Paper No. 6
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
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`KINGSTON TECHNOLOGY COMPANY, INC.
`Petitioner,
`
`v.
`
`MEMORY TECHNOLOGIES, LLC
`Patent Owner
`
`
`
`
`Case IPR2019-00644
`Patent RE45,542
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`

`

`TABLE OF CONTENTS
`
`Case IPR2019-00644
`Patent RE45,542
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`THE ’RE542 PATENT .................................................................................... 3
`A. Overview of the ’RE542 Patent ............................................................ 3
`B.
`The Level of Ordinary Skill in the Art .................................................. 5
`III. PETITIONER FAILS TO ESTABLISH A REASONABLE
`LIKELIHOOD OF PREVAILING ON ANY PROPOSED GROUND. ........ 6
`A. Grounds 1 and 2: Petitioner Does Not Apply Its Proposed
`Claim Constructions. ............................................................................. 6
`B. Grounds 1 and 2: Petitioner Proposes a Construction of
`“Maximum Power Consumption of the Peripheral Device”
`Broader than the Construction Petitioner Proposed in District
`Court. ..................................................................................................... 9
`C. Grounds 1 and 2: Petitioner Does Not Construe Means-Plus-
`Function Terms Recited in the Challenged Claims. ........................... 11
`D. Ground 1: By Conflating Anticipation and Obviousness,
`Petitioner Does Not Specify the Specific Statutory Grounds on
`Which the Challenge in Ground 2 is Based. ....................................... 15
`Ground 2: Petitioner fails to explain sufficiently the specific
`combination of Garner and Toombs it relies upon. ............................ 19
`IV. CONCLUSION .............................................................................................. 28
`
`E.
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`Case IPR2019-00644
`Patent RE45,542
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Apple Inc. v. ContentGuard Holdings, Inc.,
`IPR2015-00455, Paper 9 (Jul. 6, 2015) .............................................................. 13
`Apple Inc. v. Valencell, Inc.,
`IPR2017-01704, Paper 9 (Mar. 27, 2018) .......................................................... 25
`Asekladden LLC v. iSourceLoans LLC,
`IPR2015-00134, Paper 9 (Apr. 15, 2015) ........................................................... 14
`Blue Coat Systems LLC, v. Finjan, Inc.,
`IPR2017-00997, Paper 7 (Sep. 5, 2017) ............................................................. 26
`Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc.,
`296 F.3d 1106 (Fed. Cir. 2002) .................................................................... 12, 14
`Chevron Oronite Co. LLC v. Infineum USA L.P.,
`IPR2018-00923, Paper 9 (Nov. 7, 2018) .............................................................. 3
`Deeper, UAB v. Vexilar, Inc.,
`IPR2018-01310, Paper 7 (Jan. 24, 2019) .............................................................. 3
`Facebook, Inc. v. Sound View Innovations, LLC,
`IPR2017-00998, Paper 13 (Sep. 5, 2017) ........................................................... 10
`Facebook, Inc. v. Sound View Innovations, LLC,
`IPR2017-01004, Paper 13 (Aug. 29, 2017) ........................................................ 13
`Golight, Inc. v. Wal-Mart Stores, Inc.,
`355 F.3d 1327 (Fed. Cir. 2004) .......................................................................... 12
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................... 18, 20, 21
`International Business Machine, Corp. v. Groupon, Inc.,
`IPR2017-01452, Paper 7 (Dec. 5, 2017) ....................................................... 21, 26
`Ishida Co. v. Taylor,
`221 F.3d 1310 (Fed. Cir. 2000) .......................................................................... 14
`
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`Case IPR2019-00644
`Patent RE45,542
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 25
`KSR International Co. v. Teleflex Inc.,
`550 U.S. 398, 406-07 (2007) ............................................................ 18, 20, 22, 25
`Noah Systems, Inc. v. Intuit Inc.,
`675 F.3d 1302 (Fed. Cir. 2012) .......................................................................... 12
`OrthoPediatrics Corp. v K2M, Inc.,
`IPR2018-01547, Paper 9 (Feb. 22, 2019) ............................................................. 9
`Qualcomm Inc. v. ParkerVision Inc.,
`IPR2015-01819, Paper 8 (Mar. 8, 2016) ............................................................ 22
`Quantificare, Inc. v. The Proctor & Gamble Co.,
`IPR2017-02113, Paper 11 (Mar. 16, 2018) .................................................. 17, 18
`Saffran v. Johnson & Johnson,
`712 F.3d 549 (Fed. Cir. 2013) ............................................................................ 14
`Sanofi-Aventis U.S. LLC v. AstraZeneca Pharmaceuticals LP,
`IPR2016-00348, Paper 10 (Jun. 28, 2016) ......................................................... 20
`SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018) .......................................................................................... 3
`Verint Systems Inc. v. Elad Barkan,
