Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
` Paper 9
`
`
`
` Entered: August 23, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`v.
`MEMORY TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00644
`Reissued Patent RE45,542 E
`____________
`
`
`
`Before JAMESON LEE, J. JOHN LEE, and JASON M. REPKO,
`Administrative Patent Judges.
`
`REPKO, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
` Paper 9
`
`
`
` Entered: August 23, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`v.
`MEMORY TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00644
`Reissued Patent RE45,542 E
`____________
`
`
`
`Before JAMESON LEE, J. JOHN LEE, and JASON M. REPKO,
`Administrative Patent Judges.
`
`REPKO, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`IPR2019-00644
`Reissued Patent RE45,542 E
`
`
`I. INTRODUCTION
`A. Background
`Kingston Technology Company, Inc. (“Petitioner”) filed a petition to
`institute inter partes review of claims 18, 23, 24, 28, 29, 32, 33, and 37–40
`of U.S. Reissued Patent No. RE45,542 E (Ex. 1001, “the RE542 patent”).
`Paper 1 (“Pet.”). Memory Technologies, LLC (“Patent Owner”) filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”).
`To institute an inter partes review, we must determine “that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the
`reasons discussed below, Petitioner has not shown a reasonable likelihood
`that it would prevail in showing that any challenged claim is unpatentable.
`Thus, we deny the Petition and do not institute an inter partes review.
`B. Related Matters
`The parties identify a civil case involving the RE542 patent: Memory
`Technologies, LLC v. Kingston Technology Corp., No. 8:18-cv-00171 (C.D.
`Cal. Jan. 31, 2018). Pet. 2; Paper 4, 1. Patent Owner also identifies two
`terminated proceedings involving the RE542 patent: Memory Technologies,
`LLC v. SanDisk LLC, No. 8:16-cv-02163 (C.D. Cal. Dec. 6, 2016); and
`Certain Memory Devices and Components Thereof, No. 337-TA-1034 (ITC
`Dec. 5, 2016). Paper 4, 1. Patent Owner identifies an earlier-filed petition
`for inter partes review of claims in the RE542 patent: SanDisk LLC v.
`Memory Technologies, LLC, IPR2017-01022 (PTAB May 3, 2017)
`(terminated before decision on institution). Id.
`
`2
`
`
`
`IPR2019-00644
`Reissued Patent RE45,542 E
`
`
`C. Reissued Patent RE45,542 E
`The RE542 patent describes an invention for determining a peripheral
`device’s power consumption. Ex. 1001, Abstract. A peripheral device’s
`power consumption should not exceed the maximum power that can be
`supplied by the host device. Id. at 1:61–64. But power-consumption
`requirements vary among peripheral devices. Id. at 1:67–2:4. So to
`determine the required operating voltage, known peripheral devices
`exchange signals with the host device when the devices are powered on.
`Id. at 2:21–30. To improve operational flexibility, among other things, the
`peripheral device in the claimed invention negotiates a suitable power-
`consumption value with an electronic device in different operating
`situations. Id. at 3:4–7. This allows the peripheral device to adjust its power
`consumption to meet the needs of a given situation. Id.
`Of the challenged claims, reissued claims 18 and 28 are independent
`and reproduced below:
`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,
`
`3
`
`
`
`IPR2019-00644
`Reissued Patent RE45,542 E
`
`
`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.
`Ex. 1001, 12:31–49.
`28. A peripheral device comprising:
`a memory storing a default value and a limiting value for power
`consumption of the peripheral device;
`a connector configured to connect the peripheral device to an
`electronic device for supplying power to the peripheral
`device,
`wherein [the] a maximum power consumption of the peripheral
`device is set at a startup stage to said default value,
`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] 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, [and]
`to receive
`is configured
`wherein
`the peripheral device
`information from the electronic device for setting the
`maximum [of the] power consumption of the peripheral
`device, and
`wherein the means for setting the maximum power consumption
`of the peripheral device is configured to obtain the value, as
`indicated by the received information, and to set the
`maximum power consumption of the peripheral device to the
`
`4
`
`
`
`IPR2019-00644
`Reissued Patent RE45,542 E
`
`
`value.
