Redstone Logics LLC v. Qualcomm Inc. — Entry #62: Opposed MOTION to Stay Case Pending the Ex Parte Reexamination by Qualcomm Inc., Qualcomm Technologies, Inc

Case 7:24-cv-00231-ADA Document 62-3 Filed 06/04/26 Pageiof21

EXHIBIT 1


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GER “Geireo STATES PATENT AND TAMAR Srrice
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address) COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www uspto.gov
| APPLICATION NO. | FILING DATE FIRST NAMED INVENTOR | ATTORNEY DOCKET NO. CONFIRMATION NO.
90/015,761 12/09/2025 8549339 0440101IRX1 4243
25700 7590 03/06/2026 | EXAMINER
FARJAMI & FARJAMI LLP
26522 LA ALAMEDA AVENUE, SUITE 360 CAMPBELL, JOSHUA D

MISSION VIEJO, CA 92691

| ART UNIT | PAPER NUMBER
3992
| MAIL DATE | DELIVER Y MODE
03/06/2026 PAPER

Please find below and/or attached an Office communication concerning this application or proceeding.

The time period for reply, if any, 1s set in the attached communication.

PTOL-90A (Rev. 04/07)


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UNITED STATES PATENT AND TRADEMARK OFFICE

Commissioner for Patents

United States Patent and Trademark Office
P.O. Box 1450

Alexandria, VA 22313-1450

www.uspto.gov

DO NOT USE IN PALM PRINTER

(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)

DLA PIPER LLP US - Reston
ATTN: PATENT GROUP
11911 FREEDOM DR.
SUITE 300

RESTON, VA 20190

EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM

REEXAMINATION CONTROL NO. 90/015, 767 .
PATENT UNDER REEXAMINATION 8549339.

ART UNIT 3992.

Enclosed is a copy of the latest communication from the United States Patent and Trademark
Office in the above identified ex parfe reexamination proceeding (37 CFR 1.550(f)).

Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
reply has passed, no submission on behalf of the ex arfe reexamination requester will be
acknowledged or considered (37 CFR 1.550(g)).

PTOL-465 (Rev.07-04)


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Control No. Patent Under Reexamination
. 90/015,761 8549339
Order Granting Request For
Ex Parte Reexamination Examiner Art Unit | AIA (FITF) Status
JOSHUA D CAMPBELL 3992 No

--The MAILING DATE of this communication appears on the cover sheet with the correspondence address--

The request for ex parte reexamination filed 09 December 2025 has been considered and a determination
has been made. An identification of the claims, the references relied upon, and the rationale supporting the
determination are attached.

Attachments: a)(] PTO-892, b)¥i PTO/SB/08, c)C) Other:

1. The request for ex parte reexamination is GRANTED.

RESPONSE TIMES ARE SET AS FOLLOWS:

For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).

For Requester’s Reply (optional): TVO MONTHS from the date of service of any timely filed
Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.

lf Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
is permitted.

¥JOSHUA D CAMPBELL/
Primary Examiner, Art Unit 3992

cc:Requester ( if third party requester }

U.S. Patent and Trademark Office
PTOL-471G(Rev. 01-13) Office Action in Ex Parte Reexamination Part of Paper No. 20251218


Application/Control Number: 90/015,761 Page 2
Art Unit: 3992

Decision on Request
1. A substantial new question (SNQ) of patentability affecting claims 1-5, 8-11, 14, and 21 of

United States Patent Number 8,549,339 (hereinafter “the “339 Patent”) is raised by the request for ex

parte reexamination filed December 9, 2025.

Information Disclosure Statement
2. Where the IDS citations are submitted but not described, the examiner 1s only responsible for
cursorily reviewing the references. The initials of the examiner on the PTO-1449 indicate only that degree
of review unless the reference is either applied against the claims, or discussed by the examiner as
pertinent art of interest, in a subsequent office action.

See Guidelines for Reexamination of Cases in View of In re Portola Packaging, Inc., 110 F.3d
786, 42 USPQ2d 1295 (Fed. Cir. 1997), 64 FR at 15347, 1223 Off. Gaz. Pat. Office at 125 (response to
comment 6).