`IPR2018-01579, Paper 8 (Mar. 7, 2019) ............................................................ 21
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) .................................................................... 11, 12
`ZTE Corporation v. Maxell, Ltd.,
`IPR2018-00238, Paper 8 (Jun. 1, 2018) ............................................................... 8
`Statutes
`35 U.S.C. § 102 .................................................................................................... 1, 18
`35 U.S.C. § 103 .................................................................................................... 1, 19
`35 U.S.C. § 312 .......................................................................................................... 6
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`35 U.S.C. § 312(a)(3) ................................................................................... 19, 20, 27
`35 U.S.C. § 312(c)(3) ............................................................................................... 18
`35 U.S.C. § 313 .......................................................................................................... 1
`35 U.S.C. § 314(a) ................................................................................. 3, 6, 9, 10, 15
`Other Authorities
`37 C.F.R. § 42.6(a)(3) .............................................................................................. 14
`37 C.F.R. § 42.22(a)(2) ...................................................................................... 19, 27
`37 C.F.R. § 42.104(b)(2) ........................................................................ 18, 19, 20, 27
`37 C.F.R. § 42.104(b)(3) ....................................................... 1, 6, 8, 9, 10, 11, 13, 15
`37 C.F.R. § 42.104(b)(4) ................................................................6, 8, 18, 19, 20, 27
`37 C.F.R. § 42.104(b)(5) .............................................................................. 19, 20, 27
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
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`Case IPR2019-00644
`
`Patent RE45,542
`
`LIST OF EXHIBITS
`
`Joint Report on Claim Construction Issues Following Claim
`Construction Hearing in Memory Tech., LLC v. Kingston Tech.
`
`Exhibit
`
`2001
`
`Corp. et a]. , No. 8:18-cv—00171-JLS-DE, Dkt. No. 61 Geb. 26,
`
`

`

`I.
`
`INTRODUCTION
`
`Case IPR2019-00644
`Patent RE45,542
`
`Patent Owner submits this Patent Owner’s Preliminary Response under 35
`
`U.S.C. § 313 and 37 C.F.R. § 42.107, responding to the Petition for Inter Partes
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`Review (“IPR”) filed January 30, 2019 (“Petition” or “Pet.”) challenging U.S. Patent
`
`RE45,542 (“the ’RE542 Patent”).
`
`The Board should deny institution of the fatally-flawed Petition for at least
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`several reasons, explained below. For example, Petitioner proposes constructions for
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`several claim terms but never applies the constructions in its validity analysis of the
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`challenged claims, contrary to the Office’s rules on the content of petitions. 37
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`C.F.R. § 42.104(b)(3), (4). Further, without explanation, Petitioner proposes a
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`broader claim construction for the claimed term “maximum power consumption of
`
`the peripheral device” here than it proposed in district court despite that both venues
`
`apply the same claim construction standard. Petitioner also fails to construe means-
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`plus-function claim terms in violation of § 42.104(b)(3), instead quoting the
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`constructions from a joint claim construction statement in district court.
`
`The Petition raises two grounds: (1) Garner (Ex. 1007) anticipates claims 18,
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`23, 28, 29, 32, 33, 37, 38, and 40 under 35 U.S.C. § 102; and (2) Garner and Toombs
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`(Ex. 1008) render obvious claims 18, 23, 24, 28, 29, 32,33, and 37-40 obvious under
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`35 U.S.C. § 103. In Ground 1, however, Petitioner conflates anticipation and
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`obviousness, essentially admitting that Garner lacks several claim elements by
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`1
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`

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`Case IPR2019-00644
`Patent RE45,542
`resorting to obviousness arguments for most challenged claim elements. Even if
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`Ground 1 were treated as obviousness over Garner alone, a ground which Petitioner
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`does not raise, Petitioner’s reasoning is insufficient to meet the requirements of
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`petitions or to support a conclusion of obviousness.