`Id. at 13:42–14:9.
`
`D. Evidence Relied Upon
`Petitioner relies on the following references:
`Name
`Reference
`Garner
`U.S. Patent No. 5,724,592
`
`Toombs
`
`U.S. Patent No. 6,279,114 B1
`
`1007
`
`1008
`
`Exhibit
`
`Petitioner also relies on the Declarations of R. Jacob Baker, Ph.D.,
`P.E. Ex. 1002.
`
`
`
`Statutory Basis
`
`Reference(s)
`
`E. The Asserted Grounds of Unpatentability
`Claim(s)
`Challenged
`18, 23, 28, 29, 32,
`33, 37, 38, and 40
`18, 23, 24, 28, 29,
`32, 33, and 37–40
`
`Pre-AIA1 § 102 Garner
`
`Pre-AIA § 103 Garner and Toombs
`
`II. ANALYSIS
`A. Principles of Law
`The question of obviousness is resolved by underlying factual
`determinations including: (1) the scope and content of the prior art; (2) any
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
`Stat. 284, 287–88 (2011).
`
`5
`
`
`
`IPR2019-00644
`Reissued Patent RE45,542 E
`
`differences between the claimed subject matter and the prior art; (3) the level
`of ordinary skill in the art; and (4) when in evidence, objective indicia of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`B. The Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art would have
`“a bachelor’s or master’s degree in electrical engineering or a closely related
`field and two to three years of academic or industry experience in the field
`of memory system design.” Pet. 24 (citing Ex. 1002 ¶ 71). Patent Owner
`asserts that “[a] person of ordinary skill in the art would have a Bachelor’s
`degree in electrical engineering or a related field, and at least three years of
`experience working with electronic circuits.” Prelim. Resp. 5. According to
`Patent Owner, “[s]pecific experience with systems including memory
`devices would be preferable, but not essential.” Id.
`Any differences between these asserted skill levels does not affect our
`analysis below. Patent Owner’s assertions, however, are unsupported, and
`Petitioner’s assertions are supported by Dr. Baker’s declaration. Pet. 24
`(citing Ex. 1002). Thus, we apply Petitioner’s proposed definition, taking
`into account the level of skill reflected in the asserted references.
`
`C. Claim Construction
`For petitions filed on or after November 13, 2018, we use the same
`claim construction standard that would be 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 the claim as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent. See Changes to the Claim Construction Standard
`for Interpreting Claims in Trial Proceedings Before the Patent Trial and
`
`6
`
`
`
`IPR2019-00644
`Reissued Patent RE45,542 E
`
`Appeal Board, 83 Fed. Reg. 51,340, 51,340, 51,358 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now
`codified at 37 C.F.R. § 42.100(b) (2019)).. The Petition was filed on
`January 30, 2019. Paper 1. So we apply the claim construction standard
`from Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`Under the Phillips standard, claim terms are generally given their
`ordinary and customary meaning as would be understood by one with
`ordinary skill in the art in the context of the specification, the prosecution
`history, other claims, and even extrinsic evidence. Id. at 1312–17. But
`extrinsic evidence is “less significant” than the intrinsic record. Id. at 1317.
`The specification is the “single best guide” to a disputed term’s
`meaning. Id. at 1315. It “may reveal a special definition given to a claim
`term.” Id. at 1316. Or it may reveal “an intentional disclaimer, or
`disavowal, of claim scope.” Id. at 1316. “The patentee’s lexicography must,
`of course, appear ‘with reasonable clarity, deliberateness, and precision’
`before it can affect the claim.’” Renishaw PLC v. Marposs Societa’ per
`Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). The patentee can disavow
`claim scope with language in the specification or the prosecution history.
`Poly-America, L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir.
`2016). “In either case, the standard for disavowal is exacting, requiring clear
`and unequivocal evidence that the claimed invention includes or does not
`include a particular feature.” Id.
`Only those claim terms that are in controversy need to be construed,
`and only to the extent necessary to resolve the controversy. Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017).
