Takeaway: If a Petitioner’s argument that a claim is anticipated by a prior art reference relies on elements from two distinct embodiments in the prior art reference, the Petitioner must explain how the elements can be combined to disclose prior invention of the challenged claims.

In its Decision, the Board concluded that Petitioner had not shown by a preponderance of the evidence that claims 9, 10, and 13-17 of U.S. Pat. No. 6,889,332 are unpatentable, and denied its petition for inter partes review. The ’332 patent relates to power management of computer systems. The Board began with claim construction, determining that, for the purposes of its decision, it did not need to provide an express construction for any of the claim terms. The Board then turned to the proposed grounds of unpatentability.

First, it considered whether claims 9, 10, and 13-17 are anticipated by Dischler. The Board concluded that “Dischler associates a single temperature with a single CPU frequency, a single voltage, and a single fan setting, but does not disclose a plurality of performance operating states for each current temperature or temperature range, as required by [independent] claims 9, 15, and 17.” In addition, the Board rejected Petitioner’s argument that Discherl anticipates the claims on the grounds that the argument “improperly relies on two different embodiments” without explaining “how elements from . . . two distinctly different embodiments can be combined to disclose prior invention of the challenged independent claims.” Next, the Board considered whether claims 9, 10, and 13-16 are anticipated by, and whether claims 13 and 17 are obvious over, Lee. The Board agreed with Patent Owner that claims 9 and 15 required more than two performance states (or performance operating states) and was not persuaded that Lee disclosed more than two such states. The Board then considered whether claims 9, 10, and 13-16 are anticipated by, and whether claim 17 is obvious over, Bhatia. The Board concluded that Petitioner had not shown how the “performance states” identified in a table in its petition correspond to “detected temperature(s) or “temperature ranges,” as required by claims 9 and 15. It also determined that “Bhatia is directed to varying a processor’s performance state in relation to a target temperature” and that Petitioner did “not explain sufficiently how this disclosure anticipates the challenged claims.” The Board then rejected Petitioner’s argument concerning claim 17, stating that it relied on the anticipation claim chart for claim 9.

Accordingly, the Board determined that Petitioner did not show a reasonable likelihood that it would prevail on any of its challenges to claims 9, 10, [13, and] 14-17 of the ’332 patent and denied the petition.

LG Electronics, Inc. v. Advanced Micro Devices, Inc., IPR2015-00323

Paper 13: Decision Denying Institution of Inter Partes Review

Dated: June 17, 2015

Patent: 6,889,332 B1

Before: Joni Y. Chang, Rama G. Elluru, and James B. Arpin

Written by: Elluru

Related Proceedings: Advanced Micro Devices, Inc., et al. v. LG Electronics, Inc. etal., Case No.3:14-cv-01012-SI (N.D. Cal.)