• ROKU, Inc. v. Ecolink Intelligent Technology, Inc.Instituted
  PTAB · Oct 31, 2023 · IPR2023-00792 · APJ Jason M Repko · IPR · Institution

  The Board instituted IPR on claims 1, 2, 6, 11, 12, and 16 because Roku showed a reasonable likelihood of prevailing on the petition’s obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to all claims challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2

  • PTAB / AIA Trials › Real party in interest / privityOther

    “B. Real Party in Interest Patent Owner’s Mandatory Notices do not identify any real party in interest, as required by 37 C.F.R. § 42.8(b)(1). See Paper 4. Patent Owner must provide this information by filing a paper with updated mandatory notices within one month of this decision’s entry.” slip op. at 2

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “person of ordinary skill in the art requires knowledge in “the field of home and business security,” Petitioner’s expert, Bruce McNair, testifies that he has designed and installed home security, sensor, and alarm systems. Ex. 1003 ¶ 12. Also, Mr. McNair’s experience with wireless communication and cryptographic security systems is also relevant (see, e.g., id. ¶ 10) even if it involved more complex systems because, “to be qualified to offer expert testimony on issues from the vantage point of an ordinarily skilled artisan in a patent case, an expert must at a minimum possess ordinary skill in the art.” Kyocera, 22 F.4th at 1377–78 (emphasis added). Thus, on this record, we disagree with Patent Owner’s argument Petitioner has failed to support its Petition with the testimony of someone who possesses the knowledge and skill at least of an ordinarily skilled artisan—even under Patent Owner’s definition. See Prelim. Resp. 49.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At this stage, we determine that the differences between the two definitions do not affect our decision to institute. That is, in our analysis below, we apply Petitioner’s proposed definition, but our decision would be the same under Patent Owner’s. If the parties continue to disagree about the level of ordinary skill in the art during trial, they are encouraged to explain how the differences affect the Board’s assessment of Petitioner’s obviousness analysis.” slip op. at 5

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,692,340
• Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Netlist, Inc.No claims unpatentable
  PTAB · Oct 30, 2023 · IPR2022-00744 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–3, 5, 6, 8–10, and 12–14 were not shown unpatentable because Halbert did not disclose the claimed ranks operating at the specified data rate.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not provide a different assessment of the level of ordinary skill, but Dr. Przybylski states that an individual with the level of experience identified by Petitioner “would have less knowledge and familiarity” than presumed by Petitioner’s definition. Ex. 2003 ¶ 46. Dr. Przybylski, however, provides no further discussion explaining this apparent disagreement with Petitioner, nor does he set forth what level of knowledge and familiarity a person of ordinary skill in the art would have had. Based on the complete trial record, we determine that Petitioner’s proposed skill level is consistent with the level of ordinary skill evidenced by the ’314 patent and the asserted prior art, and we adopt that skill level with the exception of the phrases “at least,” which introduce vagueness as to the amount of experience.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “We disagree with Petitioner’s interpretation. Taking Petitioner’s point that “‘specified data rate’ means only that the data rate is specified in some way” (Pet. Reply 4), we do not see how, once the rate is specified, claim 1’s later recitations of “the specified data rate” could refer to any other rate, as Petitioner’s arguments suggest. Petitioner argues that “it is clear that the ‘specified data rate’ that provides antecedent basis for later recitations of that term is merely the data rate specified for ‘communicat[ing] data’ between the ‘memory module’ and the external ‘memory controller of the computer (alteration by Petitioner). We agree with this statement, and later recitations of “the specified data rate,” therefore, refer to the data rate that is so specified. Petitioner provides no persuasive argument to support its position that later recitations of “the specified data rate” could be satisfied by data rates that are not the “specified data rate.”” slip op. at 7