`
`In Ground 2, Petitioner applies Garner and Toombs in a two-reference
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`anticipation-like analysis that obscures the specific combination that Petitioner relies
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`upon to challenge the claims. Ground 2 has other fatal errors, such as failing to
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`identify the differences between the challenged claims and either Garner or Toombs;
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`discussing Garner and Toombs in a vacuum divorced from the claim language,
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`thereby failing to map any of its obviousness propositions to any challenged claim
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`language; and presenting generic obviousness arguments that have no clear
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`relevance to specific claim language and/or that the asserted prior art renders moot
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`because it already contains the feature(s) Petitioner seeks in making the combination.
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`Given the Petition’s many flaws1, Petitioner has not demonstrated a
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`reasonable likelihood of prevailing on Grounds 1 and 2 for any challenged claim;
`
`
`1 In this paper, Patent Owner addresses certain flaws in the Petition relevant
`
`for consideration at the pre-institution stage and showing that institution should be
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`denied. If the Board decides to institute trial, however, Patent Owner would raise
`
`additional arguments regarding why Grounds 1 and 2 do not render the challenged
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`2
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`

`

`Case IPR2019-00644
`Patent RE45,542
`the Petition should not be instituted. Given the statutory goal of efficient use of the
`
`Board’s resources under § 316(b) and the requirement under SAS Institute Inc. v.
`
`Iancu, 138 S. Ct. 1348 (2018) to institute all or none of a petition’s challenges, the
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`Board may exercise its discretion under § 314(a) to deny the Petition and avoid
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`conducting a proceeding on fatally-deficient petition that cannot prevail. See
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`Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9 (Nov. 7,
`
`2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (Jan.
`
`24, 2019) (informative).
`
`II. THE ’RE542 PATENT
`
`A. Overview of the ’RE542 Patent
`The ’RE542 Patent relates to a system in which a peripheral device (e.g., a
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`memory card) is connected to an electronic device or “host” (e.g., a camera,
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`computer, or smartphone) that is the peripheral device’s source of power. Ex. 1001,
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`1:24-27, 1:44-53. The peripheral device should not overdraw power from the host,
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`which might cause the peripheral device to overheat or drain the host. See id., 1:61-
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`67.
`
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`claims unpatentable (e.g., concerning claim construction and the insufficient
`
`disclosures of the alleged prior art).
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`3
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`Patent RE45,542
`Prior art systems used a regulator to manage the power supplied to the
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`peripheral device, or the host could control power by selecting an operating voltage,
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`or the peripheral device could set operational parameters with understood
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`relationships to power consumption. See id., 1:67-2:11, 2:21-59. But, since a
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`peripheral device might be used in a wide variety of hosts, it would be advantageous
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`if the peripheral device could operate with many different hosts while not
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`overdrawing power from any of them but still receiving the power it needs to
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`effectively perform its tasks. See id., 1:61-2:4; 2:63-65. The claimed subject matter
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`provides versatility across hosts by having the host and the peripheral device perform
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`a “handshake” so the peripheral device sets a maximum power consumption between
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`a default and a limiting value after receiving certain information from the host. See,
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`e.g., id., 2:67-3:4; 3:31-39.
`
`Challenged independent claim 18 is representative:
`
`18. A peripheral device comprising:
`
`a memory storing a default value and a limiting value
`for power consumption of the peripheral device;
`
`means for connecting the peripheral device to an
`electronic device for supplying power to the peripheral
`device,
`
`wherein the power consumption of the peripheral
`device is set at a startup stage to said default value,
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`4
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`Case IPR2019-00644
`Patent RE45,542
`wherein at least said limiting value, which is higher
`than said default value, is defined for the power
`consumption of the peripheral device,
`
`wherein the peripheral device comprises means for
`setting a maximum power consumption of the peripheral
`device to a value which is in a range from said default
`value to said limiting value, said range including said
`default value and said limiting value, and
`
`wherein the peripheral device is configured to receive
`information from the electronic device for setting the
`maximum of the power consumption of the peripheral
`device.
`
`B.
`The Level of Ordinary Skill in the Art
`A person of ordinary skill in the art would have a Bachelor’s degree in
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`electrical engineering or a related field, and at least three years of experience
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`working with electronic circuits. Specific experience with systems including
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`memory devices would be preferable, but not essential. Higher levels of education
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`may substitute for less experience, and more experience may substitute for the
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`specific level of education.
