- Activision Blizzard, Inc. v. Milestone Entertainment, LLCAll claims unpatentablePTAB · Oct 8, 2026 · IPR2025-00711 · APJ Linda E Horner · IPR · Final written decision
Claims 1, 2, 4–7, 9, 11–13, 15, 19, 23, 24, and 29 are unpatentable as obvious over Kelly, Kelly and Paulsen, or Walker and Schneier.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“B. Level of Ordinary Skill in the Art There is no evidentiary dispute about the level of ordinary skill in the art.7 Based on the testimony of Mr. Crevelt, we determine that a person of ordinary skill in the art would have had at least a bachelor’s degree in computer science or computer engineering, with at least three years of experience in game development. Pet. 12 (citing Ex. 1003 ¶¶ 100–103). Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Id. We determine that the level of ordinary skill in the art adopted above is consistent with the level of technical understanding and competence reflected in the ’164 patent Specification and the asserted prior art references, based on our review of the record.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that it is not necessary for the Board to provide an express construction for any claim term because the Petition “establishes the prior art meets each claim limitation under any reasonable construction.” Pet. 13. Patent Owner similarly submits that “[t]he Board need not construe any terms at this stage, because under any reasonable construction of the claim terms, the prior art fails to disclose or suggest the claimed features.” Resp. 8–9. Patent Owner notes, however that “it has relied on the plain meaning of ‘frequency of play’ in Claim 7.” Id. at 9. We agree that no explicit claim construction is necessary for this decision because, even were we to adopt Patent Owner’s proffered plain meaning of “frequency of play,” Petitioner has demonstrated that the prior art renders obvious this claim limitation. To the extent the parties’ arguments raise any implicit issues of claim construction, we address those issues within the context in which they are raised in our analysis below.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner does not contest Petitioner’s showing that Kelly renders obvious the subject matter of claims 1, 2, 4–6, 11–13, 15, 19, 23, 24, and 29. Resp., passim; Tr. 50:4–13.8 We have reviewed Petitioner’s arguments and 8 Patent Owner argued in its Preliminary Response that Kelly does not disclose limitations [1.c.iii] and [1.c.v]. Prelim. Resp. 10–12. In our Institution Decision, we did not find these contentions persuasive based on the initial record. Dec. 20–24. Patent Owner has not presented these or any other arguments contesting Ground 1 as to claim 1 in its Response. Resp., the evidence and, based on that analysis, we find that Petitioner has shown by a preponderance of evidence that Kelly renders obvious the subject matter recited in these claims.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“and Paulsen render obvious claims 2 and 4. Pet. 36–40. Petitioner submits that to the extent Kelly’s player account is not player’s club information or information on non-cash amounts, a person having ordinary skill in the art would have been motivated to implement these features based on the teachings of Paulsen. Id. Specifically, Petitioner asserts that Paulsen teaches player tracking cards and player tracking programs including player tracking points. Id. at 38–40 (citing Ex. 1007 ¶¶ 8, 9, 49). Petitioner argues that a person having ordinary skill in the art would have been led to add these features to Kelly’s system to provide a more detailed view of tracking play, which would allow for rewarding patronage and engagement. Id. at 36–37, 39–40 (citing Ex. 1003 ¶ 264; Ex. 1007 ¶ 10). Paulsen discloses a “gaming machine bonusing method utilizing a player tracking card.” Ex. 1007, code (54). Paulsen discloses that player tracking programs and player tracking cards were used in the art to provide rewards, or “comps,” to players based on the player’s level of patronage (e.g., to the player’s playing frequency and/or total amount of game plays at a given casino). Id. ¶ 8. These rewards were intended to maintain a player’s interest in additional game play during a visit and provide loyalty incentives to players. Id. at ¶ 9.” slip op. at 29
Patent outcomesUS 11,335,164 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 11,335,164 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Fendgo, LLCAll claims unpatentablePTAB · May 5, 2025 · IPR2024-00113 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 9–15 are unpatentable as obvious: claims 9, 11 over Zellner and Kim; claim 15 over Walker; and claims 9–14 over Martin and Kim, with claim 14 also over Martin, Kim, and Dixit.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not address, let alone dispute, Petitioner’s proposed level of skill in the art, which is consistent the problems, solutions, technology, and educational level set forth in the ’404 patent and the prior art references asserted by Petitioner. See generally PO Resp.; Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we apply Petitioner’s proposed level in this Decision.