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “PO Resp. 19; see also Ex. 2003 ¶¶ 68–72 (Dr. Przybylski’s testimony explaining this annotated figure). Halbert’s Figure 5 is a timing diagram for two consecutive read operations (Ex. 1005 ¶¶ 16, 37), and Patent Owner includes annotations to show each of ranks 140 and 142 outputting data onto their respective data busses at half the rate that data are output from data interface circuit 120 on the DQ data line. In particular, Halbert explains that each of ranks 140 and 142 is “capable of performing m-bit-wide data transfers.” Ex. 1005 ¶ 30. On a read command, rank 140 sends m-bit-wide data to bi-directional data register 126 on line RDQ0 at the same time that rank 142 sends m-bit-wide data to bi-directional data register 128 on line RDQ1, as shown in Figure 5 between T7n and T8n. Ex. 1005 ¶¶ 31–32, 39. Halbert discloses that register 126 or from register 128 to output to buffer 122, which are then output on line DQ. Ex. 1005 ¶ 33. Halbert explains that “[d]ata is serialized from the data registers onto the memory data bus by reading 2m bits into the data registers during one memory device read cycle, and then driving these bits, m at a time, through MUX 124.” Ex. 1005 ¶ 33. As shown in Halbert’s Figure 5, over one clock cycle (T7n–T8n), each of ranks 140 and 142 outputs one piece of m-bit-wide data, and over one clock cycle (T8–T9), those two pieces of m-bit-wide data are output on line DQ to the system memory data bus. Halbert explains that the second read operation proceeds in the same fashion as the first and that “[t]he net result is that the memory data bus transfers 4m bits of data in two memory bus clock cycles (four mbit transfers), with only two data accesses performed at each memory device on the module.” Ex. 1005 ¶ 42. Thus, Halbert’s memory module outputs data to the system memory data bus at twice the rate that each of ranks 140 and 142 outputs data. See Ex. 2003 ¶¶ 68–73 (Dr. Przybylski’s credible testimony explaining Halbert’s data rates).” slip op. at 11

  Patent outcomesUS 10,489,314 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,489,314
• Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Netlist, Inc.No claims unpatentable
  PTAB · Oct 30, 2023 · IPR2022-00745 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 15–20 and 22–33 were not shown unpatentable because Petitioner did not adequately explain how the proposed combination would use active and non-active chip select signals.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have been someone with an advanced degree in electrical or computer engineering and at least two years working in the field, or a bachelor’s degree in such engineering disciplines and at least three years working the field,” and Petitioner identifies particular knowledge that a person of ordinary skill in the art would have had. Pet. 3–4 (citing Ex. 1003 ¶ 52).” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “C. Claim Construction We need not construe expressly any claim terms to decide the issues before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “As outlined above, Petitioner presents reasoning as to why a person of ordinary skill in the art would have included chip select signals in Halbert’s Figure 4 device. See Pet. 20–31 (addressing limitations 15.4 and 15.5). But Petitioner’s contentions about the use of chip select signals do not address sufficiently how Halbert’s Figure 4 device would operate with active and non-active chip select signals, as recited in claim 15. Indeed, as Patent Owner points out (PO Resp. 12), Petitioner’s contentions for limitation 15.6 only rely on Halbert’s Figure 2 prior art device. See Pet. 31–32. Petitioner’s lack of explanation as to how active and non-active signals would affect the operation of Halbert’s Figure 4 device is significant, as explained below.” slip op. at 12

