Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper No. 13
` Filed: March 20, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`LIMESTONE MEMORY SYSTEMS LLC,
`Patent Owner.
`_____________
`
`Case IPR2016-01567
`Patent 5,894,441
`_____________
`
`
`
`Before BART A. GERSTENBLITH, BARBARA A. PARVIS, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Request for Rehearing (Paper 12,
`“Req. Reh’g”) of the Decision Denying Institution of Inter Partes Review of
`U.S. Patent No. 5,894,441 (Ex. 1003, “the ’441 patent”) (Paper 11, “Dec.”).
`Petitioner requests reconsideration of the denial of institution and contends
`
`
`571.272.7822
`
`
`
`
`
`Paper No. 13
` Filed: March 20, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`LIMESTONE MEMORY SYSTEMS LLC,
`Patent Owner.
`_____________
`
`Case IPR2016-01567
`Patent 5,894,441
`_____________
`
`
`
`Before BART A. GERSTENBLITH, BARBARA A. PARVIS, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Request for Rehearing (Paper 12,
`“Req. Reh’g”) of the Decision Denying Institution of Inter Partes Review of
`U.S. Patent No. 5,894,441 (Ex. 1003, “the ’441 patent”) (Paper 11, “Dec.”).
`Petitioner requests reconsideration of the denial of institution and contends
`
`
`
`IPR2016-01567
`Patent 5,894,441
`
`that we misapprehended and overlooked disclosure of Horiguchi, U.S.
`Patent No. 5,265,055 (Ex. 1005). Req. Reh’g 2.
`
`STANDARD OF REVIEW
`II.
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
`a panel will review the decision for an abuse of discretion.” An abuse of
`discretion occurs when a “decision was based on an erroneous conclusion of
`law or clearly erroneous factual findings, or . . . a clear error of judgment.”
`PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567
`(Fed. Cir. 1988) (citations omitted). The request must identify, specifically,
`all matters the party believes the Board misapprehended or overlooked, and
`the place where each matter was addressed previously in a motion,
`opposition, or reply. 37 C.F.R. § 42.71(d).
`
`III. DISCUSSION
`In our Decision Denying Institution, we determined that Petitioner had
`not shown sufficiently that Horiguchi discloses “a plurality of column
`selection lines including at least a first column selection line; said first and
`second bit lines being selected when said first column selection line is
`activated,” as recited in claim 6. Dec. 9. In its Request for Rehearing,
`Petitioner contends that (1) we failed to appreciate or overlooked
`Dr. Mazumder’s testimony (Req. Reh’g 3–9) and (2) Horiguchi must
`disclose multiple column selection lines (id. at 9–11).
`We turn to Petitioner’s contentions that we failed to appreciate or
`overlooked Dr. Mazumder’s testimony. Petitioner first points to
`Dr. Mazumder’s testimony regarding the background of the technology (see,
`e.g., id. at 4 (citing Ex. 1001 ¶¶ 31, 33–35)) and contends that a person of
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`IPR2016-01567
`Patent 5,894,441
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`ordinary skill in the art would have known of multiple column selection
`lines. Petitioner relies on Dr. Mazumder’s testimony pertaining to a figure
`and teachings that are not found in Horiguchi. Id. The ground presented in
`the Petition, however, is anticipation by Horiguchi. Pet. 4.
`Petitioner also points to its previous contentions in the Petition
`(Paper 1, “Pet.”) and contends that “there are multiple column selection lines
`disclosed in Horiguchi, one for each value of ‘j.’” Req. Reh’g 6 (citing
`Pet. 30–31). More specifically, Petitioner contends that “Dr. Mazumder
`explained the connection between each column selection line and the bit
`lines” and “how the iterative notation of YS[j] (a commonly used variable
`notation) represents separate column selection lines for different values of j.”
`Id. at 7 (citing Ex. 1003 ¶¶ 152–53).
`As we explained in the Decision Denying Institution, we considered
`Dr. Mazumder’s testimony and determined that he did not offer persuasive
`evidence to remedy the deficiencies in the Petition. Dec. 8–9. For instance,
`Dr. Mazumder testifies that “[f]or each value of ‘j’, column selection line
`YS[j] selects bit line B[j,n] in each of the sub-arrays.” Ex. 1001 ¶ 152.
`Dr. Mazumder also testifies regarding an example, “YS[0] selects at least bit
`lines B[0,0] in sub-array 130 and B[0,1] in sub-array 131.” Id. ¶ 153.