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Reviewing the written description, we find no lexicographical definition or disavowal related to “owner identification information” in the ’404 patent. Instead, we find the term mentioned in relation to embodiments and examples. See, e.g., Ex. 1001, code (57), 4:17–25. Claim 8 of the ’404 patent recites that “owner identification information includes a name and a description of the owner of the mobile device” but, as Petitioner notes, the doctrine of claim differentiation suggests the term as used in claim 1 should be construed more broadly. Paper 28, 2; Littelfuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376, 1380 (Fed. Cir. 2022) (citing Ortho-McNeil Pharm. v. Mylan Lab'ys, Inc., 520 F.3d 1358, 1362 (Fed. Cir. 2008) (“[T]his court strives to reach a claim construction that does not render claim language in dependent claims meaningless.”)). Patent Owner is correct that “owner identification information” in claim 1 of the ’404 patent must be construed to encompass the name and description of the mobile device’s owner, as recited in claim 8. Paper 29, 2. However, we decline to restrict the term to exclude other indicia that may identify the device owner because that is not warranted by the written description, claims, and file history of the ’404 patent. Consequently, we construe “owner identification information” to mean “information that identifies the owner of the mobile device” under its ordinary and customary meaning as set forth in the ’404 patent and its file history. As recited in claim 8 of the ’404 patent, the term includes, but is not limited to, the name and description of the mobile device owner.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“have been aware of the need to implement techniques to reduce risk of false activation of panic button devices, and Zellner expressly recognizes this problem. Pet. 43–44 (citing Ex. 1008, 13:40–42; Ex. 1002 ¶¶ 242, 244). Petitioner asserts that Kim’s technique of requiring the user to press its device’s emergency key button a plurality of times was a known way to reduce false activations. Id. at 44 (citing Ex. 1002 ¶ 245). Petitioner posits that a POSITA would have considered the combination of Zellner and Kim to amount to the use of a known technique to improve a similar device in the same way, as well as the application of a known technique to a known device ready for improvement to yield predictable results. Id. at 44–45 (citing Ex. 1002 ¶¶ 246–247). These are recognized rationales supporting a motivation to combine. KSR, 550 U.S. at 417. We agree with Petitioner that a POSITA would have been motivated to modify Zellner’s device to require multiple button presses as taught by Kim in order to reduce false activations. Petitioner further contends that a POSITA would have had a reasonable expectation of success in modifying Zellner’s panic button to require three presses for activation, and that examples of prior art showed how this could be done. Pet. 45 (citing Ex. 1002 ¶¶ 248–251). Since Kim expressly discloses implementation of this feature, we agree with Petitioner that a POSITA would have expected success in combining Zellner and Kim. Ex. 1008, 13:40–42.” slip op. at 37
Patent outcomesUS 11,265,404 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,265,404 - ZF North America, Inc. / ZF Active Safety US Inc. v. Stoneridge Control Devices, Inc.All claims unpatentablePTAB · Jun 12, 2024 · IPR2023-00273 · APJ Scott C Moore · IPR · Final written decision
Claims 5, 7, 8, 14–19, 24, and 25 are unpatentable under §103 over the grounds decided; the motion to exclude was denied in part and dismissed in part.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Both parties agree that one skilled in the relevant art would have had a bachelor’s degree in a relevant engineering discipline, plus at least two years of experience with what each believes to be the relevant technology. Though Patent Owner objects to explicitly listing a bachelor’s degree in electrical engineering as a qualifying educational background, its proposed formulation includes open-ended language (i.e., “or a similar discipline”) that is broad enough to encompass electrical engineering degrees. Patent Owner also concedes that Dr. Lequesne, who has a bachelor’s degree in electrical engineering, is qualified to give testimony from the perspective of one of ordinary skill in the art. See Hrg. Tr. 36:9–21. Accordingly, it does not appear that there is a substantive dispute regarding the educational requirements that is relevant to this proceeding. As to the necessary experience, Petitioner correctly points out that “most” claims of the ’415 Patent do not recite isolators or require attenuation or damping. Pet. Reply 23. However, the challenged independent claims (claims 5, 8, 16, and 17) all recite at least an isolator with a damping coefficient, and the ’415 Patent repeatedly mentions noise attenuation as being a goal of the claimed invention. See, e.g., Ex. 1001, 1:53–55, 5:33– 56. Patent Owner’s proposal also uses the disjunctive “or,” and thus is broad one or more