  Patent outcomesUS 10,489,314 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,489,314
• Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentable
  PTAB · Oct 18, 2023 · IPR2023-00204 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 1–35 are unpatentable as obvious over Ellsberry and Halbert because the combination, with ordinary skill in the art, teaches every limitation and has a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art in the field of the ’339 patent in 2009 would have had an advanced degree in electrical or computer engineering and two years working in the field, or a bachelor’s degree in such engineering disciplines and at least three years working in the field. Pet. 2 (citing Ex. 1003 ¶¶ 50–51). Petitioner contends such person would have been familiar with various standards of the day, including JEDEC industry standards, and would have been knowledgeable about the design and operation of standardized DRAM and SDRAM memory devices and memory modules and how they interacted with the memory controller of a computer system. Id. (citing Ex. 1003 ¶ 51; Ex. 1041). Patent Owner indicates that it applies the skill level of a person of ordinary skill in the art proposed by Petitioner for this proceeding. Resp. 31. On this record, we accept Petitioner’s statement of the level of ordinary skill in the art except that we omit the qualifier “at least” before years of experience because it may encompass levels that are beyond ordinary and render the level ambiguous. Otherwise, we find Petitioner’s statement of the level of ordinary skill in the art consistent with the ’339 patent and the applied prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “1. “Rank” and “Rank Select Signal” Petitioner discusses the terms “rank” and “rank select signal” in the claim construction section of its Petition. Pet. 8–10. Petitioner contends that a “rank select signal” is also known as a “chip-select signal” and alleges that the ’339 patent uses the terms consistently with the JEDEC standards of the time. Id. at 8–9. Petitioner also contends that the term “bank” has been replaced over time with “rank.” Id. at 9–10 (citing Ex. 1041, 318–20 (discussing DIMMs, ranks, banks, and arrays), 413 (Fig. 10.5)). Although Petitioner cites a definition of “rank” (id. at 9), Petitioner does not propose that this definition should be applied in this case. See id. at 8–10. Patent Owner does not dispute Petitioner’s discussion of the terms “rank” and “rank select signal.” See Resp. As there is no evidence of any dispute concerning these terms, we need not construe them. See Nidec, supra.” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “3. Means Plus Function Petitioner contends “it is . . . not necessary to determine whether any terms of the 339 Patent are governed by § 112,¶6, given that Ellsberry alone or in view of Halbert matches the disclosure of the 339 Patent.” Pet. at 10–11 (citing Pet. 11–38 (§§IV.E–G)). When claims do not mention the word “means,” there is a rebuttable presumption that § 112, ¶ 6 does not apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (citing Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed. Cir. 1998)). Neither Petitioner nor Patent Owner provide any evidence to rebut the presumption here that § 112, ¶ 6 does not apply to the ’339 patent’s claims in the absence of any mention of the word “means.” Accordingly, we do not construe any limitation of the ’339 patent’s claims as “means plus function” under § 112, ¶ 6.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “In cases where there is a known problem and the proposed combination is a predictable solution to it, a reason to combine has been shown. See KSR, 550 U.S. at 420 (placing a sensor on a nonmoving point was a predictable solution to known wire-chafing problem); Intel v. Qualcomm Inc., 21 F.4th 784, 799 (Fed. Cir. 2021) (a reference’s switch was a known solution to a feedthrough problem). Petitioner has demonstrated that the problem of bus conflicts was known in DIMMs, and that tristate buffers were a solution to it. Pet. 78 (citing Ex. 1035, 89–90); Ex. 1003 ¶¶ 239–240, 264, 366, 373. Using Halbert’s tristate buffers in Ellsberry amounts to combining familiar elements according to known methods to yield predictable results. KSR, 550 U.S. at 416.” slip op. at 20

