Intel Corp v. Acqis LLC

1. Case Identification

• Case #: IPR2021-01102
• Patent #: U.S. Reissue Patent No. 44,739
• Filed: July 1, 2021
• Petitioner(s): Intel Corporation
• Patent Owner(s): Acqis LLC
• Challenged Claims: 14-36

2. Patent Overview

• Title: Computer System with Attached Computer Module and Peripheral Console
• Brief Description: The ’739 patent describes a modular computer architecture consisting of a removable Attached Computer Module (ACM) and a Peripheral Console (PCON). The ACM contains core processing components (CPU, memory, graphics), while the PCON provides peripheral support, with communication between the two occurring over a high-speed interface.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chu330 and Cupps - Claims 14-36 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, which is part of the same patent family as the ’739 patent, discloses nearly all elements of the challenged claims, including a modular computer with an ACM, a PCON, and an interface using Low Voltage Differential Signal (LVDS) channels. However, Petitioner contended that Chu330 does not explicitly disclose the key limitations of an "integrated CPU and graphics controller in a single chip" that is "directly connected" to an LVDS channel. To supply this missing element, Petitioner pointed to Cupps, which teaches the benefits of integrating different processors and controllers, including CPU and graphics functionalities, onto a single integrated circuit. Cupps explicitly discloses a "Dual Core Processor" that combines these components onto a single die. Petitioner argued that applying the single-chip integration taught by Cupps to the modular system of Chu330 would result in the architecture claimed in the ’739 patent.
  • Motivation to Combine (for §103 grounds): Petitioner asserted that a person of ordinary skill in the art (POSITA) would combine Chu330 and Cupps for several reasons. First, Chu330 emphasizes the desirability of low power consumption, and Cupps explicitly teaches that integrating components onto a single chip improves power efficiency and conservation. Second, Cupps describes other well-known benefits of integration that would have been desirable for the Chu330 system, including increased performance, reduced device chip count, and a smaller physical footprint.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in this combination because the components in Chu330’s ACM (CPU, graphics subsystem, host interface controller) are substantially similar to the types of components that Cupps teaches were well-known to integrate onto a single chip.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: A central contention of the petition is that the ’739 patent is not entitled to a priority date earlier than June 17, 2011. Petitioner argued that the limitations central to the challenge—the "integrated CPU/graphics" and "CPU-LVDS" features—were first introduced as new matter into a related application (for Patent RE42,984) on that date. Petitioner asserted that the parent applications preceding this date lacked written description support for these features and failed to properly incorporate by reference the provisional application (’886 Provisional) where the subject matter allegedly originated. This argument, if successful, establishes that Chu330 (2002) and Cupps (2003) are valid prior art references against the challenged claims under 35 U.S.C. §102(b).

5. Arguments Regarding Discretionary Denial

• §325(d) - Prosecution History: Petitioner argued that discretionary denial under §325(d) would be improper. Although Chu330 was listed in an Information Disclosure Statement, it was never cited by the Examiner against any claims of the ’739 patent or its related applications. Therefore, the Examiner never considered the specific obviousness combination presented in the petition. Furthermore, Petitioner argued the Examiner materially erred by accepting the applicant's claimed priority date without proper scrutiny, failing to recognize the introduction of new matter.
• §314(a) - Fintiv Factors: Petitioner argued that the factors from Apple Inc. v. Fintiv, Inc. weigh in favor of institution. Petitioner is not a party to the parallel district court litigations involving the ’739 patent, a fact that strongly favors institution. For the real parties-in-interest (RPIs) who are defendants, Petitioner noted the litigation was in its early stages, with trial scheduled for approximately 18 months after the petition filing, aligning closely with the potential Final Written Decision (FWD) date. Crucially, Petitioner stated the RPIs are willing to stipulate not to pursue the same invalidity grounds in the district court if the IPR is instituted, mitigating concerns of duplicative efforts.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 14-36 of Patent RE44,739 as unpatentable.