of vibration isolation, vibration damping, or noise attenuation. On this record, we adopt Patent Owner’s proposal, and determine that one of ordinary skill in the art to which the ’415 Patent pertains would have had a bachelor’s degree (or equivalent) in mechanical engineering, automotive engineering, or a similar discipline, and at least two years of experience with vibration isolation, vibration damping, or noise attenuation in the context of mechanical or electromechanical systems. We find that this formulation is consistent with the level of skill reflected in the cited prior art references. See Okajima, 261 F.3d at 1355. We note, however, that none of the issues in this case appears to turn on differences between the parties’ proposed formulations, and that all of the findings and conclusions set forth below would have remained the same had we instead adopted Petitioner’s proposed formulation. C.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“We begin our analysis of this dispute by looking at the language of the claims themselves. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). In so doing, we note that Patent Owner is correct in asserting that certain claims recite a vibration isolator disposed between a sub-frame and an actuator housing. See Ex. 1001, Claims 16, 17; PO Resp. 17. Other challenged claims, however, do not contain any limitations that pertain to an actuator housing. See Ex. 1001, claims 5, 7, 8. Patent Owner’s proposed construction, thus, would incorporate new limitations pertaining to an actuator housing into at least claims 5, 7, and 8. Next, we turn to the specification. See Vitronics, 90 F.3d at 1582. In so doing, we note that it is generally improper to incorporate limitations from the specification into the claims because 35 U.S.C. § 112 “requires that the claims themselves set forth the limits of the patent grant, [and] also definitions of terms to the exact representations depicted in the embodiments.” Phillips, 415 F.3d at 1323. There are, of course, exceptions. A specification may contain a “special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.” Akamai Techs., Inc. v. Limelight Networks, Inc., 805 F.3d 1368, 1375 (Fed. Cir. 2015). But any such special definition must “clearly redefine a claim term ‘so as to put a reasonable competitor or one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.’” Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000) (quoting Process Control Corp. v. Hydreclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999)). The specification also may “reveal an intentional disclaimer, or disavowal of claim scope by the inventor.” Phillips, 415. F.3d at 1316. But any such disclaimer “must be clear.” Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1357 (Fed. Cir. 2006). Patent Owner is correct in its assertion that the specific embodiments disclosed in the ’415 Patent specification have separate sub-frames and actuator housings. See PO Resp. 16–17 (citing Ex. 1001, 4:44–54, 6:36–54). But the specification also makes clear that the applicant intended for these embodiments not to be construed as limiting the scope of the claims. See Ex. 1001, 8:36–42 (clarifying that the disclosed embodiments “are set forth here by way of illustration but not of limitation”). Patent Owner identifies nothing in the specification that rises to level of a definition or clear and intentional disclaimer or disavowal of claim scope, and we see no such definition or disclaimer in the specification. Patent Owner’s reliance on In re Smith Int’l, Inc., 871 F.3d 1375 (Fed. Cir. 2017), is also misplaced. In re broadest reasonable interpretation standard—a standard that does not apply in this case. See id. at 1381–82. Moreover, the claim construction at issue in Smith was so broad that the Federal Circuit characterized it as “generic.” See id. at 1382. Here, the parties agree that the claim term sub-frame has a specific meaning: a frame for a sub-assembly. See PO Resp. 16; Pet. Reply 13; Hrg. Tr. 13:7–12. Nothing in Smith requires or suggests that under the Phillips standard, we must interpret the non-generic claim term “sub-frame” in a way that would incorporate new limitations pertaining to an actuator housing into claims that do not even mention an actuator housing.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We decline to find Dr. Lequesne less credible based solely on his electrical engineering degree and relative level of experience with noise vibration and damping. As noted above, Patent Owner does not dispute that Dr. Lequesne is qualified to give testimony from the perspective of one of ordinary skill in the art. Petitioner asserts, and Patent Owner does not dispute, that “Dr. Lequesne has spent his 40-year career as a designer in the automotive industry, has worked on EPBA [electronic parking brake actuators and NVH [noise, vibration, and harshness].” Pet. Reply 24 (citing Ex. 1002 ¶¶ 7–9; Ex. 2007, 10:6–17, 11:21–16:3, 20:3–31:8; Ex. 1023). On this record, we find Dr. Lequesne qualified to provide expert testimony on the subject matter of the challenged claims of the ’415 Patent and asserted prior art references