`
`7
`
`
`
`IPR2019-00644
`Reissued Patent RE45,542 E
`
`
`Petitioner proposes constructions for the recited “means for
`connecting the peripheral device to an electronic device for supplying power
`to the peripheral device” and “means for setting the maximum power
`consumption of the peripheral device.” See Pet. 31, 35.
`Petitioner also proposes a construction for four claim limitations:
`(1) “peripheral device,” (2) “default value,” (3) “limiting value,” and
`(4) “maximum power consumption of the peripheral device.” Id. at 14–24.
`We do not need to expressly construe “peripheral device,” but in the sections
`that follow, we discuss the remaining terms.
`1. default value
`Petitioner’s proposed construction for “default value” is “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
`(citing Ex. 1002 ¶ 151). Petitioner asserts that the value “should not be
`limited to any particular type of measurement.” Pet. 16. Patent Owner does
`not propose a construction. Nor has Patent Owner expressed disagreement
`with Petitioner’s construction. See generally Prelim. Resp. For the purposes
`of this decision, we adopt Petitioner’s construction.
`2. limiting value
`Petitioner’s proposed construction for “limiting value” is “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 (citing Ex. 1002 ¶ 160). Petitioner asserts that the value “should not
`be limited to any particular type of [unit] measurement.” Pet. 18. Patent
`Owner does not propose a construction. Nor has Patent Owner expressed
`
`8
`
`
`
`IPR2019-00644
`Reissued Patent RE45,542 E
`
`disagreement with Petitioner’s construction. See generally Prelim. Resp.
`For the purposes of this decision, we adopt Petitioner’s construction.
`3. maximum power consumption of the peripheral device
`The Board “will consider prior claim constructions from courts or the
`ITC, if timely made of record, and give them appropriate weight.” See
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340,
`51,355 (Oct. 11, 2018).
`Here, the parties agreed in the related litigation that the construction is
`“a level of power consumption that the peripheral device adjusts its
`operational functions not to exceed.” Ex. 2001, 1. On the other hand, in the
`Petition, the proposed claim construction of “maximum power consumption”
`is “a setting by which the peripheral device limits (directly or indirectly) its
`power consumption.” Pet. 24. One difference between Petitioner’s
`proposed construction and the agreed-upon construction is that Petitioner
`equates a maximum power consumption with “a setting” instead of a “level
`of power consumption.” Compare Ex. 2001, 1, with Pet. 24.
`By “setting,” Petitioner appears to mean a “configuration parameter.”
`Pet. 19. For example, Petitioner asserts that “[a] POSITA would understand
`that the term ‘maximum power consumption of the peripheral device’ refers
`to a setting (e.g., a configuration parameter) of the peripheral device because
`it is repeatedly described as being set to a desired value.” Id. (citing
`Ex. 1002 ¶ 164).
`We are persuaded that, for the purposes of this decision, the parties’
`agreed construction from the related litigation is the proper construction of
`this term. Importantly, we note that the claims at issue require “setting a
`
`9
`
`
`
`IPR2019-00644
`Reissued Patent RE45,542 E
`
`maximum power consumption of the peripheral device to a value,” and that
`value “is in a range from said default value to said limiting value.” That is,
`the maximum power consumption itself is between the default and limiting
`values. As discussed above, each of the default and limiting values is a
`“power consumption value;” thus, the maximum power consumption also
`must be a power-consumption value (or, as the parties agreed in the related
`litigation, a “level of power consumption”), not just any “setting” or
`“configuration.”
`Petitioner acknowledges that certain “configurations” are distinct
`from the value of the maximum power consumption. For instance,
`Petitioner states that “[t]he value of the ‘maximum power consumption’
`affects how the peripheral device subsequently adjusts its operational
`configurations (e.g., clock frequency) to stay within the limit.” Pet. 22
`(emphasis added). The patent also supports a construction reflecting that
`“maximum power consumption” is not the same as operational
`configurations like clock frequency or bus width, which are adjusted in
`response to the value of the maximum power consumption. See Ex. 1001,
`7:35–40, 8:23–26.
`Thus, for the purposes of this decision, we construe “maximum power
`consumption” as “a level of power consumption that the peripheral device
`adjusts its operational functions not to exceed.”