Consideration by the examiner of the information submitted in an IDS means that the examiner
will consider the documents in the same manner as other documents in Office search files are considered
by the examiner while conducting a search of the prior art in a proper field of search. The initials of the
examiner placed adjacent to the citations on the PTO-1449 or PTO/SB/08A and O8B or its equivalent
mean that the information has been considered by the examiner to the extent noted above.

Regarding IDS submissions MPEP 2256 recites the following: "Where patents, publications, and
other such items of information are submitted by a party (patent owner) in compliance with the
requirements of the rules, the requisite degree of consideration to be given to such information will be
normally limited by the degree to which the party filing the information citation has explained the content

and relevance of the information."


Application/Control Number: 90/015,761 Page 3
Art Unit: 3992

Prior art cited in the Request
3. The present request indicates that the Requester considers that a substantial new question of

patentability is raised as to claims 1-5, 8-11, 14, and 21 of the “339 Patent by the following prior art

references:
a. White — U.S. Patent No. 7,263,457
b. Talwar — U.S. Patent Application Publication No. 2009/0271646
c. Boyle — U.S. Patent No. 7,669,151
d. Lee — “Dynamic Voltage and Frequency Scaling (DVFS) Scheme for Multi-Domains
Power Management”
€. De Oliverira — U.S. Patent Application Publication No. 2006/0152087
f. Flautner — U.S. Patent Application Publication No. 2005/0034002
g. Kato — U.S. Patent Application Publication No. 2004/02 10738
h. Vajda — U.S. Patent Application Publication No. 2012/0060170
Prosecution History
4, The °339 Patent application was assigned serial number 12/713,220 (hereinafter “the “220

application”), effectively filed February 26, 2010. During the original prosecution, the ‘220 application
initially included claims 1-20. A preliminary amendment was filed on August 2, 2011 that added claims
21-23,

In a non-final action mailed August 29, 2012, the previous examiner rejected claims 1, 5, 6, 8, 9,
14, and 21 in view of Jacobowitz et al.; claims 2-4, 7, 12, and 13 in view of Jacobowitz et al. and Kim et
al.; and claims 10, 11, 15-20, 22, and 23 in view of Jacobowitz et al., Kim et al., and von Kaenel. Claims
18-20 were also rejection under 35 U.S.C. 101 and claims 15-20 were also rejected under 35 U.S.C. 112,

second paragraph.


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Application/Control Number: 90/015,761 Page 4

Art Unit: 3992

In response, the patent owner filed an amendment on November 29, 2012, amending claims 1, 10,
11, 15, and 18-23. The following amendments were made to the independent claims (using claim | as
example):

1. fCuranty Smended) A mullt-core proceasser, comprising:

a first set of processor cores of the multi-core processar, wherein each pronessor Oore
from the first set of processor cores is configured io dynamically racelve a first
supoty voltage and a first guiput clock signalof a first chase lock ioop (PLL)
having & first cloth sidnal as input:

& seoond sei of prosessar cores of the mullkeore processor, wherein each processor

core Tron the second set of processar cores is configured to dynaminaily receive
a second supmy voltage and a second output dock signalofa second PLE having

a second clock signal as inpul wherein ie first supely vollace is indacencdent

fren the second sucply volta and the first clock sional is irdernerncedt from the:
ReoDrG clerk signal: and
art interface infock coupled io the firsi set of pmcesser cores and also coupled fo the

second set of processor cores, wherein the interlace block is configurad to
fastiate communination between the first set of processor cares and the secand
set of praceRsor cores.

Patent owner also presented the following arguments in view of the amendments.

First, Jacobourtz falls to disclose or leach a first set of processar Cores and secand set
of procesaar cores confiquiad to dynaminally receive a hrei supgly vallage ani a second supply
voltage, resgectively. I addiion, the frst supply vallage is incopencdent from Hie seocand supply
voltage, a8 reguired in the arnended independent clairas | and 21. Paragragh (043} of
Jacohowiie meciy mentions that “Tflurther power manaqoniont can be raalizad by controling
ihe power supply voliage (Vdd) to each core andor chic.” In other words, Jacobowit is sdent
with respect to least the recited dierent sets of processor cores configured lo receive
independent sunply vollages.