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`5
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`

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`Case IPR2019-00644
`
`Patent RE45,542
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`III. PETITIONER FAILS
`
`TO ESTABLISH A REASONABLE
`
`LIKELIHOOD OF PREVAILING ON ANY PROPOSED GROUND.
`
`A.
`
`Grounds 1 and 2: Petitioner does not apply its Proposed Claim
`Constructions.
`
`Office rules require a petition to contain statements specifying “[h]ow the
`
`challenged claim is to be construed,” 37 CPR. § 42.104(b)(3), and “[h]0w the
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`construed claim is unpatentable,” § 42.104(b)(4). A federal statute also provides that
`
`a petition must “identif[y], in writing and with particularity, each claim challenged,
`
`the grounds on which the challenge to each claim is based, and the evidence that
`
`supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(c)(3); see
`
`also § 314(a) (a petition may not be instituted unless “the information presented in
`
`the petition .
`
`.
`
`. shows that there is a reasonable likelihood that the petitioner would
`
`prevail”). Here,
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`the Petition construes three terms but never applies those
`
`constructions in its comparison of the alleged prior art to the challenged claims.
`
`Thus, the Petition fails to specify with particularity how the construed claims are
`
`allegedly unpatentable and has no reasonable likelihood to prevail against any
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`challenged claim. 37 CPR. §§ 42.104(b)(3), (4); 35 U.S.C. §§ 312(c)(3), 314(a).
`
`Petitioner proposes constructions for
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`four claim terms recited in the
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`challenged independent claims, claims 18 and 28:
`
` “peripheral device”
`
`“an internal or external device capable of
`
`expanding the properties of or produce
`
`

`

`“default value”
`
`“limiting value”
`
`“maximum power consumption of the
`peripheral device”
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`Case IPR2019-00644
`Patent RE45,542
`auxiliary functions for a connected
`electronic device.” Pet., 14-15.
`“a preselected power consumption value
`to which
`the
`‘maximum power
`consumption’ of the peripheral device is
`set when no alternative has been
`specified.” Pet., 16.
`“a power consumption value (1) to which
`the ‘maximum power consumption’ of
`the peripheral device can be set and (2)
`is higher than the ‘default value.’” Pet.,
`18.
`“setting by which the peripheral device
`limits (directly or indirectly) its power
`consumption.” Pet., 24.
`
`But Petitioner never applies its proposed constructions to the asserted prior art as
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`required by Office rules and federal law governing IPR petitions.
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`In its analysis of the independent claims, the Petition mentions that
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`“‘[p]eripheral device’ should be construed as discussed in [the claim construction
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`section].” Pet., 29. Petitioner then identifies the memory storage device 15 of Garner
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`as the claimed peripheral device but does not explain how Garner’s storage device
`
`qualifies as “an internal or external device capable of expanding the properties of or
`
`produce auxiliary functions for a connected electronic device,” as required by its
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`proposed construction. Id., 29.
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`7
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`Case IPR2019-00644
`Patent RE45,542
`Similarly, for the claimed default value and limiting value, the Petition again
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`states that these terms “should be construed as discussed in [the claim construction
`
`section above].” Id. The Petition contends that Garner’s “lowest and highest power
`
`modes teach the ‘default value’ and ‘limiting value,’ respectively.” Id., 30. But
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`Petitioner never applies the words of its proposed constructions to explain why
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`Garner’s lowest and highest modes satisfy them. See id., 29-30. Finally, for the
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`claimed “maximum power consumption of the peripheral device,” the Petition does
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`not even acknowledge that it proposed a construction for this term, much less apply
`
`it, when analyzing Garner. See id., 35-37.
`
`As previous panels have recognized, “37 C.F.R. § 42.104(b)(3) and (4), which
`
`relate to the content of petitions,” “require[] that the construction of a claim in a
`
`petition be consistent with the unpatentability contentions in a petition.” ZTE Corp.
`
`v. Maxell, Ltd., IPR2018-00238, Paper 8 at 8 (Jun. 1, 2018). “Regardless of whether
`
`or not [its] construction is correct,” the Petitioner must “show that the prior art
`
`teaches or suggests [a limitation it construed] for any of the asserted grounds under
`
`Petitioner’s proposed construction for this limitation.” Id. Here, Petitioner makes no
`
`attempt to show that the alleged prior art teaches or suggests the features of the
`
`challenged claims under any of Petitioner’s proposed constructions. Thus, the
`
`Petition does not specify how the construed claims are unpatentable under 37 C.F.R.