`4. means-plus-function limitations
`Claim 18 recites, in part, a “means for connecting the peripheral
`device to an electronic device for supplying power to the peripheral device”
`and a “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
`
`10
`
`
`
`IPR2019-00644
`Reissued Patent RE45,542 E
`
`value” Similarly, claim 28 recites, in part, a “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.”
`Patent Owner argues that Petitioner has not construed these means-
`plus-function limitations and that the Petition should be denied in its entirety
`for this reason. Prelim. Resp. 11–15. We disagree.
`Petitioner explains (1) what each function is and (2) identifies the
`specific portions of the specification that describe the structure, material, or
`acts corresponding to each claimed function, as required by 37 C.F.R.
`§ 42.104(b)(3). See Pet. 31, 35.
`As for the means for connecting recited in claim 18, Petitioner
`explains that, as in the related litigation, “the function is, ‘connecting the
`peripheral device to an electronic device for supplying power to the
`peripheral device,’ and have agreed that the structure is “connector 11 of
`FIG. 1 and FIG. 2, 4:43-48” of the RE542 Patent, ‘and structural equivalents
`thereof.’” Id. at 31 (citing Ex. 1010, 1).
`As for the means for setting recited in claim 18 and 28, Petitioner
`explains that, as in the related litigation, “the function is, ‘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 have agreed that the structure
`is ‘processor 13 of Fig. 1, Fig. 2, Fig. 3, 2:49- 59, 4:57-59, 6:6-30, 6:27-30”
`of the RE542 Patent, “and structural equivalents thereof.’” Id. at 35 (citing
`Ex. 1010, 1–2 in discussing claim 8); id. at 41 (citing § IX.A.1.f. of the
`Petition, which refers to claim 18, in discussing claim 28).
`
`11
`
`
`
`IPR2019-00644
`Reissued Patent RE45,542 E
`
`
`Patent Owner does not propose alternative constructions for these
`terms or argue that they are incorrect. See Prelim. Resp. 11–15. Rather,
`Patent Owner argues that Petitioner has not sufficiently explained the
`constructions. See id. at 13. Although further supporting explanation may
`be needed in some cases, we are able to assess the merits of Petitioner’s
`unpatentability contentions from this petition. Thus, we conclude
`Petitioner’s proposed constructions of these means-plus-function terms and
`their basis are sufficient to determine whether to institute here. In the
`analysis below, we adopt Petitioner’s proposed construction and determine
`that Petitioner failed to demonstrate a reasonable likelihood of prevailing on
`its asserted grounds of unpatentability.
`
`D. Alleged Unpatentability of Claims 18, 23, 28, 29, 32, 33, 37, 38, and 40
`as Anticipated by Garner
`1. Garner
`Garner’s invention manages the power consumption of
`microprocessor-controlled storage devices, such as flash EEPROM memory
`arrays. Ex. 1007, 1:11–14. In one embodiment, Garner has four distinct
`power modes of operation. Id. at 5:12–15. To indicate these power modes,
`Garner uses two-bit “power tuples.” Id. at 5:12–15, 5:22–25. For example,
`if both bits are zero, the highest power mode is selected; if both bits are one,
`the lowest power mode is selected. Id. at 5:26–31. In this embodiment, the
`zeros indicate that the highest power mode is the default. Id. at 5:29–31.
`The four power modes have two main differences. Id. at 5:38–39.
`First, the power modes set the microprocessors to four distinct clock
`frequencies: 16, 8, 4, and 1 megahertz. Id. at 5:40–44. Second, in different
`
`12
`
`
`
`IPR2019-00644
`Reissued Patent RE45,542 E
`
`modes, the storage array is accessed either one byte at a time or a word (two
`bytes) at a time. Id. at 5:44–46.
`2. Claim 18
`Petitioner asserts that independent claim 18 is anticipated by Garner.
`Pet. 29–38. But in discussing anticipation, Petitioner alternatively asserts
`that “it would have been obvious to a POSITA that power consumption
`values (e.g., in power/energy units) corresponding to the power modes can
`be stored.” Id. at 30 (citing Ex. 1002 ¶ 195) (emphasis added). According
`to Petitioner, doing so would have been “an obvious design choice.” Id.