Second, FIG. 6 and all other figures of Jacobow#rz clearly show thal the microprocessor
chip (¢.¢., B00} receives 8 system reference oscillator clock fraquency (+) and disitibutes ve to
local oxcilalers 108. Ree Jacobowitz, paragraphs [(BOS7HCRIG} and FRG. 6. dacobowilz hada fo

dynaminoally receive 4 first ouigul clock signal of a first PLL heaving & fist clook signal as input
and @ second qutgnt Clock choral of a second FLL feving 4 second clock signal as input,
respectively, In addition, the tst clock sional is independert frarn the second clock signal, as

reguirad in the amended independent Gaims t and 24.
For atleast ihe reasons set forth above, the amended independent claims 1 and 21 and
the related dependent Cains 2 ~ t4 and ge ~ 29 are patentable aver Jacohomde. Applcart

(pages 9 and 10 of PO’s response filed November 29, 2012 in the *220 application)


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Application/Control Number: 90/015,761 Page 5
Art Unit: 3992

In response to the amendment, the application was passed to allowance in the Notice of
Allowance mailed February 14, 2013. The examiner stated no reasons for allowance. Thus, as it
currently stands based on the prosecution history of the *220 application, it appears that the claims of the
*339 Patent were allowed at least in part based on the following limitations (using claim las example:

a first set of processor cores of the multi-core processor, wherein each processor core from the

first set of processor cores is configured to dynamically receive a first supply voltage and a
first output clock signal of a first phase lock loop (PLL) having a first clock signal as input;

a second set of processor cores of the multi-core processor, wherein each processor core from

the second set of processor cores is configured to dynamically receive a second supply

voltage and a second output clock signal of a second PLL having a second clock signal as

input, wherein the first supply voltage is independent from the second supply voltage, and the

first clock signal is independent from the second clock signal; (patent claim 1)
Following the issuance of the “339 Patent, IPR2025-00085 was requested to challenge claims 1-6, 8-11,
14, and 21 of the “339 Patent based on the following grounds:

Ground 1: Claims 1, 5, 8-10, 14, 21 — Knoth in view of Allarey

Ground 2: Claims 2-4 — Knoth in view of Allarey and Flautner

Ground 3: Claim 6 — Knoth in view of Allarey, Wolfe, and Kumar

Ground 4: Claim 11 — Knoth in view of Allarey and Wolfe

Ground 5: Claims 1-3, 5, 8-10, 14, 21 — Naffzinger in view of Allarey

Ground 6: Claims 4 — Naffzinger in view of Allarey and Flautner

Ground 7: Claim 6 — Naffzinger in view of Allarey, Wolfe, and Kumar

Ground 8: Claim 11 — Naffzinger in view of Allarey and Wolfe
On April 22, 2025, the PTAB issued a decision to Denying Institution of /nter Partes Review based ona
lack of demonstration of a reasonable likelihood to prevail by the petitioner.

IPR2025-00485 was also requested to challenge claims 1-3, 5, 8-11, 14, and 21 of the “339 Patent
based on the following grounds:

Ground 1: Claims 1-3, 5, 8, 10-11, 14, 21 — White in view of Talwar

Ground 2: Claims 5, 14 — White in view of Talwar and Cho

Ground 3: Claims 8, 9 — White in view of Talwar and Vajda

Ground 4: Claims 1-3, 5, 8, 10-11, 14, 21 — Elgebaly in view of Ozer

Ground 5: Claims 8, 9 — Elgebaly in view of Ozer and Vajda
Ground 6: Claims 1-3, 5, 8, 10-11, 14, 21 — Elgebaly in view of Ozer and Williams


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Application/Control Number: 90/015,761 Page 6

Art Unit: 3992

Ground 7; Claims 8, 9 — Elgebaly in view of Ozer, Williams, and Vajda
On July 10, 2025, a decision Denying Institution of the /nter Partes Review based on a request for
discretionary denial.

IPR2025-01532 was also requested to challenge claims 1-3, 5, 8-11, 14, and 21 of the “339 Patent
based on the following grounds:

Ground 1: Claims 1-3, 5, 8, 10-11, 14, 21 — White in view of Talwar and Lee

Ground 2: Claims 1-3, 5, 8, 10-11, 14, 21 — Elgebaly in view of Lee

Ground 3: Claim 9 — Elgebaly in view of Lee and Vajda

The PTAB has yet to issue a decision granting or denying institution of /nfter Partes Review.

