Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 8
`
` Entered: September 5, 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 IPR2019-00648
`Patent 9,063,850 B2
`____________
`
`
`Before JAMESON LEE, J. JOHN LEE, and JASON M. REPKO,
`Administrative Patent Judges.
`
`LEE, J. JOHN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 8
`
` Entered: September 5, 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 IPR2019-00648
`Patent 9,063,850 B2
`____________
`
`
`Before JAMESON LEE, J. JOHN LEE, and JASON M. REPKO,
`Administrative Patent Judges.
`
`LEE, J. JOHN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00648
`Patent 9,063,850 B2
`
`
`INTRODUCTION
`Kingston Technology Company, Inc.1 (“Petitioner”) filed a Petition
`(Paper 1, “Pet.”) requesting an inter partes review of claims 1–4, 9–13, 19–
`22, and 27–31 (“the challenged claims”) of U.S. Patent No. 9,063,850 B2
`(Ex. 1001, “the ’850 Patent”).2 Memory Technologies, LLC (“Patent
`Owner”) timely filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
`We have authority to institute an inter partes review only if the
`information presented in the Petition shows “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). An inter partes review may
`not be instituted on fewer than all claims challenged in the Petition. SAS
`Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).
`Upon consideration of the Petition and Preliminary Response, we
`determine that the information presented shows there is a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`the majority of the challenged claims, as discussed below. Accordingly, we
`institute an inter partes review of the challenged claims of the ’850 Patent.
`
`
`1 Petitioner identifies Kingston Technology Corporation as an additional real
`party-in-interest. Pet. 1.
`2 As Patent Owner points out (Prelim. Resp. 7), the Petition lacks a
`certification under 37 C.F.R. § 42.104(a) that Petitioner “is not barred or
`estopped from requesting an inter partes review” of the ’850 Patent. We
`granted leave to Petitioner to correct this error by filing the required
`certification, which was filed on July 30, 2019. Paper 7.
`
`2
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`A.
`
`Related Cases
`The parties identify as related to the present case the following
`pending district court case: Memory Technologies, LLC v. Kingston
`Technology Co., Inc., 8:18-cv-00171 (C.D. Cal.). Pet. 2; Paper 4, 1. The
`parties further indicate a pending U.S. patent application and other cases
`before the Board may be related to the present case. Pet. 2; Paper 4, 1–2.
`
`B.
`
`The ’850 Patent
`The ’850 Patent relates to “run-time configuration of mass memory
`devices.” Ex. 1001, 1:13–15. The Specification describes that prior art
`memory devices typically are “optimized for one kind of application . . .
`with particular memory access characteristics.” Id. at 1:36–38. “Due to this
`fixed optimization strategy, when a memory device is placed into a different
`environment with new access demands, it may fail to optimally perform
`under the requirements of the new environment.” Id. at 1:41–44.
`The claimed invention overcomes this deficiency via “run-time
`configuration” of memory devices. Id. at 1:58–60. The Specification
`describes “receiving one or more commands for activating one or more
`access profiles,” and configuring access to the memory device in accordance
`with at least one of those profiles. Id. at 1:62–66. For example, the access
`profiles may “correspond to at least one of a random and a sequential mode
`of access.” Id. at 1:66–2:1, 4:49–59. The active access profile “governs the
`current access operations to the memory device,” so the device may be set to
`a different access configuration by changing the active profile. Id. at 4:59–
`5:11; see id. at 5:42–6:18, Fig. 3.
`
`3
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`C.
`
`Challenged Claims
`Petitioner challenges claims 1–4, 9–13, 19–22, and 27–31 of the ’850
`Patent. Claims 1, 10, 19, and 28 are independent claims. Claim 1 is
`illustrative and is reproduced below:
`1.
`A memory device comprising:
`one or more registers to store one or more predefined access
`profiles associated with the memory device, the one or more
`predefined access profiles used to determine how access to the
`memory device is configured for at least one usage; and
`a controller configured to:
`receive at least one first command to activate at least one
`of the one or more predefined access profiles; and
`receive at least one second command to designate the at
`least one of the one or more predefined access profiles
`such that at least a portion of the memory device is
`configured according to the at least one of the one or more
`predefined access profiles for the at least one usage.
`
`D.
`
`Asserted Grounds of Unpatentability and Asserted Prior Art
`Petitioner asserts that the challenged claims are unpatentable based on
`the combinations of alleged prior art references below. Petitioner also relies
`on the Declaration of R. Jacob Baker, Ph.D., P.E. (Ex. 1002).
`
`
`References
`CompactFlash3
`
`Basis
`§ 102(b)
`
`Claims Challenged
`1, 3, 9, 10, 12, 19, 21, 27,
`28, 30
`
`
`3 CompactFlash Association, CF+ and CompactFlash Specification Revision
`3.0, dated Dec. 23, 2004 (Ex. 1003, “CompactFlash”).