`Petitioner also asserts that Garner represents the highest mode by 00, but “a
`POSITA would have recognized that the highest and lowest power modes
`can be represented by 11 and 00, respectively,” as shown in other
`embodiments. Id. at 34–35.
`Patent Owner asserts that, because Ground 1 includes obviousness-
`like reasoning in the anticipation analysis, the challenge is “confusing and
`unclear.” Prelim. Resp. 17. We agree that Ground 1 is insufficiently clear
`to show a reasonable likelihood of prevailing for multiple reasons, as
`explained below.
`
`a. Design Choice
`“Anticipation requires the presence in a single prior art disclosure of
`all elements of a claimed invention arranged as in the claim.” Therasense,
`Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010)
`(quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir.
`1983)).
`[U]nless a reference discloses within the four corners of the
`document not only all of the limitations claimed but also all of
`the limitations arranged or combined in the same way as
`
`13
`
`
`
`IPR2019-00644
`Reissued Patent RE45,542 E
`
`
`recited in the claim, it cannot be said to prove prior invention of
`the thing claimed and, thus, cannot anticipate under 35 U.S.C.
`§ 102.
`Id. (quoting Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed.
`Cir. 2008)) (emphasis in original).
`Here, Ground 1—which is based on anticipation—proposes using one
`type of value instead of another because it would have been “an obvious
`design choice” (Pet. 30) and further proposes combining the features of
`multiple embodiments (Pet. 34–35). Putting aside, for now, whether it
`would have been obvious to modify Garner in this way, Petitioner has not
`shown that Garner anticipates claim 18 to the extent that the challenge
`depends on a modification to arrange and combine the limitations in the
`same way as recited in the claim.2
`b. Garner’s Modes and Power Tuples
`Petitioner maps the recited values to two different features in Garner:
`the modes and the tuples. Pet. 34–35.
`First, Petitioner asserts that “Garner’s ‘highest power mode’ and
`‘lowest power mode’ can read on the claimed ‘limiting value’ and ‘default
`value,’ respectively.” Id. at 34 (emphasis added). Under this rationale,
`Garner’s modes correspond to the recited values. See id.
`A “mode” represents how Garner’s device operates at a given time.
`For example, in different power modes, Garner’s microprocessor operates at
`four distinct frequencies (16, 8, 4, and 1 megahertz) or accesses the storage
`array either one byte at a time or a word (two bytes) at a time.
`
`
`2 We discuss Petitioner’s design-choice rationale in the context of the
`obviousness-based challenge below. See infra § II.E.
`14
`
`
`
`IPR2019-00644
`Reissued Patent RE45,542 E
`
`Ex. 1007, 5:40–46. So it is true that Garner’s modes may relate to many
`different types of values in some way. For instance, the value for clock
`frequency is 4 megahertz in one of Garner’s modes. See id. Although
`Garner’s modes may relate to a value, the mode itself is not a “value,” as
`required by the claim.
`Second, Petitioner asserts that “[i]n the event the comparative term
`‘higher’ applies to the indicator (e.g., two-bit power tuples) used for
`representing power consumption values, a POSITA would nevertheless find
`this limitation taught by Garner.” Pet. 34. That is, under this alternative
`rationale, Garner’s power tuple values correspond to the recited values. See
`id.
`
`To be sure, Garner’s tuples are values—i.e., 00, 01, 10, and 11. See
`Ex. 1007, 5:22–25. But as Dr. Baker testifies, the values of the particular
`bits are “arbitrary.” Ex. 1002 ¶ 216. For example, Garner uses 00 to
`identify the default mode, not to indicate zero watt-hours. Ex. 1007, 5:29–
`32, 7:14–15. In fact, default mode 00 need not correspond to the lowest
`power consumption mode in a range. Instead, the highest power mode is
`default mode 00 in some embodiments, and the lowest is default in others.
`Compare id. at 5:26–28 (using 00 for the highest mode), with id. at 6:48–51
`(using 00 for the lowest mode); accord Ex. 1002 ¶ 216. So Garner
`essentially uses the tuples as a way to distinguish between the modes and
`identify the default. See, e.g., Ex. 1007, 5:26–32, 6:48–51, 7:14–15.