Substantial New Question of Patentability
5. The italicized sections of claim | are utilized by the examiner to show how specific teachings of
the proposed references create a substantial new question of patentability.
1. A multi-core processor, comprising:

a first set of processor cores of the multi-core processor, wherein each processor core from
the first set of processor cores is configured to dynamically receive a first supply
voltage and a first output clock signal of a first phase lock loop (PLL) having a first
clock signal as input;

a second set of processor cores of the multi-core processor, wherein each processor core
from the second set of processor cores is configured to dynamically receive a second
supply voltage and a second output clock signal of a second PLL having a second clock
signal as input, wherein the first supply voltage is independent from the second supply
voltage, and the first clock signal is independent from the second clock signal; and

an interface block coupled to the first set of processor cores and also coupled to the second

set of processor cores, wherein the interface block is configured to facilitate


Application/Control Number: 90/015,761 Page 7

Art Unit: 3992
communication between the first set of processor cores and the second set of processor

cores.

White in view of Talwar and Boyle (SNO 1)

6. The Request shows that White in view Talwar and Boyle provide teachings relevant to the
determination of patentability regarding the following limitations, for claim 1:

a first set of processor cores of the multi-core processor, wherein each processor core from the first
set of processor cores is configured to dynamically receive a first supply voltage and a first
output clock signal of a first phase lock loop (PLL) having a first clock signal as input;

White discloses a multi-core integrated circuit which allows for any number of logic
cores being configured to operate at independent voltages and/or frequencies (column 2, lines
15-44 and column 6, lines 56-67 of White). Additionally, White discloses multi-core
integrated circuits may be configured to operate and frequencies and/or voltages from other
multi-core integrated circuits (column 8, lines 41-58 of White).

Talwar discloses a multi-core processor design in which the cores and voltage
sources are divided into clusters, where each cluster receives power for a single voltage
source and may have a different cluster frequency (paragraphs [0011], [0018] and [0019] of
Talwar).

Boyle discloses integrated circuits that are organized into various clock domains (Fig.
9; column 2, lines 54-61; and column 9, lines 61-67 of Boyle).

a second set of processor cores of the multi-core processor, wherein each processor core from the
second set of processor cores is configured to dynamically receive a second supply voltage and a
second output clock signal of a second PLL having a second clock signal as input, wherein the
first supply voltage is independent from the second supply voltage, and the first clock signal is

independent from the second clock signal;


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White discloses a multi-core integrated circuit which allows for any number of logic
cores being configured to operate at independent voltages and/or frequencies (column 2, lines
15-44 and column 6, lines 56-67 of White). Additionally, White discloses multi-core
integrated circuits may be configured to operate and frequencies and/or voltages from other
multi-core integrated circuits (column 8, lines 41-58 of White).

Talwar discloses a multi-core processor design in which the cores and voltage
sources are divided into clusters, where each cluster receives power for a single voltage
source and may have a different cluster frequency (paragraphs [0011], [0018] and [0019] of
Talwar).

Boyle discloses integrated circuits that are organized into various clock domains (Fig.
9; column 2, lines 54-61; and column 9, lines 61-67 of Boyle). Boyle discloses the clock

domains are clocked using independent clock sources (column 10, lines 15-20 of Boyle).

The White, Talwar, and Boyle references were not previously discussed by the previous examiner
nor applied to claims 1-5, 8-11, 14, and 21 in the prior examination of the “339 patent. Additionally,
while the White and Talwar references are present in the IPR proceedings discussed above, claims 1-3, 5,
8, 10, and 21 were not subject to any Final Written Decision in view of the combination of White and
Talwar in said IPR proceedings.

In a decision to order reexamination made on or after November 2, 2002, reliance on old art does
not necessarily preclude the existence of a substantial new question of patentability that is based
exclusively on that old art. See Public Law 107-273, 116 Stat. 1758, 1899-1906 (2002), which expanded
the scope of what qualifies for a substantial new question of patentability upon which a reexamination
may be based. Determinations on whether a substantial new question of patentability exists in such an
instance shall be based upon a fact-specific inquiry done on a case-by-case basis. For example, a
substantial new question of patentability may be based solely on old art where the old art is being

presented/viewed in a new light, or in a different way, as compared with its use in the earlier


Application/Control Number: 90/015,761 Page 9

Art Unit: 3992

examination(s), in view of a material new argument or interpretation presented in the request. Such
material new argument or interpretation may be based solely on claim scope of the patent being
reexamined (see: MPEP 2242(II)(A)).

