Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 33
`Entered: May 18, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TOSHIBA CORPORATION, TOSHIBA AMERICA, INC.,
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC.,
`and TOSHIBA AMERICA INFORMATION SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00418
`Patent 5,500,819
`_______________
`
`
`
`Before JACQUELINE WRIGHT BONILLA, TREVOR M. JEFFERSON,
`and DAVID C. McKONE, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`DECISION DENYING PATENT OWNER’S
`REQUEST FOR REHEARING
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`

`
`IPR2014-00418
`Patent 5,500,819
`
`
`I. INTRODUCTION
`Patent Owner, Intellectual Ventures II LLC , filed a Request for Rehearing
`(Paper 29, “Req. Reh’g”) of our Final Decision (Paper 28), dated August 7, 2015,
`which held unpatentable claims 1–11 and 17–19 of U.S. Patent No. 5,500,819
`(Ex. 1001, “the ’819 patent”).1 Patent Owner contends that the Board
`misapprehended or overlooked the proper scope of independent claim 17 and
`dependent claim 18, which, under Patent Owner’s interpretation, the prior art fails
`to disclose. Req. Reh’g 1. Patent Owner contends the Board abused its discretion
`in finding that claims 17–19 are unpatentable under 35 U.S.C. § 103 over Ogawa
`’577,2 Ogawa ’045,3 and JP ’832.4 Id. at 1, 8. Accordingly, Patent Owner requests
`a rehearing for only claims 17–19. Id. at 1. For the reasons stated below, Patent
`Owner’s request for rehearing is denied.
`
`II. STANDARD OF REVIEW
`“The burden of showing a decision should be modified lies with the party
`challenging the decision. The request must specifically identify all matters the
`party believes the Board misapprehended or overlooked, and the place where each
`
`
`1 Although Patent Owner filed a Notice of Appeal on October 9, 2015 (Paper 30),
`Patent Owner subsequently filed an Unopposed Motion to Withdraw Notice of
`Appeal on November 30, 2015. Paper 31 (Ex. 2003). The Federal Circuit granted
`the motion and dismissed Patent Owner’s appeal on December 3, 2015. Paper 31
`(Ex. 2004).
`2 Ex. 1003, Ogawa, US 4,745,577, issued May 17, 1988, filed Nov. 15, 1985
`(“Ogawa ’577”).
`3 Ex. 1005, Ogawa, US 4,773,045, issued Sept. 20, 1988, filed Oct. 16, 1985
`(“Ogawa ’045”).
`4 Ex. 1006, Ogawa, Japanese Patent Application H3-46832, published July 17,
`1991 (Japan priority application 59-245802 for Ogawa ’577) (“JP ’832”).
`
` 2
`
`
`
`
`
`

`
`IPR2014-00418
`Patent 5,500,819
`
`matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R.
`§ 42.71(d).
`
`III. DISCUSSION
`The Board’s Final Decision determined that
`Claim 17 requires writing “the data stored in the slave sense amplifiers”
`back to memory through the master sense amplifiers. [Ex. 1001] at
`12:1–3. Specifically, claim 17 latches the data read from a selected row
`into “a bank of slave sense amplifiers” and “writ[es] the data stored in
`the slave sense amplifiers through the master sense amplifiers to
`different cells in the array.” [Ex. 1001] at 11:17–12:3. Here, claim 17
`recites writing of the data “through the master sense amplifiers” and
`does not limit the writing only to the same bank of slave sense
`amplifiers.
`
`Final Decision 13. Our Final Decision concluded that “we are not persuaded by
`Patent Owner’s argument that claim 17 is limited to the same data using the same
`slave sense amplifiers.” Final Decision 14.
`Patent Owner contends that the Board should reverse its findings because
`“Patent Owner showed in its Response that independent claim 17 of the ’819
`patent requires that data is read from a memory array to a bank of slave sense
`amplifiers and then data is written from the same bank of slave sense amplifiers to
`the memory array.” Req. Reh’g 3 (citing Patent Owner Response (Paper 15, “PO
`Resp.”) at 7; Ex. 2001, Declaration of William R. Huber, D.Sc., P.E., ¶ 32). Patent
`Owner contends that the Board misapprehended the scope of claims 17 and 18 and
`failed to appreciate Patent Owner’s position that “consistently argued that claim 17
`requires that data is read from a memory array to a bank of slave sense amplifiers
`and then data is written from the same bank of slave sense amplifiers to the
`memory array.” Req. Reh’g 4.
`
` 3
`
`
`
`
`
`

