Intel Corp v. Acqis LLC

1. Case Identification

• Case #: IPR2021-01103
• Patent #: Reissue Patent 45,140
• Filed: June 25, 2021
• Petitioner(s): Intel Corporation
• Patent Owner(s): Acqis LLC
• Challenged Claims: 14-38

2. Patent Overview

• Title: Computer System with Attached Computer Module and Peripheral Console
• Brief Description: The ’140 patent discloses a computer system comprising a removable Attached Computer Module (ACM) and a Peripheral Console (PCON). The ACM contains core components like a CPU and graphics subsystem, while the PCON provides peripheral support and connectivity, with the two units interfacing via a specialized bus system.

3. Grounds for Unpatentability

Ground 1: Claims 14-38 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 asserted that Chu330 discloses a modular computer system with an ACM and a PCON that is substantively identical to the architecture of the ’140 patent. Chu330 was argued to teach nearly every claimed element, including the use of a connector and Low-Voltage Differential Signaling (LVDS) channels for communication between the modules. Petitioner argued that the only material difference is that Chu330 does not explicitly teach integrating the Central Processing Unit (CPU), graphics controller, and host interface controller onto a single chip. Cupps was cited to remedy this, as it expressly teaches the benefits of integrating these exact types of components into a single integrated circuit processor. Petitioner systematically mapped how the combination meets limitations in independent claims 14, 18, 22, 26, 30, and 35, and further argued that Chu330 alone teaches the additional limitations of most dependent claims, such as conveying Universal Serial Bus (USB) protocol information (claim 15) or encoded Peripheral Component Interconnect (PCI) bus transactions (claim 16) over the LVDS channel.
  • Motivation to Combine (for §103 grounds): A Person of Ordinary Skill in the Art (POSITA) would combine Chu330 and Cupps to achieve predictable improvements. Chu330 itself emphasizes design goals like low power consumption. Cupps explicitly teaches that single-chip integration of processors and controllers achieves multiple well-known benefits, including improved power efficiency, reduced component redundancy, better thermal management, increased performance, and a smaller physical footprint. A POSITA would have been motivated to apply the known integration techniques from Cupps to the system in Chu330 to realize these well-understood and predictable results.
  • Expectation of Success (for §103 grounds): Petitioner contended that a POSITA would have a high expectation of success, as the components described in Chu330’s ACM are analogous to the components that Cupps teaches are commonly integrated, making the process a well-known design choice rather than one requiring undue experimentation.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner's primary technical contention was that the ’140 patent is not entitled to a priority date earlier than June 17, 2011. It argued that the key limitations central to the challenged claims—an "integrated CPU/graphics" controller in a "single chip" and a direct "CPU-LVDS" connection—constituted new matter first introduced into the patent family on that date in the application for Reissue Patent 42,984. The petition detailed how the parent applications in the priority chain failed to properly incorporate by reference the ’886 Provisional application, which allegedly disclosed this subject matter. Specifically, Petitioner argued that a parent patent merely claimed priority to the provisional, which is legally distinct from incorporating its substance by reference, and that a checked box on a transmittal form was insufficient to meet the "detailed particularity" requirement for incorporation. This priority date challenge was foundational to establishing Chu330 (2002) and Cupps (2003) as valid prior art.

5. Arguments Regarding Discretionary Denial

• §325(d) Prosecution History: Petitioner argued against denial under 35 U.S.C. §325(d), stating that although Chu330 was before the Examiner in an Information Disclosure Statement, it was never substantively applied against any claims. Crucially, the Examiner never challenged the ’140 patent’s priority claim and thus never considered the combination with references like Cupps, which are material to the patentability of the new matter allegedly added in 2011.
• §314(a) Fintiv Factors: Petitioner argued that discretionary denial under Fintiv would be inappropriate. As Petitioner Intel is not a party to the parallel district court litigations, it cannot move for a stay. Furthermore, the litigation was in its early stages, with a trial date set for approximately 18 months post-petition, likely after a Final Written Decision (FWD) would issue. Petitioner also noted that the Real Parties-in-Interest (RPIs) who are defendants were willing to stipulate not to advance the same invalidity grounds in court, mitigating concerns of duplicative efforts and conflicting decisions.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 14-38 of Reissue Patent 45,140 as unpatentable under 35 U.S.C. §103.