The White and Talwar references were cited in the previously filed IPR proceedings, however the
current presentation of the combination of these references with the Boyle reference is in a new light (see
MPEP 2216).

It is agreed that White in view of Talwar and Boyle raises a substantial new question of
patentability with respect to at least independent claims 1 and 21 of the “339 Patent. There is a substantial
likelihood that an examiner would consider these new, non-cumulative technological teachings important
in deciding whether or not these claims are patentable.

Accordingly, White in view of Talwar and Boyle raises a substantial new question of
patentability with respect to at least claims 1-3, 5, 8, 10, and 21 of the “339 Patent, a question which has
not been decided in a previous examination of the *339 Patent nor was there a final holding of invalidity

by the Federal Courts regarding the “339 Patent.

White in view of Talwar and Lee (SNO 2)

7. The Request shows that White in view Talwar and Lee provide teachings relevant to the
determination of patentability regarding the following limitations, for claim |:

a first set of processor cores of the multi-core processor, wherein each processor core from the first
set of processor cores is configured to dynamically receive a first supply voltage and a first
output clock signal of a first phase lock loop (PLL) having a first clock signal as input;

White discloses the reception of location-dependent incident information such as an
emergency or hazard (column 7, lines 53-65; column 8, lines 12-21; and column 10, line 50-

column 11], line 8 of Franco)


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Janke discloses a vehicle occupant’s ability to inform the server of any discrepancies
between what is actually present and what the map indicates is present, including modifying
or deleting the description of the event (column 4, lines 35-54 of Janke).

a second set of processor cores of the multi-core processor, wherein each processor core from the
second set of processor cores is configured to dynamically receive a second supply voltage and a
second output clock signal of a second PLL having a second clock signal as input, wherein the
first supply voltage is independent from the second supply voltage, and the first clock signal is
independent from the second clock signal;

Franco discloses a display interface of a mobile phone that is configured to present
incident alerts if the computed score for said event exceeds a threshold level (column 9, line

45-column 10, line 24 of Franco)

The White, Talwar, and Lee references were not previously discussed by the previous examiner
nor applied to claims 1-5, 8-11, 14, and 21 in the prior examination of the *339 patent. Additionally,
while the White, Talwar, and Lee references are present in the IPR proceedings discussed above, claims
1-3, 5, 8, 10, and 21 were not subject to any Final Written Decision in view of the combination of White,
Talwar, and Lee in said IPR proceedings.

It is agreed that White in view of Talwar and Lee raises a substantial new question of
patentability with respect to at least independent claims | and 21 of the *339 Patent. There is a substantial
likelihood that an examiner would consider these new, non-cumulative technological teachings important
in deciding whether or not these claims are patentable.

Accordingly, White in view of Talwar and Lee raises a substantial new question of patentability
with respect to at least claims 1-3, 5, 8, 10, and 21 of the °339 Patent, a question which has not been
decided in a previous examination of the ‘339 Patent nor was there a final holding of invalidity by the

Federal Courts regarding the *339 Patent.


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White in view of Talwar, Boyle, and De Oliverira (SNQO 3)

8. The De Oliverira reference has been cited in combination with the White, Talwar, and Boyle
references in the Request as part of the asserted SNQ. As stated above, White in view of Talwar and
Boyle was not previously discussed by the examiner nor applied to claims 1-5, 8-11, and 14-21 in the
prior examination of the *339 patent. Additionally, the De Oliverira reference was also not previously
discussed by the previous examiner nor applied to claims 1-5, 8-11, and 14-21 in the prior examination of
the 339 Patent. The De Oliverira reference in combination with the White, Talwar, and Boyle references
raises an SNQ at least based on the discussion found of above regarding White in view of Talwar and
Boyle (SNQ 1). The Request shows that the combination of White in view of Talwar and Boyle provide
teachings that are relevant to the limitations noted above which may have been material in determining
the patentability of the “339 Patent claims at the time of allowance.