`
`8
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`Case IPR2019-00644
`Patent RE45,542
`§ 42.104(b)(4) and has no reasonable likelihood of success as to any challenged
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`claim.
`
`B. Grounds 1 and 2: Petitioner proposes a construction of
`“Maximum Power Consumption of the Peripheral Device”
`broader than the construction Petitioner proposed in District
`Court.
`Further compounding Petitioner’s failure to apply its proposed constructions,
`
`Petitioner proposes a broader construction for “maximum power consumption of the
`
`peripheral device” than it proposed in district court. In the Petition, Petitioner
`
`contends that this term means a “setting by which the peripheral device limits
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`(directly or indirectly) its power consumption.” Pet., 24. In district court, however,
`
`Petitioner contended that the same term means a “setting by which the peripheral
`
`device limits (directly or indirectly) its fluctuating power consumption.” Ex. 1010,
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`15 (emphasis added). Even though the Board began applying the same claim
`
`construction standard as district court a few months before the Petition was filed,
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`Petitioner does not explain its position that the same term requires limiting
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`“fluctuating” power consumption in one venue but not the other.
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`Even before the two venues applied the same standard, panels have found that
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`a petitioner fails to meet its burdens under 37 C.F.R. § 42.104(b)(3) to set forth how
`
`to construe the challenged claims and under 35 U.S.C. § 314(a) to show a reasonable
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`likelihood to prevail “[b]y failing to reconcile its proffered claim construction here
`
`with its very different construction proffered in District Court.” OrthoPediatrics
`
`9
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`Case IPR2019-00644
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`Corp. v K2M, Inc., IPR2018-01547, Paper 9 at 11 (Feb. 22, 2019); see also
`
`Facebook, Inc. v. Sound View Innovations, LLC, IPR2017-00998, Paper 13 at 17
`
`(Sep. 5, 2017) (Petitioner did not meet its burden under § 42.104(b)(3) because “it
`
`did not inform the panel that Petitioner had taken a very different claim construction
`
`position before the district court, . . . that the different position was then under
`
`consideration by the district court, nor did it explain the reason for Petitioner’s
`
`change of heart regarding the [construction of the term].”). Similarly, here, Petitioner
`
`fails to mention that it proposes a broader construction for the “maximum power
`
`consumption” term in this IPR than it did in district court, much less justify the
`
`different construction. The desire to avoid infringement in district court under a
`
`narrow construction while prevailing on invalidity in the Office under a broad
`
`construction does not justify the different positions. Absent unusual circumstances
`
`that Petitioner has not articulated, such as a mistake or change of heart, Petitioner
`
`should propose the same construction in both venues. It has not.
`
`For this additional reason, the Petition does not satisfy its burdens under 37
`
`C.F.R. § 42.104(b)(3) to set forth how to construe the challenged claims and under
`
`35 U.S.C. § 314(a) to show a reasonable likelihood of prevailing.2
`
`
`2 Following the filing of the Petition, the parties agreed in district court that
`
`the “maximum power consumption” term should be construed to mean “a level of
`
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`Case IPR2019-00644
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`C. Grounds 1 and 2: Petitioner does not construe Means-Plus-
`Function terms recited in the challenged Claims.
`Petitioner further errs on claim construction by failing to construe two means-
`
`plus-function terms in the challenged claims:
`
`
`
`
`
`“means for connecting the peripheral device to an electronic
`device for supplying power
`to
`the peripheral device”
`(independent claim 18); and
`“means for setting [a/the] maximum power consumption of the
`peripheral device to a value which is in a range from said default
`value to said limiting value, said range including said default
`value and said limiting value” (independent claims 18 and 28).
`For these terms, Petitioner has the burden to specify “[h]ow the challenged claim is
`
`to be construed,” and “the construction of the claim must identify the specific
`
`portions of the specification that describe the structure, material, or acts
`
`corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3).
`
`Construing a means-plus-function term involves two steps. The first step is to
`
`identify the claimed function. Williamson v. Citrix Online, LLC, 792 F.3d 1339,
`
`
`power consumption that the peripheral device adjusts its operational functions not
`
`to exceed,” Ex. 2001, 1, which differs from both Petitioner’s initial proposed
`
`construction in district court and its proposed construction in this IPR. But Petitioner
`
`did not inform the Board of this new construction or seek correction/clarification of
`
`its proposed construction in this proceeding.