because he has a degree in electrical engineering, which is a “similar discipline,” and at least two years of experience with “vibration isolation, vibration damping, or noise attenuation in the context of mechanical or electromechanical systems.” See supra § III.B; Ex. 1002 ¶¶ 4–12 (outlining Dr. Lequesne’s education and experience); Hrg. Tr. 36:9– 21 (Patent Owner’s counsel conceding that Dr. Lequesne is qualified to provide expert testimony). In judging the credibility of competing witnesses, we have weighed their testimony, taking into account the witnesses’ different educational qualifications and experiential backgrounds as they pertain to the ’415 Patent, as well as whether the witnesses offer corroboration for their opinions, and whether those opinions are consistent with the ’415 Patent, the prior art, and their cross-examination testimony. E.” slip op. at 14
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We agree with Petitioner that Patent Owner’s purported evidence of copying, industry praise, and commercial success lacks nexus to the claimed invention. To show that the accused devices at issue, i.e., the purportedly copied, praised, and commercially successful products sold be Petitioner, are coextensive with at least one independent claim of the ’415 Patent, Patent Owner relies on the claim charts shown in Exhibit 2016. PO Resp. 62; Ex. 2005 ¶¶ 163–166. Patent Owner identifies those charts as “Exhibits A and B from Patent Owner’s Infringement Contentions, served in Stoneridge Control Devices, Inc. v. ZF North America, Inc. et al., U.S. District Court for the Eastern District of Michigan, Case No. 2:22cv10289.” Id. at viii. As such, the claim charts are apparently attorney argument summarizing Patent Owner’s allegations in the district court, not substantive evidence. See Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is not evidence.”). Patent Owner’s attempt to challenged claims also constitutes an improper incorporation by reference. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”); PTAB Consolidated Trial Practice Guide 35–36; Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 8–10 (PTAB Aug. 29, 2014) (informative). Moreover, Dr. Stein’s declaration lacks any explanation or analysis to support his belief that “there is a component in each of the photographed products” in the claim charts “that corresponds to each one of the claim elements,” his “overall agreement with the positions taken in the claim charts,” or his “understand[ing]” that the accused devices “in Ex. 2016 are co-extensive in scope with the ’415 Patent.” Ex. 2005 ¶¶ 163, 166. Dr. Stein’s declaration merely repeats, in conclusory fashion, that there is a nexus between the accused devices and the claimed invention, and is thus insufficient to establish a nexus. See Bosch Auto. Serv. Sol., LLC v. Matal, 878 F.3d 1027, 1037 (Fed. Cir. 2017) (“As the Board recognized, however, the Pierce declaration lacks any explanation or analysis to support his asserted ‘understand[ing]’ that these commercial reset tools are covered by, or coextensive with, the claims of the ’796 patent. The Board permissibly concluded that this conclusory testimony lacks foundation.”); In re Cree, Inc., 818 F.3d 694, 703–04 (Fed. Cir. 2016) (“We agree with the Board that Dr. Brandes’ declaration merely repeats, in conclusory fashion, that there is a nexus between the success of white LEDs and the claimed invention.”). Patent Owner has thus failed to make a sufficient showing to establish a presumption of nexus. its secondary considerations evidence is a direct result of the unique characteristics of the claimed invention. For the reasons explained above, we conclude that Patent Owner’s evidence purportedly showing copying, industry praise, and commercial success is entitled to little weight in our obviousness analysis because Patent Owner has not shown a sufficient nexus between the evidence presented and the invention claimed in any of the challenged claims. F.” slip op. at 17
Patent outcomesUS 7,021,415 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,021,415 - Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Dec 6, 2023 · IPR2023-00406 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Grounds 1–3; the Board did not reach Grounds 4–5 and dismissed Petitioner’s motion to exclude as moot.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“e) Conclusion on Motivation to Combine Harris and the FBDIMM Standards On this record, Petitioner has shown by a preponderance of the evidence that a person of ordinary skill in the art would have combined Harris and the FBDIMM standards since Harris states that its memory module may include fully buffered DIMMs (FBDs). Ex. 1023 ¶ 9. We agree that one of ordinary skill in the art would have recognized Harris’s mention of FBDIMMs as a standard and looked to the FBDIMM Standards for information concerning the voltage values standardized for use in an FBDIMM. Ex. 1027, 83; Ex. 1028, 9. For these reasons and others set forth above, we determine that one of ordinary skill in the art would have combined Harris and the FBDIMM Standards with a reasonable expectation of success.” slip op. at 41