It is agreed that the consideration of De Oliverira with White, Talwar, and Boyle raises an SNQ
with respect to at least independent claims | and 21 of the “339 Patent based on the teachings of White,
Talwar, and Boyle cited above. There is a substantial likelihood that a reasonable examiner would
consider these teachings important in deciding whether or not these claims are patentable.

Accordingly, the combination of the De Oliverira reference with the White, Talwar, and Boyle
references raises a substantial new question of patentability with respect to at least claims 1-5, 8-11, 14,
and 21 of the *339 Patent, a question which has not been decided in a previous examination. In addition,

there has been no final holding of invalidity by the Federal Courts regarding the “339 Patent.

White in view of Talwar, Boyle, and Flautner (SNO 4)

9. The Flautner reference has been cited in combination with the White, Talwar, and Boyle
references in the Request as part of the asserted SNQ. As stated above, White in view of Talwar and
Boyle was not previously discussed by the examiner nor applied to claims 1-5, 8-11, and 14-21 in the

prior examination of the *339 patent. Additionally, the Flautner reference was also not previously


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Application/Control Number: 90/015,761 Page 12
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discussed by the previous examiner nor applied to claims 1-5, 8-11, and 14-21 in the prior examination of
the “339 Patent. Additionally, while the Flautner references are present in the IPR proceedings discussed
above, claims 1-3, 5, 8, 10, and 21 were not subject to any Final Written Decision in view of the
combination of White, Talwar, and Flautner in said IPR proceedings. The Flautner reference in
combination with the White, Talwar, and Boyle references raises an SNQ at least based on the discussion
found of above regarding White in view of Talwar and Boyle (SNQ 1). The Request shows that the
combination of White in view of Talwar and Boyle provide teachings that are relevant to the limitations
noted above which may have been material in determining the patentability of the “339 Patent claims at
the time of allowance.

It is agreed that the consideration of Flautner with White, Talwar, and Boyle raises an SNQ with
respect to at least independent claims | and 21 of the *339 Patent based on the teachings of White,
Talwar, and Boyle cited above. There is a substantial likelihood that a reasonable examiner would
consider these teachings important in deciding whether or not these claims are patentable.

Accordingly, the combination of the Flautner reference with the White, Talwar, and Boyle
references raises a substantial new question of patentability with respect to at least claims 1-5, 8-11, 14,
and 21 of the “339 Patent, a question which has not been decided in a previous examination. In addition,

there has been no final holding of invalidity by the Federal Courts regarding the *339 Patent.

White in view of Talwar, Boyle, and Kato (SNO 5)

10. The Kato reference has been cited in combination with the White, Talwar, and Boyle references
in the Request as part of the asserted SNQ. As stated above, White in view of Talwar and Boyle was not
previously discussed by the examiner nor applied to claims 1-5, 8-11, and 14-21 in the prior examination
of the “339 patent. Additionally, the Kato reference was also not previously discussed by the previous
examiner nor applied to claims 1-5, 8-11, and 14-21 in the prior examination of the *339 Patent. The

Kato reference in combination with the White, Talwar, and Boyle references raises an SNQ at least based


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Application/Control Number: 90/015,761 Page 13
Art Unit: 3992

on the discussion found of above regarding White in view of Talwar and Boyle (SNQ 1). The Request
shows that the combination of White in view of Talwar and Boyle provide teachings that are relevant to
the limitations noted above which may have been material in determining the patentability of the °339
Patent claims at the time of allowance.

It is agreed that the consideration of Kato with White, Talwar, and Boyle raises an SNQ with
respect to at least independent claims | and 21 of the “339 Patent based on the teachings of White,
Talwar, and Boyle cited above. There is a substantial likelihood that a reasonable examiner would
consider these teachings important in deciding whether or not these claims are patentable.

Accordingly, the combination of the Kato reference with the White, Talwar, and Boyle references
raises a substantial new question of patentability with respect to at least claims 1-5, 8-11, 14, and 21 of
the *339 Patent, a question which has not been decided in a previous examination. In addition, there has

been no final holding of invalidity by the Federal Courts regarding the *339 Patent.