`
`11
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`Case IPR2019-00644
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`1351 (Fed. Cir. 2015) (citing Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed.
`
`Cir. 2012)). The second step is to determine what structure, if any, disclosed in the
`
`specification corresponds to the claimed function. Id. Additionally, for the second
`
`step, “structure disclosed in the specification is ‘corresponding’ structure only if the
`
`specification or prosecution history clearly links or associates that structure to the
`
`function recited in the claim.” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327,
`
`1334 (Fed. Cir. 2004) (citation omitted); Cardiac Pacemakers, Inc. v. St. Jude Med.,
`
`Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002) (“the structure must not only perform the
`
`claimed function, but the specification must clearly associate the structure with the
`
`performance of the function”).
`
`Petitioner does not mention, much less substantively address, the claimed
`
`means for connecting or means for setting in its claim construction discussion. See
`
`Pet., 13-24. In fact, Petitioner does not acknowledge that the challenged claims
`
`contain means-plus-function language until its analysis of Garner in Ground 1. See
`
`Pet., 31. But instead of undertaking a proper claim construction analysis, Petitioner
`
`relies on the fact that the parties “have agreed in the related litigation” that the
`
`phrases are means-plus-function terms and have agreed to the functions and
`
`corresponding structures for these terms. Id., 31 (quoting Ex. 1011, 1); see also id.,
`
`35, 40. Petitioner does not support the constructions or explain why they are proper,
`
`as required by the rules for the content of petitions. Petitioner just quotes the
`
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`Case IPR2019-00644
`Patent RE45,542
`constructions from a Joint Claim Construction and Prehearing Statement (Ex. 1011)
`
`in the related litigation. Id., 31, 35, 40. This practice does not satisfy Petitioner’s
`
`burden.
`
`As other panels have held, “[t]here is no exemption from the requirement to
`
`identify corresponding structure for means-plus-function limitations under 37 C.F.R.
`
`§ 42.104(b)(3) for claims that may have been construed previously in a related
`
`matter.” Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-00455, Paper 9 at 9
`
`(Jul. 6, 2015); see also Facebook, Inc. v. Sound View Innovations, LLC, IPR2017-
`
`01004, Paper 13 at 8 (Aug. 29, 2017) (“That Patent Owner has proposed these
`
`constructions in related district court litigation, however, does not relieve Petitioner
`
`of its burden to comply with our Rules for inter partes reviews.”), 10 (“The district
`
`court’s issuance of a claim construction opinion construing this means-plus-function
`
`limitation did not relieve Petitioner retroactively of its obligation in the Petition to
`
`‘identify the specific portions of the specification that describe the structure,
`
`material, or acts corresponding to each claimed function,’ as required by our
`
`Rules.”). Similarly, here, a stipulation in district court does not relieve Petitioner of
`
`its burden to explain the constructions of the claimed means for connecting and
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`means for setting. Petitioner cannot meet its burden by merely citing the Joint Claim
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`Construction Statement from district court.
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`Case IPR2019-00644
`Patent RE45,542
`Patent Owner recognizes that Petitioner’s quotations of the Joint Claim
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`Construction Statement include cites to the specification for the corresponding
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`structure of the means-plus-function terms. See Pet., 31 (The parties “have agreed
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`that the structure is ‘connector 11 of FIG. 1 and FIG. 2, 4:43-48’ of the RE542
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`Patent, ‘and structural equivalents thereof’” (quoting Ex. 1010 at 1)), 35 (The parties
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`“have agreed that the structure is ‘processor 13 of Fig. 1, Fig. 2, Fig. 3, 2:49- 59,
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`4:57-59, 6:6-30, 6:27-30’ of the RE542 Patent, ‘and structural equivalents thereof’”
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`(quoting Ex. 1010 at 1-2)). Aside from improperly incorporating the Joint Claim
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`Construction Statement by reference, 37 C.F.R. § 42.6(a)(3), merely quoting
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`citations without providing any accompanying explanation does not “clearly
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`associate the structure with the performance of the function,” as required by the
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`second step for construing means-plus-function terms. Cardiac Pacemakers, 296
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`F.3d at 1113. This is because mere citations do not reflect an “inquiry . . . undertaken
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`from the perspective of a person of ordinary skill in the art” that clearly associates
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`the proposed structure with the proposed function. Id. (citing Ishida Co. v. Taylor,
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`221 F.3d 1310, 1316 (Fed. Cir. 2000); see also Saffran v. Johnson & Johnson, 712
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`F.3d 549, 562 (Fed. Cir. 2013) (“This duty to link or associate structure to function
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`is the quid pro quo for the convenience of employing § 112, ¶ 6.”); Asekladden LLC
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`v. iSourceLoans LLC, IPR2015-00134, Paper 9 (Apr. 15, 2015) (denying institution
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`because the petitioner failed to clearly link the alleged structure corresponding to the
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`Case IPR2019-00644
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`Patent RE45,542
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`claimed function for two means-plus-function claim terms) (citation and quotation
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`omitted). To meet its burden, the Petition needs an explanation of the relevance and
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`content of the citations that clearly associates the identified structure with the
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`identified function. The Petition lacks such explanation.
