Intel Corp v. Acqis LLC

1. Case Identification

• Case #: IPR2021-01093
• Patent #: 8,626,977
• Filed: July 1, 2021
• Petitioner(s): Intel Corporation
• Patent Owner(s): Acqis LLC
• Challenged Claims: 1-17

2. Patent Overview

• Title: Computer System with Attached Computer Module
• Brief Description: The ’977 patent discloses a computer system architecture featuring a removable Attached Computer Module (ACM) and a peripheral console. The ACM contains core computing components like the CPU and graphics subsystem, while the console houses peripherals and provides connectivity.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chu330 and Cupps - Claims 1-17 are obvious over Chu330 in view of Cupps.

• Prior Art Relied Upon: Chu330 (Patent 6,345,330) and Cupps (Application # 2003/0135771).
• Core Argument for this Ground: Petitioner asserted that Chu330 discloses a modular computer system nearly identical to that claimed in the ’977 patent but lacks the specific limitation of integrating the CPU and graphics subsystem into a single chip. Petitioner contended that Cupps explicitly teaches the benefits of such integration. A person of ordinary skill in the art (POSITA) would have been motivated to apply the single-chip integration taught by Cupps to the system of Chu330 to achieve predictable benefits, such as improved power efficiency and performance, thereby rendering all challenged claims obvious.
  • Prior Art Mapping: Petitioner argued that Chu330 teaches a computer with a removable module (ACM) and a peripheral console (PCON) connected by an interface that includes a Low Voltage Differential Signal (LVDS) channel for transmitting encoded Peripheral Component Interconnect (PCI) bus transactions. Chu330 discloses a CPU and a separate graphics subsystem within its ACM. Cupps was cited for its teaching of combining the functionality of processors (like a CPU) and controllers (like a graphics controller) onto a single integrated circuit. Petitioner contended that implementing Cupps’s single-chip integration in Chu330’s ACM would result in a system where the LVDS channel "directly extends" from the newly integrated CPU/graphics single chip, thereby meeting the key limitations of the challenged claims. Dependent claims were argued to be obvious as they recite additional features also found in the prior art, such as the use of a connector, mass storage devices, and displays.
  • Motivation to Combine: Petitioner identified two primary motivations for a POSITA to combine the teachings. First, Chu330 emphasizes the desirability of low power consumption, and Cupps explicitly teaches that integrating components into a single chip improves power efficiency and conservation. Second, Cupps teaches that such integration yields other well-known benefits like increased performance, management efficiencies, and a smaller physical footprint, all of which would have been desirable improvements to the Chu330 system.
  • Expectation of Success: Petitioner asserted that a POSITA would have had a reasonable expectation of success. The argument was based on the fact that the components in Chu330’s ACM (CPU, graphics subsystem, host interface controller) are substantially similar to the components that Cupps teaches are well-known to integrate. The combination would have amounted to applying a known integration technique to a known type of system to yield predictable, advantageous results.

4. Key Technical Contentions (Beyond Claim Construction)

• Invalid Priority Claim: A central contention of the petition is that the ’977 patent is not entitled to a priority date before April 15, 2011. Petitioner argued that the key claim limitations requiring an "integrated CPU/graphics" subsystem in a single chip and an LVDS channel "directly extending" therefrom were first introduced in a parent application (the ’436 patent). This introduction was allegedly based on an improper incorporation by reference of the ’886 provisional application. Petitioner asserted that the priority chain was broken because the host document (which later issued as the Chu330 patent) only claimed priority to, but did not properly incorporate by reference, the ’886 provisional. This later priority date is critical because it makes Cupps (published in 2003) available as prior art against the challenged claims.

5. Arguments Regarding Discretionary Denial

• Arguments against §325(d) Denial: Petitioner argued that denial based on the prosecution history would be improper. Although Chu330 was listed in an Information Disclosure Statement, it was never substantively considered or cited by the examiner against any claims of the ’977 patent or its related applications. Furthermore, Petitioner contended the examiner materially erred by not determining the correct priority date for the challenged claims, and therefore never considered references like Cupps, which teach the improperly added new matter.
• Arguments against Discretionary Denial under Fintiv: Petitioner argued that the Fintiv factors weigh in favor of institution. The petition highlighted that the Petitioner, Intel Corporation, is not a defendant in the parallel district court litigations involving the ’977 patent. While certain real-parties-in-interest are defendants, Petitioner argued that the litigation is in its early stages, with trial estimated to be 18 months post-petition filing. The petition also noted that the challenged claims only partially overlap with the asserted claims in litigation and that the relevant parties are willing to stipulate not to advance the same invalidity grounds in district court, mitigating concerns of duplicative efforts.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-17 of the ’977 patent as unpatentable under 35 U.S.C. §103.