  Patent outcomesUS 10,949,339 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,949,339
• Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentable
  PTAB · Oct 18, 2023 · IPR2022-00639 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 1–35 are unpatentable as obvious over Ellsberry and Halbert, based on the combination and the general knowledge of a skilled artisan.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner indicates that it applies the skill level of a person of ordinary skill in the art proposed by Petitioner for this proceeding. Resp. 31. On this record, we accept Petitioner’s statement of the level of ordinary skill in the art except that we omit the qualifier “at least” before years of experience because it may encompass levels that are beyond ordinary and render the level ambiguous. Otherwise, we find Petitioner’s statement of the level of ordinary skill in the art consistent with the ’339 patent and the applied prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “1. “Rank” and “Rank Select Signal” Petitioner discusses the terms “rank” and “rank select signal” in the claim construction section of its Petition. Pet. 8–10. Petitioner contends that a “rank select signal” is also known as a “chip-select signal” and alleges that the ’339 patent uses the terms consistently with the JEDEC standards of the time. Id. at 8–9. Petitioner also contends that the term “bank” has been replaced over time with “rank.” Id. at 9–10 (citing Ex. 1041, 318–20 (discussing DIMMs, ranks, banks, and arrays), 413 (Fig. 10.5)). Although Petitioner cites a definition of “rank” (id. at 9), Petitioner does not propose that this definition should be applied in this case. See id. at 8–10. Patent Owner does not dispute Petitioner’s discussion of the terms “rank” and “rank select signal.” See Resp. As there is no evidence of any dispute concerning these terms, we need not construe them. See Nidec, supra.” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “3. Means Plus Function Petitioner contends “it is . . . not necessary to determine whether any terms of the 339 Patent are governed by § 112,¶6, given that Ellsberry alone or in view of Halbert matches the disclosure of the 339 Patent.” Pet. at 10–11 (citing Pet. 11–38 (§§IV.E–G)). When claims do not mention the word “means,” there is a rebuttable presumption that § 112, ¶ 6 does not apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (citing Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed. Cir. 1998)). Neither Petitioner nor Patent Owner provide any evidence to rebut the presumption here that § 112, ¶ 6 does not apply to the ’339 patent’s claims in the absence of any mention of the word “means.” Accordingly, we do not construe any limitation of the ’339 patent’s claims as “means plus function” under § 112, ¶ 6.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “In cases where there is a known problem and the proposed combination is a predictable solution to it, a reason to combine has been shown. See KSR, 550 U.S. at 420 (placing a sensor on a nonmoving point was a predictable solution to known wire-chafing problem); Intel v. Qualcomm Inc., 21 F.4th 784, 799 (Fed. Cir. 2021) (a reference’s switch was a known solution to a feedthrough problem). Petitioner has demonstrated that the problem of bus conflicts was known in DIMMs, and that tristate buffers were a solution to it. Pet. 78 (citing Ex. 1035, 89–90); Ex. 1003 ¶¶ 239–240, 264, 366, 373. Using Halbert’s tristate buffers in Ellsberry amounts to combining familiar elements according to known methods to yield predictable results. KSR, 550 U.S. at 416.” slip op. at 20

