Docket No. 2017-1855 (IPR2015-01524)
REYNA, BRYSON, HUGHES
June 27, 2018
Brief summary: Board IPR FWD finding Elbrus’s claims obvious affirmed (e.g., no teaching away as “nothing in Sukegawa discourages precharging”).
Summary: Elbrus appealed Board IPR final written decision (FWD) finding certain claims of US 6,366,130 regarding a “metal-oxide semiconductor…data transfer arrangement” invalid for obviousness. Elbrus first argued “that the Board adopted an erroneous construction of the claim term ‘bus’ as ‘one or more conductors that are used for the transmission of signals, data, or power’”, and that it should be defined as “a common path along which power or signals travel from one or several sources to one or several destinations”. The FC panel opinion explained that “[t]he meaning of the term ‘bus’ bears on whether Samsung’s lead prior art reference…’Sukegawa’, discloses a ‘differential data bus,’ as recited in claim 1.” The Board concluded that Sukegawa discloses the claimed “‘differential data bus’ under both Samsung’s and Elbrus’s proposed constructions” (e.g., “the portion of figure 1 identified by Samsung satisfies Elbrus’s construction of ‘bus’”). The FC panel found “no error in the Board’s analysis”, noting that, e.g., “the Board cited testimony from both Samsung’s and Elbrus’s experts”, and therefore affirmed the Board’s construction. Elbrus also argued that the Board erred in its obviousness conclusion because “Sukegawa teaches away from precharging the bus to half the supply voltage” as taught in the other cited reference (“Lu”), and that the combination of Sukegawa and Lu “would lead to an inoperable circuit absent significant additional design work”. The FC panel reviewed the Board’s conclusion that Sukegawa does not teach away (a question of fact) for substantial evidence, and explained that “[a] reference ‘that ‘merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into’ the claim invention does not teach away” (Meiresonne, FC 2017; Galderma Labs., FC 2013). The FC panel concluded “that substantial evidence supports the Board’s factfinding” since, e.g., “nothing in Sukegawa discourages precharging” and Elron’s counsel could not explain why Sukegawa “charged to Vdd as opposed to some intermediate charge” (e.g., stating “we can only infer that he must have had a reason”; In re Haase, FC 2013 (“a particular reference’s mere silence about a particular feature does not tend to teach away from it”); FN1: In re Urbanski, FC 2016 (“[i]f references taken in combination would produce a seemingly inoperative device…such reference teaches away” but the Board rejected Elbrus’s inoperative device argument)). Regarding Elbrus’s inoperative device argument, the FC panel explained that “it is not necessary that [Sukegawa and Lu] be physically combinable to render [a claim] obvious” (Allied Erecting, FC 2016 (“‘[t]he test…is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference’, but rather whether ‘a skilled artisan would have been motivated to combine the teachings”) (citing In Keller, CCPA 1981 and Pfizer, FC 2007)). And the FC panel found “the Board’s conclusion” (based the Board’s “weighing of the expert evidence”) that any operability hurdles…would be overcome by a person of ordinary skill” to be supported by substantial evidence. The FC panel also concluded that substantial evidence supported the Board’s conclusion that the inclusion of a third reference (“Hardee”) rendered claim 7 invalid for obviousness (e.g., “the mere possibility of having to boost voltages above Vdd does not detract from the aforementioned advantages associated with modifying Sukegawa in view of Hardee’s teachings”).