Intel Corp v. Acqis LLC

1. Case Identification

• Case #: IPR2021-01113
• Patent #: RE44,654
• Filed: June 29, 2021
• Petitioner(s): Intel Corporation
• Patent Owner(s): Acqis LLC
• Challenged Claims: 14-16, 20-25

2. Patent Overview

• Title: Computer System with Attached Computer Module and Peripheral Console
• Brief Description: The ’654 patent discloses a modular computer architecture comprising a detachable Attached Computer Module (ACM), which contains core processing components, and a Peripheral Console (PCON) that provides I/O and other peripheral support. The two components connect via a high-speed serial bus interface.

3. Grounds for Unpatentability

Ground 1: Claims 14-16 and 23-24 are obvious over Chu330, Peleg, and Helms

• Prior Art Relied Upon: Chu330 (Patent 6,345,330), Peleg (Patent 6,557,065), and Helms (Patent 7,146,510).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chu330, a parent of the ’654 patent, discloses the foundational modular computer system with an ACM and PCON connected by a high-speed, low-pin-count LVDS channel (XPBus) to replace bulky prior art connectors. Petitioner contended that Peleg teaches a more advanced architecture where the CPU, graphics processor, and Northbridge are integrated onto a single chip, and this integrated CPU connects directly to a Southbridge chip. Finally, Helms was cited for its disclosure of an I/O hub that combines the functionality of a Southbridge and an interface controller, communicating via two sets of unidirectional, differential signal lines.
  • Motivation to Combine: A POSITA would combine Peleg's highly integrated CPU architecture with Chu330's modular notebook-and-docking-station design to achieve the predictable benefits of high performance and portability in a single system. It would have been a simple substitution of one known computer architecture for another. A POSITA would then be motivated to further integrate the Southbridge and interface controller of the combined system using the teachings of Helms to reduce component count, improve power efficiency, and simplify the design, as Helms's I/O hub performs the necessary functions and uses a similar LVDS interface.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the components and architectures in all three references were common in computer design and their combination involved applying known techniques to achieve predictable results.

Ground 2: Claims 20-21 are obvious over Chu330 and Cupps

• Prior Art Relied Upon: Chu330 (Patent 6,345,330) and Cupps (Application # 2003/0135771).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground focused on the limitation of providing an "integrated Central Processing Unit (CPU) and graphics controller on a printed circuit board." Petitioner asserted that while Chu330 discloses a CPU and a graphics subsystem as separate components in its ACM, Cupps explicitly teaches the benefits of integrating multiple processor cores and controllers, including CPU and graphics controller functions, onto a single integrated circuit. Cupps explains that such integration reduces redundancy, improves power efficiency, and increases performance.
  • Motivation to Combine: A POSITA would have been motivated to apply the well-known integration techniques taught by Cupps to the components within Chu330’s ACM. The motivations were to achieve the known benefits of integration—specifically, lower power consumption (a stated goal of Chu330) and a smaller physical footprint—within Chu330’s modular architecture. This combination represented the application of a known technique to a similar system to yield predictable results.
  • Expectation of Success: Success was expected because the components in Chu330's ACM (CPU, graphics, interface controller) were analogous to the components Cupps teaches integrating. The process of integrating processor and controller functions onto a single chip was a well-established trend in the art.

• Additional Grounds: Petitioner asserted additional obviousness challenges adding Chu777 (Patent 6,643,777) to the primary combinations. These grounds argued Chu777’s disclosure of a "plug and play" operation for coupling an ACM to a console rendered obvious the dependent claims requiring conveyance of USB protocol data upon such a coupling.

4. Key Claim Construction Positions

• "peripheral bridge": Petitioner argued this term, central to claims requiring a direct CPU connection to it, should be construed as "a southbridge that interfaces with a peripheral bus or device." Petitioner contended that while the ’654 patent itself uses the term ambiguously, a patent it incorporates by reference (Chu185, Patent 6,216,185) clearly labels the corresponding component as a "South Bridge" and distinguishes it from the "CPU Bridge" or "North Bridge." This construction was argued as critical to prevent the claim from encompassing a Northbridge, which would be inconsistent with the specification.

5. Key Technical Contentions (Beyond Claim Construction)

• Claims Not Entitled to Earlier Priority Date: A central contention was that the challenged claims were not entitled to a priority date before June 17, 2011. Petitioner alleged that the key limitations of an "integrated CPU/graphics" controller and a direct "CPU-to-peripheral bridge" connection were new matter added for the first time in an ancestor reissue patent (RE984). Petitioner argued that the parent applications preceding RE984 lacked written description support for these features. Furthermore, Petitioner contended that the Patent Owner’s attempt to incorporate by reference the ’886 Provisional (which allegedly contained this subject matter) into the priority chain was legally defective, as the host documents failed to identify the provisional with the required specificity. This argument, if successful, would make references like Cupps and Peleg prior art to the challenged claims.

6. Arguments Regarding Discretionary Denial

• §325(d) - Same or Substantially Same Art/Arguments: Petitioner argued against discretionary denial, asserting that although some references were before the Examiner, the core prior art (Chu330) and the specific invalidity arguments based on it were never previously considered. Moreover, Petitioner claimed the Examiner never properly considered the priority date issue, which is central to the petition, and thus could not have considered the same arguments.
• Fintiv - Parallel Litigation: Petitioner argued against discretionary denial under Fintiv, emphasizing that the Petitioner (Intel) is not a defendant in the parallel district court litigation involving the ’654 patent. While some of its real-parties-in-interest are defendants, Petitioner argued that their trial date was approximately 18 months away, the litigation was in its very early stages (e.g., discovery stayed until Markman), and any investment in the litigation was minimal. These factors were argued to weigh heavily in favor of institution.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 14-16 and 20-25 of Patent RE44,654 as unpatentable.