  Patent outcomesUS 10,949,339 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,949,339
• Samsung Electronics Co., Ltd / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentable
  PTAB · Oct 17, 2023 · IPR2023-00205 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1–20 are obvious over Hiraishi and Butt, with Ellsberry or Kim added for certain dependent claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have been someone with an advanced degree in electrical or computer engineering and at least two years of work experience in the field of memory module design and operation, or a bachelor’s degree in such engineering disciplines and at least three years of work experience in the field,” and would have had knowledge of various standards for memory, such as Joint Electron Devices Engineering Council (JEDEC) standards, and circuitry used in memories. Pet. 2–3 (citing Ex. 1003 ¶ 37). Patent Owner asserts that it is “applying the level of ordinary skill in the art proposed by Petitioner.” PO Resp. 11. We adopt Petitioner’s uncontested level of ordinary skill with the exception of the phrase “at least,” which introduces vagueness as to the amount of experience.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction We agree with the parties that we need not construe expressly any claim terms to decide the issues before us. See Pet. 9; PO Resp. 11; see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, 9 The parties do not present arguments related to objective evidence of nonobviousness (i.e., secondary considerations) as to any of the challenged claims. Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We disagree with Patent Owner’s arguments because, as Petitioner points out, the evidence shows that DDR3 devices do not always have edge-aligned data and strobes. See Pet. Reply 4. In particular, Patent Owner’s declarant Dr. Mangione-Smith testifies that the DDR3 standard allows a 200 picosecond maximum DQS-to-DQ skew, “which is a very tight tolerance considering the speed at which the memory devices are operating.” Ex. 2006 ¶¶ 122–125 (citing Ex. 1020, 164). During cross-examination of Dr. Mangione-Smith, Petitioner established that a 200 picosecond tolerance is actually a misalignment of over 28 degrees considering the 2.5 Pet. Reply 4 (discussing this testimony). Thus, the evidence shows that DDR3 data and strobes are not always edge-aligned. Patent Owner dismisses this, stating that “Petitioner’s argument is tantamount to saying that the JEDEC standard prescribes a tolerance for DQS/DQ skew that causes errors, which runs counter to the entire standard-setting process.” PO Sur-reply 3–4. On the contrary, we find that Petitioner’s showing underscores that Butt’s read training has direct applicability to a memory that may potentially skew by as much as 28 degrees. Butt explains that read training is used “to establish optimum DQS strobe settings” and thereby “enables a reliable data read operation for high speed applications.” Ex. 1029 ¶¶ 33, 36; see Pet. 44–47 (discussing this disclosure). As the Supreme Court has stated, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. “This is the so-called ‘known-technique’ rationale. And if there’s a known technique to address a known problem using ‘prior art elements according to their established functions,’ then there is a motivation to combine.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (citing Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021)). We find that Butt’s read training is such a known technique that would improve Hiraishi’s memory based on the benefits identified in Butt and discussed above, i.e., “establish[ing] optimum DQS strobe settings” to enable “reliable data read operation for high speed applications.” Ex. 1029 ¶¶ 33, 36. timing operation” to account for flight time differences between memory devices, pointing to Hiraishi’s retiming operation that is performed after the data are loaded in FIFO (Read) circuit 302. PO Resp. 45 (citing Ex. 1005 ¶ 130). But Petitioner’s obviousness contentions are based on adjusting the timing of strobes before the data are registered in (loaded into) FIFO (Read) circuit 302. See Pet. 35–37 (asserting that the delayed read strobe is “the DQS signal supplied to FIFO (Read) circuit 302,” which is then used to register the data in FIFO (Read) circuit 302). Thus, Patent Owner is pointing to an entirely different operation. Furthermore, even if Hiraishi discloses some mechanism to cope with misaligned data and strobes, we find that Butt’s technique is a “suitable option” in combination with Hiraishi. See Intel, 61 F.4th at 1381. Indeed, in such a case, Hiraishi and Butt “address the same problem,” and Butt’s read training “was a known way to address that problem[, which] is precisely the reason that there’s a motivation to combine under KSR and [Federal Circuit] precedent.” Intel, 61 F.4th at 1380. Thus, it is not necessary for Petitioner to “identify what details are allegedly missing from Hiraishi which are being provided by Butt,” as asserted by Patent Owner. See PO Resp. 44.” slip op. at 14