- ExcludeMotion to exclude, deniedDenied
“H. Motion to Exclude Petitioner seeks to exclude materials referenced in three URLs submitted with Patent Owner’s Sur-Reply on August 4, 2023. Paper 33 (citing Paper 31, 1 n.2, 24, 26). Because we do not rely on any of these URLs in a manner adverse to Petitioner, we dismiss the Motion to Exclude as moot.” slip op. at 89
Patent outcomesUS 11,016,918 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,016,918 - Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Dec 6, 2023 · IPR2022-00996 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Grounds 1–3; Grounds 4–5 were not reached because those claims were already shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“e) Conclusion on Motivation to Combine Harris and the FBDIMM Standards On this record, Petitioner has shown by a preponderance of the evidence that a person of ordinary skill in the art would have combined Harris and the FBDIMM standards since Harris states that its memory module may include fully buffered DIMMs (FBDs). Ex. 1023 ¶ 9. We agree that one of ordinary skill in the art would have recognized Harris’s mention of FBDIMMs as a standard and looked to the FBDIMM Standards for information concerning the voltage values standardized for use in an FBDIMM. Ex. 1027, 83; Ex. 1028, 9. For these reasons and others set forth above, we determine that one of ordinary skill in the art would have combined Harris and the FBDIMM Standards with a reasonable expectation of success.” slip op. at 41
- ExcludeMotion to exclude, deniedDenied
“H. Motion to Exclude Petitioner seeks to exclude materials referenced in three URLs submitted with Patent Owner’s Sur-Reply on August 4, 2023. Paper 33 (citing Paper 31, 1 n.2, 24, 26). Because we do not rely on any of these URLs in a manner adverse to Petitioner, we dismiss the Motion to Exclude as moot.” slip op. at 89
- BurdenFwd all claims unpatentableUnpatentable
“a preponderance of the evidence that claims 1–30 of the ’918 patent are unpatentable. V. ORDER Accordingly, it is: ORDERED that claims 1–30 of the ’918 patent have been shown to be unpatentable;” slip op. at 89
Patent outcomesUS 11,016,918 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,016,918 - Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Dec 5, 2023 · IPR2023-00405 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Harris, the FBDIMM Standards, and Amidi; the Board did not reach the Spiers grounds.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“the combination of Harris and FBDIMM Standards and relies on the Declaration of Dr. Andrew Wolfe (Ex. 1003) in support. Pet. 14–40. For the reasons that follow, we are persuaded that the evidence, including Dr. Wolfe’s testimony, supports Petitioner’s showing and establishes by a preponderance of the evidence that these claims are unpatentable.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person of ordinary skill in the art “would have had an advanced degree in electrical or computer engineering, or a related field, and two years working or studying in the field of design or development of memory systems, or a bachelor’s degree in such engineering disciplines and at least three years working in the field.” Pet. 7–8 (citing Ex. 1003 ¶ 61). Petitioner contends that additional training can substitute for educational or research experience, and vice versa. Id. at 8. Petitioner asserts that such a hypothetical person would have been familiar with the JEDEC industry standards, and knowledgeable about the design and operation of standardized DRAM and SDRAM memory devices and memory modules and how they interacted with a memory controller and other parts of a computer system, including standard communication busses and protocols, such as PCI and SMBus busses and protocols. Id. Petitioner further contends that such “a hypothetical person would also have been familiar with the structure and operation of circuitry used to access and control computer memories, including sophisticated circuits such as ASICs, FPGAs, and CPLDs, and more low-level circuits such as tri-state buffers.” Id. Petitioner further asserts that such “a hypothetical person would further have been familiar with voltage supply requirements of such structures (e.g., memory modules, memory devices, memory controller, and associated access and control circuitry), including voltage conversion and voltage regulation circuitry.” Id. Patent Owner indicates “[f]or the purposes of this [Response], Patent Owner is applying the level of ordinary skill in the art proposed by Petitioner.” Resp. 2. The evidence that Petitioner presents mostly applies to the educational level and experience of workers in the field, but also touches upon other factors as well, including problems and solutions in the prior art and complexity of the technology. See Pet. 7–8. We find Petitioner’s proposal is consistent with the level of skill in the art reflected by the ’054 patent and the prior art of record, and, therefore, we adopt Petitioner’s proposed level of ordinary skill in the art, with the exception of the open-ended language “at least,” which introduces ambiguity and may encompass skill levels beyond ordinary.