`Unlike Garner’s power tuples, claim 18 requires that the values are
`ordered and that they establish a range. In particular, claim 18 recites three
`values for the power consumption of the peripheral device: (1) a “default
`value,” (2) a “limiting value, which is higher than said default value,” and
`
`15
`
`
`
`IPR2019-00644
`Reissued Patent RE45,542 E
`
`(3) “a value which is in a range from said default value to said limiting
`value.” The in-range value is set as “a maximum power consumption of the
`peripheral device.”
`Petitioner has not shown that Garner’s tuples satisfy these limitations.
`For instance, Petitioner asserts that “the comparative term ‘higher’ applies to
`values for power consumption.” Pet. 34. Indeed, according to Dr. Baker,
`“Power consumption is typically measured in watt-hours (Wh).” Ex. 1002
`¶ 80. But Garner’s tuples are not watt-hours. Nor do the tuples encode
`some value in watt-hours or some other measurement of power
`consumption, for example. Garner simply uses the tuples to identify
`operating modes. See, e.g., Ex. 1007, 5:22–25. They merely are names for
`referencing purposes and do not indicate any amount of power consumption.
`See id.
`Even if the “values” need not represent power consumption in watt-
`hours, Petitioner does not clearly explain how Garner’s tuples disclose the
`recited power-consumption range. For example, Petitioner asserts that, in
`one of Garner’s embodiments, the lowest power mode is 00. Pet. 34 (citing
`Ex. 1007, 5:29–31; Ex. 1002 ¶ 216). Petitioner explains that Garner’s
`highest power mode “can be” represented by 11. Id. at 35 (citing
`Ex. 1002 ¶ 216). Indeed, 11 is higher than 00 if we interpret these tuples as
`numbers. But that is not how Garner uses them. The tuples merely identify
`a mode. Although each mode may cause the device to consume more or less
`power, the modes specify a particular operating configuration (e.g., clock
`setting, bus width) instead of a power-consumption value in watt-hours or by
`any other measure. Ex. 1007, 5:40–46.
`Garner’s system and the claimed invention simply operate in different
`
`16
`
`
`
`IPR2019-00644
`Reissued Patent RE45,542 E
`
`ways. Unlike Garner’s system, claim 18 requires setting the “maximum
`power consumption” to a value in the recited range. We construe the
`“maximum power consumption” as “a level of power consumption that the
`peripheral device adjusts its operational functions not to exceed.” See supra
`II.C.3. By contrast, Garner simply places the device in the mode represented
`by power-tuple bits. See Ex. 1007, 5:40–46. Because the tuple values are
`just bits, Garner cannot adjust its operational functions to avoid its power
`consumption from exceeding the tuple value (e.g., 00). See id.
`In sum, Petitioner has not shown that Garner discloses specifying a
`particular value for power consumption that falls within a range set by two
`other values, as recited in claim 18. In this way, Petitioner has not shown
`that Garner’s modes and tuples satisfy claim 18’s requirement for (1) a
`“default value,” (2) a “limiting value, which is higher than said default
`value,” and (3) “a value which is in a range from said default value to said
`limiting value,” which is set as “a maximum power consumption of the
`peripheral device”—i.e., a level of power consumption that the peripheral
`device adjusts its operational functions not to exceed.
`Thus, Petitioner has not shown a reasonable likelihood that it would
`prevail in establishing that claim 18 is anticipated by Garner.
`3. Claim 28
`Like claim 18, claim 28 recites three values for the peripheral device’s
`power consumption: (1) a “default value,” (2) a “limiting value, which is
`higher than said default value,” and (3) “a value which is in a range from
`said default value to said limiting value.” Also, Petitioner’s analysis for
`claim 28 refers to the analysis of claim 18. See Pet. 39–41.
`
`17
`
`
`
`IPR2019-00644
`Reissued Patent RE45,542 E
`
`
`Petitioner’s analysis is unclear and deficient for at least two reasons.