White in view of Talwar, Boyle, and Vajda (SNO 6)

11. The Vajda reference has been cited in combination with the White, Talwar, and Boyle references
in the Request as part of the asserted SNQ. As stated above, White in view of Talwar and Boyle was not
previously discussed by the examiner nor applied to claims 1-5, 8-11, and 14-21 in the prior examination
of the “339 patent. Additionally, the Vajda reference was also not previously discussed by the previous
examiner nor applied to claims 1-5, 8-11, and 14-21 in the pnor examination of the *339 Patent.
Additionally, while the Vajda references are present in the IPR proceedings discussed above, claims 1-3,
5, 8, 10, and 21 were not subject to any Final Written Decision in view of the combination of White,
Talwar, and Vajda in said IPR proceedings. The Vajda reference in combination with the White, Talwar,
and Boyle references raises an SNQ at least based on the discussion found of above regarding White in

view of Talwar and Boyle (SNQ 1). The Request shows that the combination of White in view of Talwar


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Application/Control Number: 90/015,761 Page 14
Art Unit: 3992

and Boyle provide teachings that are relevant to the limitations noted above which may have been
material in determining the patentability of the “339 Patent claims at the time of allowance.

It is agreed that the consideration of Vajda with White, Talwar, and Boyle raises an SNQ with
respect to at least independent claims | and 21 of the 339 Patent based on the teachings of White,
Talwar, and Boyle cited above. There is a substantial likelihood that a reasonable examiner would
consider these teachings important in deciding whether or not these claims are patentable.

Accordingly, the combination of the Vajda reference with the White, Talwar, and Boyle
references raises a substantial new question of patentability with respect to at least claims 1-5, 8-11, 14,
and 21 of the “339 Patent, a question which has not been decided in a previous examination. In addition,

there has been no final holding of invalidity by the Federal Courts regarding the *339 Patent.

35 U.S.C. § 325(d)

Section 325(d) states in part, “[i]n determining whether to institute or order a proceeding under
this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition
or request because, the same or substantially the same prior art or arguments previously were presented to
the Office.” Thus, for the Director to exercise discretion as to whether to Order a reexamination under
chapter 30, the Request must first be determined to be based on the same or substantially the same prior
art or arguments that were previously presented to the Office.

A review of the post-grant history of the *339 patent indicates three post-grant challenges filed
prior to the filing of the current Request: IPR2025-00085, IPR2025-00485, and IPR2025-01532

IPR2025-00085

On Oct. 22, 2024, Petitioners, MediaTek, Inc. and MediaTek USA, Inc., filed a Petition for infer
partes review with the Patent Trial and Appeal Board (“Board”). In that Petition, eight grounds were
asserted by Petitioner as raising a reasonable likelihood of prevailing that the challenged claims of the
*339 patent are invalid over the cited prior art. On April 22, 2025, the Board concluded that Petitioner did

not show a reasonable likelihood of prevailing on the merits over three of the cited prior art references


Application/Control Number: 90/015,761 Page 15

Art Unit: 3992
(Knoth', Allarey’, and Naffziger’) as to claims 1 and 21 presented in the Petition. As a result, the Board
denied the Petition and trial was not instituted.

IPR2025-00485

On Jan. 22, 2025, Petitioners, NXP USA, Inc. and Qualcomm Incorporated, filed a Petition for
inter partes review with the Board. In that Petition, seven grounds were asserted by Petitioner as raising a
reasonable likelihood of prevailing that the challenged claims of the *339 patent are invalid over the cited
prior art. On July 10, 2025, the Acting Director for the U.S. Patent & Trademark Office discretionarily
denied the Petition under 35 U.S.C. § 314(a) and trial was not instituted. The merits of the Petition were
not discussed or analyzed.

IPR2025-01532

On Sept. 16, 2025, Petitioner, Apple Inc., filed a Petition for inter partes review with the Board.
In that Petition, three grounds were asserted by Petitioner as raising a reasonable likelihood of prevailing
that the challenged claims of the *339 patent are invalid over the cited prior art. On Jan. 27, 2026, the
Director of the U.S. Patent & Trademark Office discretionanly denied the Petition under 35 U.S.C. §
314(a) and trial was not instituted. The merits of the Petition were not discussed or analyzed.