`Claim 6 requires “a plurality of column selection lines including at least a
`first column selection line; said first and second bit lines being selected
`when said first column selection line is activated.” Dr. Mazumder’s
`testimony identified in Petitioner’s Request for Rehearing pertains to “said
`first and second bit lines being selected when said first column selection line
`is activated.”
`
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`IPR2016-01567
`Patent 5,894,441
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`As we explained in the Decision Denying Institution, however, the
`Petition does not address sufficiently Petitioner’s basis for contending that
`Horiguchi discloses the first portion of the recitation, i.e., “a plurality of
`column selection lines.” Dec. 7–9. In this regard, Dr. Mazumder’s
`testimony identified by Petitioner (Pet. 30–31; Req. Reh’g 7–8) is the same
`as the contentions in the Petition (compare, e.g., Ex. 1003 ¶ 152 with
`Pet. 30), and both were discussed in the Decision Denying Institution
`(Dec. 7–9).
`In its Request for Rehearing, Petitioner acknowledges part of our
`analysis in the Decision Denying Institution and contends that the single
`column selection line shown in Figure 26 is exemplary. Req. Reh’g 8–9
`(citing Dec. 8–9; Ex. 1006, 5:10–20). Petitioner, for the first time, relies on
`Gallia (U.S. Patent No. 5,126,973, Ex. 1006) as support for this contention.
`Id. The ground presented in the Petition, however, is anticipation by
`Horiguchi. Pet. 4. In addition to this deficiency, Petitioner’s contention is
`newly presented in its Request for Rehearing and, therefore, we cannot have
`misapprehended or overlooked it.
`In Petitioner’s contentions regarding Dr. Mazumder’s testimony,
`Petitioner also points to a new portion of Horiguchi not identified previously
`in the Petition. Id. at 5 (citing Ex. 1005, 22:18–22). Again, we cannot have
`misapprehended or overlooked newly made arguments. Additionally, the
`newly identified sentence is followed by a description of replacing bit
`defects, for example, using a spare bit line (see, e.g., Ex. 1005, 22:22–42).
`Petitioner has not provided sufficient argument or evidence to persuade us
`that the use of “output lines” (Req. Reh’g 5) refers to anything other than bit
`
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`IPR2016-01567
`Patent 5,894,441
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`lines and, therefore, we are not persuaded that this disclosure remedies the
`aforementioned deficiencies.
`We now turn to Petitioner’s contention that Horiguchi must disclose
`multiple column selection lines (id. at 9–11). Petitioner, for example,
`contends “[g]iven that there are multiple bit lines in each memory array,
`there must be multiple column selection lines in order to access all of the
`memory cells in the array.” Req. Reh’g 11 (citing Ex. 1001 ¶¶ 33–35, 117–
`18; Ex. 1005, 21:58–65); see also id. at 5 (“The multiple output lines from
`the Y-decoder are necessary to access all of the bit lines”) (citing
`Ex. 1001 ¶¶ 117–18; Pet. 12–13) (emphasis added). Petitioner points to
`Dr. Mazumder’s testimony in support of its contention. Id.
`As an initial matter, this also is a new contention not made in the
`Petition (see Pet. 30–31) and, therefore, we cannot have misapprehended or
`overlooked it. Additionally, contrary to Petitioner’s contention,
`Dr. Mazumder does not testify that multiple output lines from the Y-decoder
`are necessary. Ex. 1001 ¶¶ 117–18. Instead, Dr. Mazumder testifies that
`“the four sub-arrays share a single column address decoder (40), to activate
`a column selection line YS[j].” Id. ¶ 118 (citing Ex. 1005, 22:6–10, Fig. 26)
`(emphases added).
`For the foregoing reasons, we determine that our Decision Denying
`Institution was not “based on an erroneous conclusion of law or clearly
`erroneous factual findings, or . . . a clear error of judgment.” PPG Indus.,
`Inc., 840 F.2d at 1567 (citations omitted).
`
`IV. ORDER
`For the foregoing reasons, it is:
`
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`IPR2016-01567
`Patent 5,894,441
`
`
`ORDERED that Petitioner’s Request for Rehearing (Paper 12) is
`denied.
`
`PETITIONER:
`
`John R. Hutchins
`ANDREWS KURTH KENYON LLP
`jhutchins@kenyon.com
`
`PATENT OWNER:
`
`Nicholas T. Peters
`Paul Henkelmann
`FITCH EVEN TABIN & FLANNERY LLP
`ntpete@fitcheven.com
`phenkelmann@fitcheven.com
`
`
`
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