`First, the reasons that we discussed above for claim 18 (see supra § D.1.b)
`apply to claim 28 because claim 28 also recites the same values and
`Petitioner relies on the same features from Garner to address these
`limitations.
`Second, claim 28 recites additional limitations that Petitioner has not
`addressed. In particular, unlike claim 18, claim 28 recites “a maximum
`power consumption of the peripheral device is set at a startup stage to said
`default value” instead of “the power consumption of the peripheral device is
`set at a startup stage to said default value.” Also, claim 28 recites “wherein
`the means for setting the maximum power consumption of the peripheral
`device is configured to obtain the value, as indicated by the received
`information, and to set the maximum power consumption of the peripheral
`device to the value,” which is not recited in claim 18. But Petitioner’s
`analysis simply refers to the analysis of claim 18 without explaining how
`Garner discloses these features, which are unique to claim 28. See id. at 40–
`41.
`
`Thus, Petitioner has not shown a reasonable likelihood that it would
`prevail in establishing that claim 28 is anticipated by Garner.
`4. The Dependent Claims
`Claims 23, 29, 32, 33, 37, 38, and 40 depend from claim 18 or 28. So
`the corresponding challenge incorporates the same deficiencies as discussed
`above. For the same reasons as claims 18 and 28, Petitioner has not
`demonstrated a reasonable likelihood that it would prevail in establishing the
`unpatentability of challenged claims 23, 29, 32, 33, 37, 38, and 40.
`
`
`18
`
`
`
`IPR2019-00644
`Reissued Patent RE45,542 E
`
`
`E. Alleged Unpatentability of Claims 18, 23, 24, 28, 29, 32, 33, and 37–40
`as Obvious over Garner and Toombs
`1. Toombs
`Toombs relates to MultiMediaCard (MMC) memory devices.
`Ex. 1008, 1:46–56. Toombs discloses a method to negotiate and determine a
`common operating voltage range to ensure a host’s compatibility with
`multiple cards. Id. Specifically, to determine a common operating voltage,
`the host sends a “VDD voltage window.” Id. at 16:21–23. The active cards
`will then define their internal register values using this voltage window.
`Id. at 16:24–25.
`
`2. Claim 18
`In the obviousness rationale, Petitioner proposes combining “Garner’s
`teaching of a power consumption management system” with Toombs’s
`MMC. Pet. 44. In this combination, Petitioner refers to the analysis in the
`anticipation-based challenge to address the recited values. See id. at 58.
`Specifically, Petitioner asserts that Garner’s power modes and power tuples
`define the range recited in the claims. See id. at 63–64.
`As discussed above, Petitioner has not sufficiently shown that Garner
`discloses (1) a “default value,” (2) a “limiting value, which is higher than
`said default value,” and (3) “a value which is in a range from said default
`value to said limiting value,” which is set as “a maximum power
`consumption of the peripheral device.” See supra § D.1.b. In sum, Garner
`essentially uses the tuples as a way to distinguish between the modes and
`identify the default, instead of specifying a particular value that falls within a
`power-consumption range established by two other values, as recited in
`claim 18. See id.
`
`19
`
`
`
`IPR2019-00644
`Reissued Patent RE45,542 E
`
`
`For obviousness, Petitioner again argues a design-choice rationale for
`modifying Garner’s system: “An alternative design choice is to read, select,
`and write a power consumption value.” Pet. 62–63 (citing Ex. 1002 ¶ 301).
`We are not persuaded by Petitioner’s argument.
`Specifically, the recited device sets a maximum power consumption
`value that falls within a range. Unlike the recited device, Garner uses the
`power tuples to identify power modes. Ex. 1007, 5:40–46. Garner’s power
`tuples are simply names, not particular power consumption values. See, e.g.,
`id. at 5:26–31. Because the tuple is not interpreted as a power value, the
`tuple value can indicate different power modes in different embodiments.
`See id. at 5:26–28, 6:48–51.
`Petitioner does not explain why it would have been obvious to modify
`Garner to use power consumption values instead of power tuples. Rather,
`Petitioner merely concludes that this would have been an obvious matter of
`design choice. See Pet. 62–63. But “there must be some articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness.” KSR Int’l Co. v. Teleflex, I
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