`
`IPR2014-00418
`Patent 5,500,819
`
`Specifically, Patent Owner argues that the Board misapprehended the scope
`of dependent claim 18, which requires that an interbank shift occur within the
`recited bank of slave sense amplifiers of claim 17. Id. Patent Owner contends that
`the deposition testimony of Dr. Huber supports the interpretation that the
`antecedent relationship in claims 17 and 18 establishes that shifting occurs within
`the bank of slave sense amplifiers of claim 17. Id. at 6–7. In sum, Patent Owner
`contends that “[a]fter the shifting operation of claim 18 that occurs within the bank
`of slave sense amplifiers, data is written from that same bank of slave sense
`amplifiers to the array.” Id. at 6 (emphasis added). Thus, Patent Owner argues
`that “[r]ead properly, claims 17 and 18 exclude the use of an intervening bank of
`slave sense amplifiers.” Id.
`We are not persuaded by Patent Owner’s argument that claims 17 and 18
`exclude the use of intervening slave sense amplifiers contained in a bank. The
`Board’s Final Decision concluded that independent claim 17, like related
`independent claims 1 and 7,5 specifies that data written through master sense
`amplifiers are latched or stored in “a bank of slave sense amplifiers.” Final
`Decision 13 (citing Ex. 1001, 11:17–12:3). Claim 17 then recites the latched data
`in the slave sense amplifier is written via the master sense amplifier to different
`
`5 We note that Patent Owner argued in its Response and at the oral hearing that the
`scope of independent claim 17 was equivalent to the scope of independent claims 1
`and 7, such that all the claims were limited by embodiments and functions
`described in the ’819 patent. PO Resp. 1–2, 7 n.5 (citing claim 17 and noting that
`claims 1 and 7 recite similar elements), 13–14 (arguing claims 1, 7, and 17
`together); Paper 27 (“Tr.”) 39:17–40:24 (stating that claim 1 and claim 17 have the
`same scope based on how the ’819 patent operates). Although Patent Owner’s
`request addresses only claims 17–19, we note that the arguments presented rely on
`the same argument offered for independent claims 1 and 7. See PO Resp. 8–21
`(arguing independent claims 1, 7, and 17 together).
`
` 4
`
`
`
`
`
`

`
`IPR2014-00418
`Patent 5,500,819
`
`cells in the array. Id. We determined that these limitations required that the same
`data previously stored in the slave sense amplifiers is written via the master sense
`amplifier. We also determined that Claim 17 and its dependent claims 18 and 19
`do not require that the same data is written directly from the slave sense amplifier
`through the master sense amplifier and back to the array without intermediate
`handling of the data by slave sense amplifiers. We declined to import a limitation
`into the writing step of claim 17 (“writing the data stored in the slave sense
`amplifiers through the master sense amplifiers to different cells in the array”) that
`excludes the use of additional slave sense amplifiers as an intermediate step on the
`path through the master sense amplifiers to the array. Final Decision 14–15.
`Our Final Decision cited dependent claim 18 as supporting the interpretation
`that claims 17 and 18 do not exclude an indirect transfer of the data, because
`reading claims 17 and 18 together showed that claim 17 encompassed transfers
`between slave sense amplifiers in the method of writing the data to the array. See
`Final Decision 13. Patent Owner’s rehearing argument relies on an unstated or
`implied construction for “bank of slave sense amplifiers” as recited in claim 17,
`such that claim 17 (as opposed to claims 1 and 7) disallows the transfer of data
`among slave sense amplifiers, where such amplifiers are identified as separate
`“banks” during the writing of data to the array. Req. Reh’g 4–7.
`With respect to the claim term “bank of slave sense amplifiers,” Patent
`Owner did not offer a construction of that term, and stated at oral argument that
`there was no express definition for the term in the ’819 patent specification at
`issue. Tr. 43:10–11 (Patent Owner’s counsel stating that “[t]he patent does not
`have a definition for a bank.”); see Tr. 39:24–40:1 (Patent Owner’s counsel stating
`that “there’s no claim construction issue here and neither side is asking the Board
`to construe a claim term.”). Patent Owner’s confusion may stem from the Final
`
` 5
`
`
`
`
`
`

`
`IPR2014-00418
`Patent 5,500,819
`
`Decision’s use of “bank” in generally describing slave sense amplifiers as recited
`in the claims and the Patent Owner’s arguments directed at claim 17 as
`representative of all the challenged independent claims.6 Our use of the word
`“bank” in the Final Decision did not indicate clearly that we were referring to
`transfer among slave sense amplifiers grouped together in a bank. See Final
`Decision 13–15.
`Patent Owner did not propose a construction of the term “a bank of slave
`sense amplifiers.” To clarify our Decision, we determine that a bank of slave sense
`amplifiers encompasses two or more slave sense amplifiers grouped together. See
`Tr. 12:17–19 (Petitioner’s counsel stating that “a bank of slave sense amplifiers
`should be interpreted to mean one or more banks of slave sense amplifiers”); 61:1–
`7 (Petitioner arguing that “all of the slave sense amplifiers [could be] a single
`bank” as “[t]here’s nothing about a bank that says a bank can’t have sub banks”).
`Although we agree with Patent Owner that dependent claim 18 recites a shift
`within the bank of slave sense amplifiers recited in claim 17 (Req. Reh’g 7), we
`conclude that claim 18 nevertheless supports our determination that the scope of
`claim 17 includes transfers among “slave sense amplifiers” and is not limited to a
`transfer directly from a slave sense amplifier to the array through the master sense
`
`6 As our Final Decision discussed, independent claims 1 and 7 recite “first” and
`“second” “slave circuitry,” while independent claim 17 recite a “bank of slave
`sense amplifiers” and “slave sense amplifier.” Final Decision 13. Patent Owner’s
`Response and oral argument argued these independent claims collectively using
`claim 17, asserting that the scope of all the claims were limited by the move/copy
`operation described in the ’819 patent embodiments. See PO Resp. 2–7
`(discussing move/copy operation), 8–11 (referring to both slave circuits and banks
`of slave sense amplifiers); Tr. 41:1–42:15 (discussing limitation to ’819 patent
`embodiment, move/copy operation and the disavowal of “interbank” transfers in
`the ’819 patent).
`
` 6
`
`
`
`
`
`