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “During the oral hearing, Petitioner argued that the 236 FD has collateral estoppel effect in this proceeding to resolve the disputed issues conclude that the claims are unpatentable as obvious based on the record in this proceeding and, therefore, do not rely on collateral estoppel. We further note that the Court of Appeals for the Federal Circuit has “held that an IPR decision does not have collateral estoppel effect until that decision is affirmed or the parties waive their appeal rights.” United Therapeutics Corp. v. Liquidia Techs., Inc., 74 F.4th 1360, 1372 (Fed. Cir. 2023) (citing XY, LLC v. Trans Ova Genetics, L.C., 890 F.3d 1282, 1294 (Fed. Cir. 2018) (“[A]n affirmance of an invalidity finding, whether from a district court or the Board, has a collateral estoppel effect on all pending or co-pending actions.”)). No notice of appeal has been filed yet in IPR2022-00236, and the time for filing an appeal has not yet expired.” slip op. at 30

  Patent outcomesUS 10,860,506 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,860,506
• Samsung Electronics Co., Ltd / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentable
  PTAB · Oct 17, 2023 · IPR2022-00711 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Hiraishi and Butt, with Ellsberry or Kim added for certain dependent claims; the Tokuhiro grounds were not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have been someone with an advanced degree in electrical or computer engineering and at least two years of work experience in the field of memory module design and operation, or a bachelor’s degree in such engineering disciplines and at least three years of work experience in the field,” and would have had knowledge of various standards for memory, such as Joint Electron Devices Engineering Council (JEDEC) standards, and circuitry used in memories. Pet. 2–3 (citing Ex. 1003 ¶ 37). Patent Owner asserts that it is “applying the level of ordinary skill in the art proposed by Petitioner.” PO Resp. 11. We adopt Petitioner’s uncontested level of ordinary skill with the exception of the phrase “at least,” which introduces vagueness as to the amount of experience.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction We agree with the parties that we need not construe expressly any claim terms to decide the issues before us. See Pet. 9; PO Resp. 11; see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy,” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We disagree with Patent Owner’s arguments because, as Petitioner points out, the evidence shows that DDR3 devices do not always have edge-aligned data and strobes. See Pet. Reply 4. In particular, Patent Owner’s declarant Dr. Mangione-Smith testifies that the DDR3 standard allows a 200 picosecond maximum DQS-to-DQ skew, “which is a very tight tolerance considering the speed at which the memory devices are operating.” Ex. 2006 ¶¶ 122–125 (citing Ex. 1020, 164). During cross-examination of Dr. Mangione-Smith, Petitioner established that a 200 picosecond tolerance is actually a misalignment of over 28 degrees considering the 2.5 Pet. Reply 4 (discussing this testimony). Thus, the evidence shows that DDR3 data and strobes are not always edge-aligned. Patent Owner dismisses this, stating that “Petitioner’s argument is tantamount to saying that the JEDEC standard prescribes a tolerance for DQS/DQ skew that causes errors, which runs counter to the entire standard-setting process.” PO Sur-reply 3–4. On the contrary, we find that Petitioner’s showing underscores that Butt’s read training has direct applicability to a memory that may potentially skew by as much as 28 degrees. Butt explains that read training is used “to establish optimum DQS strobe settings” and thereby “enables a reliable data read operation for high speed applications.” Ex. 1029 ¶¶ 33, 36; see Pet. 44–47 (discussing this disclosure). As the Supreme Court has stated, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. “This is the so-called ‘known-technique’ rationale. And if there’s a known technique to address a known problem using ‘prior art elements according to their established functions,’ then there is a motivation to combine.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (citing Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021)). We find that Butt’s read training is such a known technique that would improve Hiraishi’s memory based on the benefits identified in Butt and discussed above, i.e., “establish[ing] optimum DQS strobe settings” to enable “reliable data read operation for high speed applications.” Ex. 1029 ¶¶ 33, 36. timing operation” to account for flight time differences between memory devices, pointing to Hiraishi’s retiming operation that is performed after the data are loaded in FIFO (Read) circuit 302. PO Resp. 45 (citing Ex. 1005 ¶ 130). But Petitioner’s obviousness contentions are based on adjusting the timing of strobes before the data are registered in (loaded into) FIFO (Read) circuit 302. See Pet. 35–37 (asserting that the delayed read strobe is “the DQS signal supplied to FIFO (Read) circuit 302,” which is then used to register the data in FIFO (Read) circuit 302). Thus, Patent Owner is pointing to an entirely different operation. Furthermore, even if Hiraishi discloses some mechanism to cope with misaligned data and strobes, we find that Butt’s technique is a “suitable option” in combination with Hiraishi. See Intel, 61 F.4th at 1381. Indeed, in such a case, Hiraishi and Butt “address the same problem,” and Butt’s read training “was a known way to address that problem[, which] is precisely the reason that there’s a motivation to combine under KSR and [Federal Circuit] precedent.” Intel, 61 F.4th at 1380. Thus, it is not necessary for Petitioner to “identify what details are allegedly missing from Hiraishi which are being provided by Butt,” as asserted by Patent Owner. See PO Resp. 44.” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “For the reasons discussed above and based on Petitioner’s contentions and evidence, we find that the combination of Hiraishi and Butt teaches “delay[ing] the first read strobe by a first predetermined amount to generate a first delayed read strobe,” “wherein the first predetermined amount is determined based at least on signals received by the first data buffer during one or more previous operations,” as well as the “sample” and “transmit” operations recited in claim 1. We also find, as discussed above, that a person of ordinary skill in the art would have combined the teachings of Hiraishi and Butt and would have had a reasonable expectation of success in arriving at the claimed invention. c) Conclusion for Claim 1 We conclude that the subject matter of claim 1 would have been obvious based on the combined teachings of Hiraishi and Butt.” slip op. at 19

  Patent outcomesUS 10,860,506 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,860,506
• Samsung Display Co., Ltd / Samsung Electronics Co., Ltd et al. v. Polaris Powerled Technologies, LLCInstituted
  PTAB · Oct 16, 2023 · IPR2023-00771 · APJ Kara L Szpondowski · IPR · Institution

