predictable improvement in
performance along with the benefits of feedback described in Kajiya. Id. at
47–51. Patent Owner counters that “[b]ecause neither Kajiya nor Gossett
expressly or inherently disclose the saving limitation . . . the combination of
Kajiya and Gossett cannot render obvious any of the challenged claims.”
Prelim. Resp. 27.
We have found previously that the recirculation of data within Gossett
is not necessarily equivalent to “saving,” per the challenged claims, or that
indefinite recirculation necessarily requires storage in a storage medium or
device. See IPR2015-01070, Paper 9, 10. The evidence presented in this
proceeding does not persuade us that this previous interpretation was
incorrect or provide a reason to deviate from that conclusion. Thus, even if
we determined that one of ordinary skill in the art would have had reason to
combine the recirculation pipes of Gossett with Kajiya, it is not clear that
such ordinarily skilled artisans would have saved output, per the claim
limitations, given that neither Gossett nor Kajiya explicitly discloses the
same. Because the Petition assumes that both Gossett and Kajiya disclose
saving, the Petition does not provide any specific arguments why the
combination would have necessarily utilized the saving of output, as recited
by the challenged, independent claims.
Petitioner’s Declarant, Dr. Fussell, makes similar arguments made in
the Petition and testifies that “to save the output of the first shading
calculation for its use in the second shading calculation would have been
obvious.” Ex. 1010 ¶ 167. This testimony, however, is conclusory, and
must be weighed against the disclosure of Gossett, which warns against
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using unnecessary hardware that could slow down operations. Ex. 1003,
2:52–54, 7:32–35. Therefore, the combination of Gossett and Kajiya could
have provided a system that allowed for recirculation of values from a first
shading calculation, but that would not necessarily result in the saving of
that input. Although the saving of such output could have been obvious in
view of Gossett and Kajiya, the Petition does not provide support for such a
proposition. See 37 C.F.R. § 42.108(c).
3. Conclusion
Based on the foregoing, and on the arguments and evidence presented
in the Petition and Preliminary Response, Petitioner has not demonstrated a
reasonable likelihood that claims 1, 3, 10, 11, 13, and 20–25 are obvious
over Kajiya and Gossett.

D. Obviousness over Kajiya and Woo, Claims 1–6, 9–16, and 19–25
Petitioner contends that claims 1–6, 9–16, and 19–25 of the ’372
Patent are unpatentable under 35 U.S.C. § 103 as being obvious over Kajiya
and Woo. Pet. 53–60. Petitioner asserts that a person of ordinary skill in the
art would have known the teachings of Woo were relevant to the teachings
of Kajiya, and would have used the algorithms of Woo in the graphics
system of Kajiya. Id. at 53.
Petitioner does not assert, however, that Woo cures the deficiencies of
Kajiya with respect to the independent claims, as discussed above, or that
those deficiencies would be cured though an obvious combination of Kajiya
and Woo. As such, this latter ground is insufficient for the same reasons
discussed above with respect to the anticipation ground over Kajiya alone.
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As such, Petitioner has not demonstrated a reasonable likelihood that claims
1–6, 9–16, and 19–25 are obvious over Kajiya and Woo.

III. SUMMARY
For the foregoing reasons, we conclude that Petitioner has not
demonstrated a reasonable likelihood that at least one challenged claim is
unpatentable based on the asserted grounds. We, therefore, do not institute
an inter partes review on any of the asserted grounds as to any of the
challenged claims.

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied.
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PETITIONER:
Richard Zembek
R. Ross Viguet
Nathan Rees
Daniel Prati
NORTON ROSE FULBRIGHT US LLP
nvidia-qc-ipr@nortonrosefulbright.com
richard.zembek@nortonrosefulbright.com
ross.viguet@nortonrosefulbright.com
nate.rees@nortonrosefulbright.com

PATENT OWNER:
Richard F. Martinelli
Don Daybell
ORRICK, HERRINGTON & SUTCLIFFE LLP
RFMPTABDocket@orrick.com
D2DPTABDocket@orrick.com