Intel Corp v. Acqis LLC

1. Case Identification

• Case #: IPR2021-01094
• Patent #: 8,756,359
• Filed: July 2, 2021
• Petitioner(s): Intel Corporation
• Patent Owner(s): Acqis LLC
• Challenged Claims: 1-9, 17-21

2. Patent Overview

• Title: Not explicitly titled in petition; relates to modular computer systems.
• Brief Description: The ’359 patent describes a computer system architecture featuring a removable Attached Computer Module (ACM) that can be inserted into a Peripheral Console (PCON). The ACM contains core processing components (CPU, graphics, memory), while the PCON provides peripheral support and connectivity.

3. Grounds for Unpatentability

Ground 1: Claims 1-9 and 17-21 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:
  • Prior Art Mapping: Petitioner argued that Chu330 discloses a modular computer system nearly identical to that of the ’359 patent, including an ACM, a PCON, and a high-speed communication interface (XPBus) using Low Voltage Differential Signal (LVDS) channels. Chu330 teaches an ACM with a CPU, graphics subsystem, and host interface controller as separate components. The key limitations of the challenged claims, an "integrated central processing unit and graphics subsystem in a single chip" with an LVDS channel "directly extending" from it, are not explicitly taught by Chu330. Petitioner contended that Cupps remedies this deficiency by teaching the integration of various processors and controllers (including CPU, graphics, and I/O controllers) onto a single integrated circuit to achieve well-known benefits. Combining these teachings, Petitioner asserted, renders the challenged claims obvious. For example, claim 1 requires an integrated CPU/graphics subsystem; Chu330 provides the base system, and Cupps provides the teaching to integrate the CPU and graphics onto a single chip.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Cupps's single-chip integration with Chu330's modular system to achieve predictable benefits explicitly taught by Cupps. These benefits included improved power efficiency, which Chu330 itself identifies as a design goal, as well as increased performance and a smaller physical footprint. The combination involved applying a known integration technique (from Cupps) to a known system (Chu330) to yield predictable results.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because the components described in Chu330 (CPU, graphics subsystem, interface controller) were substantially similar to the components (processor, graphics controller, I/O controller) that Cupps taught could be successfully integrated onto a single die.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: A central contention was that the ’359 patent is not entitled to its claimed priority date earlier than April 15, 2011, the filing date of the intervening ’436 patent. Petitioner argued that the critical claim limitations—an "integrated CPU/graphics" subsystem and a "CPU-LVDS" channel directly connected to it—were first introduced into the patent family in the ’436 patent's application. Petitioner asserted this disclosure constituted new matter because the parent applications failed to properly incorporate by reference the ’886 Provisional application, which allegedly contained the original disclosure for this subject matter. This later priority date is crucial, as it establishes Chu330 and Cupps as valid prior art references against the challenged claims.

5. Arguments Regarding Discretionary Denial

• §325(d) - Prosecution History: Petitioner argued that denial under §325(d) was inappropriate. Although Chu330 was listed on an Information Disclosure Statement during prosecution, the Examiner never cited it against any claims or substantively considered its teachings. More importantly, Petitioner contended the Examiner materially erred by not determining the correct priority date of the challenged claims and by accepting the applicant's representation that new matter from the ’886 Provisional was properly incorporated. This alleged error prevented consideration of references like Cupps, which pre-date the introduction of the new matter but post-date the original priority applications.
• §314(a) - Fintiv Factors: Petitioner argued the Fintiv factors weighed against discretionary denial.
  • Petitioner Intel Corporation is not a defendant in the parallel district court litigations involving the ’359 patent, which weighs strongly against denial.
  • The parallel cases involving the Real Parties-in-Interest (RPIs) were in early stages, with infringement contentions recently served and discovery largely stayed pending claim construction.
  • The trial date in the parallel litigation was estimated to be approximately 18 months after the petition filing, occurring around the same time as a potential Final Written Decision (FWD), which weighs against denial.
  • The RPIs were willing to stipulate not to pursue the same invalidity grounds in district court if the IPR was instituted, mitigating concerns of duplicative efforts.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-9 and 17-21 of the ’359 patent as unpatentable under 35 U.S.C. §103.