  The Board instituted IPR on claims 1–5 and 7 on all asserted grounds after finding a reasonable likelihood that claims 1, 2, and 7 are unpatentable over Kim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio-Sys., 821 F.3d at 1369. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious. slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts a person of ordinary skill in the art “would have [had] a B.S. in Electrical Engineering or equivalent field, with 3–5 years of academic or industry experience in OLED display engineering or comparable industry.” Pet. 12 (citing Ex. 1002 ¶¶ 44–45). Petitioner further asserts that “[a]dditional education could compensate for less practical experience and vice versa.” Id. At this stage of the proceeding, Patent Owner does not dispute the level of ordinary skill in the art, and “applies Petitioner’s definition.” Prelim. Resp. 12. We find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record, and, therefore, adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “3. Analysis At this stage of the proceeding, only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). After reviewing the parties’ arguments and evidence, and on this record, we do not observe a dispute over the meanings of these terms. Accordingly, we determine that we do not need to expressly construe any term for purposes of this Decision.” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “2. Analysis of Independent Claim 1 Petitioner contends that Kim teaches each limitation of independent claim 1. Pet. 19–45. In support, Petitioner identifies certain passages and figures in the references and explains their significance with respect to the corresponding claim limitation. Id. a) [1-Pre]: An active matrix organic light emitting diode (AMOLED) display system comprising an AMOLED display panel receiving a video signal to be displayed on the AMOLED display panel, the AMOLED display panel comprising a plurality of organic light emitting diode (OLED) pixel elements, the AMOLED display system comprising: Petitioner contends that Kim “discloses ‘a light emitting display and a driving method’ for ‘an organic EL (electroluminescent) display’ consisting of multiple pixel circuits ‘for driving an organic EL element (OLED)’ and which can use an ‘active matrix’ method.” Pet. 19–20 (citing Ex. 1007 ¶¶ 5–7). Petitioner relies on Figure 3 of Kim and its corresponding description, including organic EL display panel 100 and pixel circuits 10, to contend that Kim’s “data voltage from the data line Dm” teaches the claimed “video signal to be displayed on the AMOLED display panel.” Pet. 20–21. Petitioner contends that, if not anticipated, a person of ordinary skill in the art “would find it obvious that the Kim system could receive a video signal, and use that signal as the source for the ‘video signals’ explicitly discussed in Kim.” Id. at 21 (citing Ex. 1002 ¶¶ 93–104).” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,259,521
• Google LLC v. Touchstream Technologies, Inc.No claims unpatentable
  PTAB · Oct 2, 2023 · IPR2022-00794 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1, 2, and 6–8 were not shown unpatentable because the prior art combinations did not establish the claimed messaging through the server system.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Tr. 78:6–10. Patent Owner responded “I don’t think it makes any difference for this panel’s determination.” Tr. 78:13–14. We agree and determine that the differences in the level of skill offered by the parties are not so significant as to warrant any changes to the definition set forth in the Decision to Institute. Therefore, we maintain our determination that an ordinarily skilled artisan would have had “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems.” See Inst. Dec. 10. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ289 Patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “1. media player Patent Owner contends that, based on the “intrinsic record . . . an ordinary artisan would have understood the ordinary and customary meaning of ‘media player’ in the ’289 patent refers to application software and does not encompass hardware devices.” PO Resp. 14 (citing Ex. 2022 ¶¶ 92–93). Petitioner asserts that it “has not alleged any hardware device is a ‘media player’” and thus, “the Board need not resolve whether ‘hardware devices’ are encompassed by ‘media player.’” Pet. Reply 1. Rather, Petitioner states the media players relied upon in the Petition are all application software. Pet. Reply 1–2. Petitioner specifically states, “Petitioner has identified three ‘media players’ in the prior art. Two of these—Muthukumarasamy’s ‘Video Player[s]’ and Hayward’s ‘media players’ (Petition, 24–27)—are application software. The third ‘media player’ is likewise not a hardware device.” Pet. Reply 2 (alteration in original). Thus, the parties agree that the term “media player” refers to software and not to a hardware device, and we apply this interpretation in our patentability analysis.” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Muthukumarasamy “controls delivery of selected media content and selects and controls the media devices that deliver the selected media content according to a media type of the selected media content.” Because Muthukumarasamy teaches that the media device displays media content from various disparate sources depending on the media type and media source, a [person of ordinary skill in the art] would have understood the media device loads an appropriate media player depending on the media type and source. Pet. 23–24 (citing Ex. 1008 ¶ 47; Ex. 1005 ¶¶ 66–67). Petitioner, however, proffers insufficient evidence or argument that the content choices described in paragraph 47 of Muthukumarasamy would have led an ordinarily skilled artisan to understand a media player is obtained and loaded in the content presentation device. Rather, Dr. Bederson makes conclusory statements without providing evidence to support the assertions (Ex. 1005 ¶¶ 66–67).” slip op. at 33