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“The District Court’s Claim Construction Order (Ex. 2032) issued after our Institution Decision (Paper 11). Although Petitioner argued in the District Court litigation that the claim preambles were not limiting, Petitioner does not appear to maintain that argument here following the District Court’s determination that the preambles are limiting. Ex. 2032, 35. Since the term is recited in both the preambles and bodies of these claims, there is evidence that the inventors of the ’054 patent intended the term to limit the claim, as the District Court determined. See Catalina Mktg. Int’l., Inc. v. Coolsavings,com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Bell Commc’ns Rsch., Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.”)).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Petitioner’s contention that “memory module” is not limited to “main memory modules . . . designed to connect to the primary memory controller.” See Reply 2. The ’054 patent states In certain embodiments, the device contains a high density Flash memory with a low density DRAM, wherein the DRAM is used as a data buffer for read/write operation. The Flash serves as the main memory. Ex. 1001, 11:3–6 (emphases added). This is the only mention of “main memory” in the ’054 patent. That the Flash memory serves as “main memory” in “certain embodiments” implies that there may be other embodiments in which this is not the case. Accordingly, we agree with Petitioner that the term “memory module” is not limited to “main memory modules . . . designed to connect to the primary memory controller.” We agree with Patent Owner that the “memory module” includes structure to connect with a “host system” including its memory controller. See, e.g., Ex. 1001, code (57), 12:52–59. The claims do not mention a “memory controller,” but they do mention that the “memory module” has an “interface” to connect with a “host system.” Ex. 1001, 38:20–25 (claim 1), 39:63–65 (claim 16), 41:6–8 (claim 24). That the “memory module” has structure for connecting to the host system’s memory controller may thus be implied from the claims. We agree with Petitioner that the District Court’s determination was that the preambles (presumably of claims 1, 4, 6, 11, 16 and 25) are limiting. Ex. 2032, 35. To the extent that the District Court’s determination construed “memory module” to include structure necessary to connect to a memory controller, our construction of “memory module” is consistent.” slip op. at 16
Patent outcomesUS 11,232,054 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,232,054 - Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Dec 5, 2023 · IPR2022-00999 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Harris, the FBDIMM Standards, and Amidi, with Hajeck also supporting Ground 3; Grounds 4 and 5 were not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“art include “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case.” Id. at 696–97. The prior art may reflect an appropriate level of skill. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001). Petitioner asserts a person of ordinary skill in the art “would have had an advanced degree in electrical or computer engineering, or a related field, and two years working or studying in the field of design or development of memory systems, or a bachelor’s degree in such engineering disciplines and at least three years working in the field.” Pet. 7–8 (citing Ex. 1003 ¶ 61). Petitioner contends that additional training can substitute for educational or research experience, and vice versa. Id. at 8. Petitioner asserts that such a hypothetical person would have been familiar with the JEDEC industry standards, and knowledgeable about the design and operation of standardized DRAM and SDRAM memory devices and memory modules and how they interacted with a memory controller and other parts of a computer system, including standard communication busses and protocols, such as PCI and SMBus busses and protocols. Id. Petitioner further contends that such “a hypothetical person would also have been familiar with the structure and operation of circuitry used to access and control computer memories, including sophisticated circuits such as ASICs, FPGAs, and CPLDs, and more low-level circuits such as tri-state buffers.” Id. Petitioner further asserts that such “a hypothetical person would further have been familiar with voltage supply requirements of such structures (e.g., memory modules, memory devices, memory controller, and associated access and control circuitry), including voltage conversion and voltage regulation circuitry.” Id. Patent Owner indicates “[f]or the purposes of this [Response], Patent Owner is applying the level of ordinary skill in the art proposed by Petitioner.” Resp. 2. The evidence that Petitioner presents mostly applies to the educational level and experience of workers in the field, but also touches upon other factors as well, including problems and solutions in the prior art and complexity of the technology. See Pet. 7–8. We find Petitioner’s proposal is consistent with the level of skill in the art reflected by the ’054 patent and the prior art of record, and, therefore, we adopt Petitioner’s proposed level of ordinary skill in the art, with the exception of the open-ended language “at least,” which introduces ambiguity and may encompass skill levels beyond ordinary.