Current Reexamination No. 90/015,761

As noted above, on Dec. 9, 2025, Third-Party Requester, Advanced Micro Devices, Inc., filed the
current Request challenging claims 1-5, 8-11, 14, and 21 of the *339 patent over six grounds argued to

raise SNQs. These SNQs are summarized above in this Order.

325(d) Analysis

A comparison between the prior art and arguments cited in the prior IPR Petitions and the current
Request shows no identical or overlapping grounds. Despite this, it is noted that White, Talwar, Lee,

Flautner, and Vajda are common references cited in the current Request and various ones of the prior IPR

‘U.S. Patent Application Publication No. 2009/0158078 A1, to Matthias Knoth (“Knoth”).
7 U.S. Patent No. 8,122,270 B2, to Allarey et al. (“Allarey”).
3U.S. Patent Application Publication No. 2010/0122101 A1, to Naffziger et al. (“Naffziger”).


Application/Control Number: 90/015,761 Page 16

Art Unit: 3992

Petitions. However, the current Request also cites Boyle, De Oliverira, and Kato in various combinations
with White, Talwar, Lee, Flautner, and Vajda. None of Boyle, De Oliverira, or Kato were cited in the
previous IPR Petitions. This means that the combinations presented in the current Request are not
identical to any of the presented grounds in the previous IPR Petitions because of the newly cited prior
art. Additionally, because of the newly cited prior art and their respective newly presented combinations,
the current Request also presents new and additional arguments that were not presented in the previous
IPR Petitions. In other words, the prior art and arguments presented in the current Request are not the
same or substantially the same as the prior art or arguments presented in the prior proceedings. Moreover,
the Third-Party Requester in this proceeding is not the same as any of the Petitioners in the prior IPR
proceedings, thus, there is no abusive filings practices against the “339 patent evident by the Third-Party
Requester.

As a result, the statutory threshold under 35 U.S.C. § 325(d) for the Director to exercise
discretion in deciding whether or not to Order reexamination based on the current Request is not met.
Accordingly, in view of the discussion above, the current Request for ex parte reexamination is Ordered
for the “339 patent based on the determination that the current Request has been determined to raise a

substantial new question of patentability (SNQ) of the challenged claims.

Scope of Reexamination

12. Claims 1-5, 8-11, 14, and 21 will be reexamined as requested.

Conclusion
13. Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings because the
provisions of 37 CFR 1.136 apply only to "an applicant” and not to parties in a reexamination proceeding.
Additionally, 35 U.S.C. 305 requires that reexamination proceedings "will be conducted with special
dispatch" (37 CFR 1.550(a)). Extension of time in ex parte reexamination proceedings are provided for

in 37 CFR 1.550(c).


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Application/Control Number: 90/015,761 Page 17
Art Unit: 3992

14. The patent owner is reminded of the continuing responsibility under 37 CFR 1.565(a) to apprise
the Office of any litigation activity, or other prior or concurrent proceeding, involving Patent No.
8,549,339 throughout the course of this reexamination proceeding. The third party requester is also
reminded of the ability to similarly apprise the Office of any such activity or proceeding throughout the

course of this reexamination proceeding. See MPEP §§ 2207, 2282 and 2286.

15. All correspondence relating to this ex parfe reexamination proceeding should be directed:

Electronically: Registered users may submit via Patent Center at htips://patenicenter uspto gov/.

By Mail to: Mail Stop x Parte Reexam
Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450

By FAX to: (571) 273-9900
Central Reexamination Unit

By hand: Customer Service Window
Knox Building
501 Dulany Street
Alexandria, VA 22314

For Patent Center transmissions, 37 CFR 1.8(a)(1)()(C) and (11) states that correspondence
(except for a request for reexamination and a corrected or replacement request for reexamination) will be
considered timely filed if (a) it is transmitted via the Office's electronic filing system in accordance with
37 CFR 1.6(a)(4) , and (b) includes a certificate of transmission for each piece of correspondence stating
the date of transmission, which is prior to the expiration of the set period of time in the Office action.

Any inquiry concerning this communication should be directed to Joshua Campbell at telephone

number (571) 272-4133.


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Application/Control Number: 90/015,761

Art Unit: 3992

JOSHUA D CAMPBELL/

Primary Examiner, Art Unit 3992

Conferee:

/ALEXANDER J KOSOWSKI/

Supervisory Patent Examiner, Art Unit 3992