`
`IPR2014-00418
`Patent 5,500,819
`
`amplifier. We are not persuaded by Patent Owner’s argument, which arbitrarily
`limits the grouping of the slave sense amplifiers into “a bank” to the embodiment
`disclosed in the ’819 patent specification. Req. Reh’g 5–6 (citing Ex. 1001, 8:1–
`13).
`
`Contrary to Patent Owner’s contentions, we remain persuaded by
`Petitioner’s argument and evidence that claim 17 (similar to the scope of claims 1
`and 7) restricts where the data read from the array is stored—namely, the slave
`sense amplifiers contained in a bank or selected slave circuitry—and how that
`same data is written back to the array—namely, through the master sense
`amplifier. Final Decision 12–18. Claim 17 does not require that the writing step is
`only done directly through the slave sense amplifier where the data is stored and
`the master sense amplifier. The ’819 patent specification embodiment that
`discloses a shift within a bank—or among slave sense amplifiers in a bank of
`amplifiers—is not sufficient to disclose to one of ordinary skill in the art that
`intermediate transfers among slave sense amplifiers is excluded in claim 17 (or
`claims 1 and 7). See Ex. 1001, 7:39–8:13 (describing embodiments including a
`shift operation among slave sense amplifiers before transfer back to the array).
`We also are not persuaded by Patent Owner’s argument that the Board
`misapprehended Patent Owner’s arguments regarding the proper scope of claim 17
`based on the antecedent basis of the claim element “writing the data stored in the
`slave sense amplifiers” to the recited “a bank of slave sense amplifiers.” Req.
`Reh’g 4. Patent Owner failed to provide a construction of “a bank of slave sense
`amplifiers” that distinguished the scope of slave sense amplifiers in claim 17 and
`18 from the slave circuitry in claims 1 and 7 or otherwise limits the grouping of
`amplifiers into a bank. In addition, based on a plain reading of claim 17, we are
`not persuaded by Patent Owner’s argument that the scope of claims 17 and 18
`
` 7
`
`
`
`
`
`

`
`IPR2014-00418
`Patent 5,500,819
`
`expressly or impliedly excludes intermediate slave sense amplifier transfers—
`writing data from a slave sense amplifier via another slave sense amplifier and
`through the master sense amplifier to the array.
`Finally, the testimony of Patent Owner’s witness likewise does not persuade
`us to find that claims 17 and 18 exclude intermediate slave sense amplifier
`transfers in the writing step. Req. Reh’g 6–7 (quoting Ex. 1009, 50:8–51:13). The
`testimony cited by Patent Owner with respect to claim 18 refers to “the selected
`bank of slave sense amplifiers,” to “the first selected set of slave sense amplifiers,”
`and to a “second selected set of slave sense amplifiers.” Req. Reh’g 7 (quoting Ex.
`1009, 50:8–51:13). Neither claim 18 nor claim 17, however, recites a “first” or
`“second” set of slave sense amplifiers. The witness testimony cited by Patent
`Owner conflates the limitations of claim 1, which refer to first and second sets of
`slave circuitry, with the bank of slave amplifiers recited in claim 17. We also note
`that the proffered testimony’s discussion of sets and banks is not supported by
`claim 18 or the ’819 patent specification.
`Accordingly, we are not persuaded that we misapprehended the scope of
`claims 17 and 18 based on the transfer of data among slave sense amplifiers in a
`bank of slave sense amplifiers, such that we erred in concluding that claims 17–19
`are unpatentable as obvious over Ogawa ’577, JP ’832, and Ogawa ’045.
`
`IV. ORDER
`For the reasons given, it is
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`
` 8
`
`
`
`
`
`

`
`IPR2014-00418
`Patent 5,500,819
`
`PETITIONER:
`
`Gianni Minutoli
`Gianni.minutoli@dlapiper.com
`
`Kevin Hamilton
`Kevin.hamilton@dlapiper.com
`
`
`
`PATENT OWNER:
`
`Lori Gordon
`Lgordon-PTAB@skgf.com
`
`Michael Specht
`Mspecht-PTAB@skgf.com
`
`Omar Amin
`Oamin-PTAB@skgf.com
`
`Christian Camarce
`ccamarce-PTAB@skgf.com
`
`James Hietala
`jhietala@intven.com
`
`Tim Seeley
`tim@intven.com
`
`
`
` 9