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “Muthukumarasamy discussed above. In particular, Petitioner has not explained how Hayward teaches receiving the one or more messages in a system server. Rather, Petitioner relies on Hayward to teach “identify a particular media player for playing content from the file,” and “identify a location of the particular media player.” Pet. 41–45. More specifically, Petitioner contends that a person of ordinary skill in the art “would have been motivated by and found it obvious from Hayward to implement the DBCS (e.g., the RCIBS) to facilitate control of internet content presented at the content presentation device using any number of media players through embedded media player pages, as described in Hayward.” Pet. 65. However, to the extent Petitioner’s assertions rely on “implement[ing] the DBCS (e.g., the RCIBS) to facilitate presentation of internet content at the content presentation device” (Pet. Reply 22), we determine Petitioner has not shown the combined process of Muthukumarasamy and Hayward would include the required messages being received by the server (e.g., zHub/zNode), as opposed to directly by the RCIBS as discussed above. Additionally, Petitioner has not shown, for the zHub/zNode process, that Hayward cures the deficiencies of Muthukumarasamy as set forth above. Accordingly, Petitioner has not shown that the combination of Muthukumarasamy and Hayward teaches “receiving, in a server system, one or more messages from a personal computing device . . . wherein the one or more messages, . . . identify a particular media player for playing content from the file wherein the media player is a computer application operable to present content and control presentation of the content,” as recited in claim 1 and commensurately recited in independent claim 6. Additionally, because claim 2 depends from claim 1 and claims 7 and 8 depend from claim 6, we conclude that Petitioner has not established by a preponderance of evidence that the subject matter of claims 2, 7, and 8 would have been obvious over the combination of Muthukumarasamy and Hayward.” slip op. at 37

  Patent outcomesUS 8,904,289 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,904,289
• Google LLC v. Touchstream Technologies, Inc.No claims unpatentable
  PTAB · Sep 27, 2023 · IPR2022-00795 · APJ Debra K Stephens · IPR · Final written decision

  Claims 1, 2, and 5–9 were not shown unpatentable over Muthukumarasamy alone or with Hayward because the claimed signals identifying a media player were not shown to pass through the asserted server system.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “(Tr. 78:6–10). Patent Owner responded: “I don’t think it makes any difference for this panel’s determination” (Tr. 78:13–14). We agree and determine that the differences in the level of skill offered by the Parties are not so significant as to warrant any changes to the definition set forth in the Decision to Institute. Therefore, we maintain our determination that an ordinarily skilled artisan would have had “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems” (see Inst. Dec. 10). We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ251 Patent and the prior art of record (cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “1. Media player Patent Owner contends, based on the “intrinsic record . . . an ordinary artisan would have understood the ordinary and customary meaning of ‘media player’ in the ’251 Patent refers to application software and does not encompass hardware devices” (PO Resp. 13 (citing Ex. 2022 ¶¶ 81–92, 95)). Petitioner asserts that it “has not alleged any hardware device is a ‘media player’” and thus, “the Board need not resolve whether ‘hardware devices’ are encompassed by ‘media player’” (Pet. Reply 1). Rather, Petitioner states the media players relied upon in the Petition are all software (Pet. Reply 1–2). Petitioner specifically states, “Petitioner has identified three ‘media players’ in the prior art. Two of these—Muthukumarasamy’s ‘Video Player[s]’ and Hayward’s ‘media players’ (Petition, 23–26)—are application software. The third ‘media player’ is likewise not a hardware device” (Pet. Reply 1–2). Thus, the parties agree that the term “media player” refers to software and not to a hardware device, and we apply this interpretation in our patentability analysis.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “2. Additional Terms In light of the record and our findings, reasonings, and conclusions discussed below, we determine that no other terms or phrases in the claims require express construction (see Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)))).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “We determine that Hayward does not cure the deficiencies of Muthukumarasamy discussed supra. In particular, Petitioner has not explained how Hayward teaches receiving the one or more signals in a system server. Rather, Petitioner relies on Hayward to teach “identify a particular media player for playing the video content” (Pet. 38–41). More specifically, Petitioner contends “a [person of ordinary skill in the art] would have been motivated by and found it obvious from Hayward to implement the DBCS (e.g., the RCIBS) to facilitate presentation of internet content at the display device using any number of media players through embedded media player pages, as described in Hayward” (Pet. 15, 40 (citing Ex. 1005 ¶¶ 60, 102)). However, to the extent Petitioner’s assertions rely on “implement[ing] the DBCS (e.g., the RCIBS) to facilitate presentation of internet content at the display device . . .” (Pet. Reply 22 (emphasis omitted)), we determine Petitioner has not shown the combined process of Muthukumarasamy and Hayward would include the required signals being received by the server (e.g., zHub/zNode), as opposed to directly by the RCIBS as discussed above. Additionally, Petitioner has not shown, for the zHub/zNode process, that Hayward cures the deficiencies of Muthukumarasamy as set forth above.” slip op. at 39

  Patent outcomesUS 8,356,251 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,356,251

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.