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“The District Court’s Claim Construction Order (Ex. 2032) issued after our Institution Decision (Paper 11). Although Petitioner argued in the District Court litigation that the claim preambles were not limiting, Petitioner does not appear to maintain that argument here following the District Court’s determination that the preambles are limiting. Ex. 2032, 35. Since the term is recited in both the preambles and bodies of these claims, there is evidence that the inventors of the ’054 patent intended the term to limit the claim, as the District Court determined. See Catalina Mktg. Int’l., Inc. v. Coolsavings,com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Bell Commc’ns Rsch., Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.”)).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Patent Owner that the “memory module” includes structure to connect with a “host system” including its memory controller. See, e.g., Ex. 1001, code (57), 12:52–59. The claims do not mention a “memory controller,” but they do mention that the “memory module” has an “interface” to connect with a “host system.” Ex. 1001, 38:20–25 (claim 1), 39:63–65 (claim 16), 41:6–8 (claim 24). That the “memory module” has structure for connecting to the host system’s memory controller may thus be implied from the claims. We agree with Petitioner that the District Court’s determination was that the preambles (presumably of claims 1, 4, 6, 11, 16 and 25) are limiting. Ex. 2032, 35. To the extent that the District Court’s determination construed “memory module” to include structure necessary to connect to a memory controller, our construction of “memory module” is consistent.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“conversion for double-rank DIMMs can be accommodated with a form factor design of approximately about one square inch (both sides of the printed circuit board).” Ex. 1023 ¶ 13. Thus, Harris indicates that the VRM circuitry to generate two regulated voltages can fit within this space. Patent Owner argues that Petitioner’s evidence shows that each ADP1821 converter package would be about 0.193 by 0.236 inches. Sur-Reply 12 (citing Ex. 1078, 20–23). This means three ADP1821 converters would occupy about 40% of the available space. Patent Owner does not demonstrate that the remaining 60% of available space would have been insufficient to accommodate the additional components required for three voltage converters. Id. at 12–13. In any case, we do not view Harris’s disclosure of “approximately about one square inch” to limit the applicability of its teachings to a person of ordinary skill in the art. In the same paragraph, Harris states that the form factor “may be suitably modified.” Ex. 1023 ¶ 13. Patent Owner further argues that “independent voltage sources for different voltages would require specific control circuitry to delay and more precisely control each voltage source’s ramping rate, adding complexity and cost without commensurate benefits.” Sur-Reply 14 (citing Ex. 2061 ¶ 90). However, Dr. Wolfe states that it is simpler to use multiple regulators for multiple voltages since a single regulator that generates multiple voltages is more complicated than multiple regulators. Ex. 2060, 53:16–54:14, 89:1–21, cited in Reply 14. Dr. Wolfe further indicates that buck converters can be in some applications “extremely small.” Ex. 2060, 89:11–15. Dr. Wolfe further testifies that multiple smaller converters may be less costly than a larger single converter because of component costs, separated spaces available for converters on circuit board, and other “ordinary engineering factors.” Id. at 45:21–46:10. Although Patent Owner may be correct that individual control of multiple voltage regulators would have required additional control circuitry, this does not meaningfully undermine the benefits that Petitioner mentions including permitting power sequencing, independent control of voltages, improved efficiency without generating excess heat or requiring cooling devices, and saving power. Pet. 29–30 (citing id. at 14–19; Ex. 1028, 17–20; Ex. 1026, 2–3, 9; Ex. 1028, 30–32; Ex. 1040, 1, 23–24 (Figs. 22–25); Ex. 1041, 1, 13; Ex. 1048, 3; Ex. 1058, 5; Ex. 1059, 5:23–30; Ex. 1062, 11, 13; Ex. 1064 ¶ 101; Ex. 1003 ¶¶ 240, 255). Dr. Wolfe testified that, in at least some circumstances, multiple converters may be less complicated, less costly, and take up less space. Ex. 2060, 45:21–46:10, 89:11–15. Patent Owner’s argument that a single converter generating multiple voltages would be better in some circumstances does not negate that Petitioner’s proposed use of multiple converters for multiple voltages would have been preferred in other circumstances that a person of ordinary skill in the art would have recognized. See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (“Our caselaw is clear. It’s not necessary to show that a combination is ‘the best option, only that it be a suitable option.’” quoting PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014)). Thus, Patent Owner’s argument does not undermine Petitioner’s showing of a motivation to combine Harris and the FBDIMM Standards.” slip op. at 25