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`For this additional reason, the Petition does not satisfy its burdens under 37
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`C-F.R. § 42.104(b)(3) to set forth how to construe mean-plus-function terms and
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`under 35 U.S.C. § 314(a) to show a reasonable likelihood of prevailing.
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`D.
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`Ground 1: By conflating Anticipation and Obviousness, Petitioner
`does not specify the specific statutory grounds on Which the
`challenge in Ground 2 is based.
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`Although the Petition presents Ground 1 as anticipation over Garner, Pet, 29,
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`Ground 1 includes confusing and underdeveloped Obviousness-like reasoning for
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`most of the challenged claim elements. The table below identifies several examples:
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`Ground 1: Antici . ation b Garner
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`Im n ro . er Obviousness Reasonin
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`
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`Claim Element
`
`18(a)
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`
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`
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`“Alternatively, instead of power modes, it would have been
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`obvious to a POSITA that power consumption values (e.g., in
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`power/energy units) corresponding to the power modes can be
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`stored. (Ex. 1002, 11195.) It would have been an obvious design
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`choice to store either power modes or power consumption
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`values to achieve the same functional purpose of informing a
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`host of the different power configurations supported by the
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`storage device.
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`(161.) Discussions hereinafter
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`relating to
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`
`
`
`
`
`
`
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`
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`15
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`18(b)
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`18(c)
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`18(d)
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`32
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`Case IPR2019-00644
`Patent RE45,542
`Garner’s power modes apply equally to corresponding power
`consumption values.” Pet., 30.
`“In addition, a POSITA would have recognized that PCMCIA
`connectors, as disclosed in Garner, are capable of supplying
`power to and commonly did supply power to PCMCIA memory
`cards. (Id.)” Id., 32.
`“Alternatively, a POSITA would have recognized that an
`alternative design choice is to store a corresponding power
`consumption value instead of a power mode to achieve the same
`function of indicating a desired configuration (hereinafter,
`discussions relating to storing a desired power mode applies
`equally to storing a corresponding power consumption
`value). (Ex. 1002, ¶¶206-07.)” Id., 32-33.
`“Since Garner also discloses an embodiment where the lowest
`power mode is the default, a POSITA would have recognized
`that it would be represented by 00 in that embodiment. (Ex.
`1002, ¶216.) Further, Dr. Baker explains that a POSITA would
`have recognized that ‘the particular bits used for representing
`information, such as power consumption value or power mode,
`is arbitrary.’ (Id.) Thus, a POSITA would have recognized that
`the highest and lowest power modes can be represented by 11
`and 00, respectively. (Id.) As such, 11 is ‘higher’ than 00.” Id.,
`34-35.
`“Garner’s storage device is a flash EEPROM memory that can
`be joined to a host via PCMCIA (Personal Computer Memory
`Card International Association). (Ex. 1007, 3:27-48, Figs. 1, 2)
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`Case IPR2019-00644
`Patent RE45,542
`(emphasis added). Thus, a POSITA would have recognized that
`the storage device is a ‘memory card.’ (Ex. 1002, ¶245.)” Id.,
`42.
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`Petitioner’s
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`inclusion of obviousness arguments within
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`the Garner
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`anticipation challenge renders Ground 1 confusing and unclear. First, “Petitioner’s
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`explanation [relying on obviousness within an anticipation ground] app