Patent outcomesUS 11,232,054 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,232,054 - Google LLC v. Parus Holdings, Inc.All claims unpatentablePTAB · Nov 6, 2023 · IPR2022-00805 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–26 are unpatentable: claims 1–26 as obvious over Wise and Woods, claims 1–25 over Wise and Dasan, and claim 26 over Wise, Dasan, and Uppaluru.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 6–7. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Mr. Lipoff supports this articulation, and Patent Owner makes the same proposal. See Ex. 1002 ¶ 77; PO Resp. 1. Because we find the parties’ agreed proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by Mr. Lipoff’s testimony, we adopt it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner does not believe that any express constructions are necessary” to resolve the parties’ dispute, and Patent Owner agrees that “claim construction is unnecessary.” See Pet. 7; PO Resp. 1. On the record before us, we do not find it necessary to construe any term for this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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 10
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Mr. Occhiogrosso made similarly inconsistent statements on this point on cross-examination. For example, when asked whether the claim requires that the “content-descriptor file be a different file,” Mr. Occhiogrosso responded that “[i]n my opinion, there’s nothing inherent that says it has to be stored in the same physical data file on the same storage medium.” Ex. 1057, 68:11–23. But when asked, “Could the content-descriptor file be one of the web pages that make up a website?” he responded, “In my opinion, no.” Id. at 70:9–13. Notwithstanding such inconsistent statements, we find that, taken as a whole, Mr. Occhiogrosso’s testimony reflects an opinion contrary to that of Mr. Lipoff, namely the recited “content-descriptor file” must be a file separate and distinct from an HTML web page. The Federal Circuit has “viewed extrinsic evidence in general as less reliable than the patent and its prosecution history in determining how to read claim terms,” e.g., because expert testimony “is generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence.” Phillips, 415 F.3d at 1318. In this instance, although we discern certain (but contrary) positions in the experts’ opinions on this point, the inconsistencies in their cross-examination testimony limit our confidence in those opinions. We accordingly give greater weight to the intrinsic evidence, which more strongly supports Petitioner’s position. We accordingly determine that Petitioner’s showing with respect to this limitation is sufficient.” slip op. at 39
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Patent Owner disputes Petitioner’s reasoning because Petitioner’s “motivation to combine argument is centered on the periodic retrieval of information from an information source (webpage) and not on an information source that is periodically updated,” as the claim recites. PO Resp. 24. Nevertheless, Patent Owner concedes that Petitioner “establishes . . . that the Wise website information sources are periodically updated,” which Petitioner correctly observes “is all that the claim requires.” Id.; Reply 9. Patent Owner reasons that there is no motivation to combine teachings from the two references because “the Wise system alone already provides the most up-to-date and complete information to the user.” PO Resp. 27. But the Federal Circuit has criticized such an argument as “reasoning [that] belies its conclusion”: “[t]hat [two prior art references] address the same problem and that [one of the references] was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and [Federal Circuit] precedent.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (quoted in Pet. 10– 11). This is the “known-technique” rationale, in which “[t]here is a motivation to combine when a known 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.” Id. at 1380–1381 (citing KSR, 550 U.S. at 417). Implementing periodic updating of information sources as taught by Dasan would be within the skill of an ordinary artisan to implement in Wise’s system. We accordingly determine that Petitioner articulates sufficient reasoning, supported by rational underpinning, to effect the combination it proposes and to meet the first aspect of the preamble.” slip op. at 19
Patent outcomesUS 9,769,314 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,769,314 - Samsung Electronics Co., Ltd / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,860,506 - Samsung Electronics Co., Ltd / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,860,506
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.