`
`4
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`
`References
`Ziv4 and Vogt5
`
`Ziv, Vogt, and eMMC6
`
`Basis
`§ 103(a)
`
`§ 103(a)
`
`Claims Challenged
`1, 3, 9, 10, 12, 19, 21, 27,
`28, 30
`4, 13, 22, 31
`
`CompactFlash and Elhamias7
`
`§ 103(a)
`
`2, 11, 20, 29
`
`Ziv, Vogt, and Elhamias
`
`Sinclair8
`
`Sinclair and eMMC
`
`
`
`§ 103(a)
`
`§ 102(b)
`
`§ 103(a)
`
`2, 11, 20, 29
`1, 3, 9, 10, 12, 13, 19, 21,
`27, 28, 30
`13
`
`ANALYSIS
`
`A.
`
`Level of Ordinary Skill
`Based on the testimony of Dr. Baker, Petitioner asserts that a person
`of ordinary skill in the art would have had “at least a bachelor’s degree in
`electrical engineering, computer engineering, or equivalent training, with at
`least two years of academic or industry experience in the field of memory
`system design.” Pet. 4 (citing Ex. 1002 ¶ 65). Patent Owner contends that a
`
`4 U.S. Patent No. 7,478,248 B2, filed Nov. 27, 2002, issued Jan. 13, 2009
`(Ex. 1004, “Ziv”).
`5 U.S. Patent No. 6,681,304 B1, issued Jan. 20, 2004 (Ex. 1005, “Vogt”).
`6 JEDEC, MultiMediaCard Association (MMCA) and the JEDEC Solid State
`Technology Association (JEDEC) Announce eMMC for Embedded Flash
`Memory Applications, dated Dec. 20, 2006 (Ex. 1016, “eMMC”).
`7 U.S. Patent Application Publication No. 2006/0022054 A1, published
`Feb. 2, 2006 (Ex. 1006, “Elhamias”).
`8 U.S. Patent No. 7,409,489 B2, filed Oct. 25, 2005, issued Aug. 5, 2008
`(Ex. 1017, “Sinclair”).
`
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`person of ordinary skill would have had “a Bachelor’s degree in electrical
`engineering or a related field, and at least three years of experience working
`with electronic circuits.” Prelim. Resp. 7.
`Both parties espouse a similar characterization of the level of ordinary
`skill, and neither party relies on a particular formulation of the level of
`ordinary skill for any specific argument. At this stage, the only evidence of
`record regarding the appropriate level of skill is the testimony of Dr. Baker
`advanced by Petitioner, and the level of skill reflected in the asserted
`references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001). Thus, for purposes of this Decision, we apply Petitioner’s
`proposed definition,9 taking into account the level of skill reflected in the
`asserted references. We note, however, that our conclusions in this Decision
`would be unchanged if we applied Patent Owner’s definition.
`
`B.
`
`Claim Construction
`For petitions filed after November 13, 2018, claim terms are construed
`according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc). 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 (Oct. 11, 2018). Under the Phillips
`standard, claim terms must be given “the meaning that the term would have
`to a person of ordinary skill in the art in question at the time of the
`invention.” Phillips, 415 F.3d at 1313.
`
`
`9 We note that it is unnecessary to indicate that a person of ordinary skill
`would have “at least” a particular degree or years of experience. As such, we
`disregard that aspect of Petitioner’s definition for this Decision.
`
`6
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`
`Petitioner proposes constructions for the terms “predefined access
`profile,” “configuring access,” and “usage.” Pet. 16–19. We conclude,
`however, that no claim terms require express construction for purposes of
`this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999).
`
`C.
`
`Alleged Anticipation by CompactFlash
`A claim is anticipated only if each and every element is disclosed and
`arranged as in the claim, either expressly or inherently, in a single prior art
`reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed.
`Cir. 2008); Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`631 (Fed. Cir. 1987). Petitioner alleges that claims 1, 3, 9, 10, 12, 19, 21,
`27, 28, and 30 are anticipated by CompactFlash. As explained below, we
`determine Petitioner has shown a reasonable likelihood of prevailing on this
`asserted ground of unpatentability as to each of these challenged claims.
`
`Public Accessibility of CompactFlash
`1.
`As a threshold issue, we first assess whether Petitioner has shown
`sufficiently that CompactFlash qualifies as a prior art printed publication.
`Public accessibility is the “touchstone” in determining whether a reference
`constitutes a printed publication. See Acceleration Bay, LLC v. Activision
`Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018); In re Hall, 781 F.2d 897,
`898–899 (Fed. Cir. 1986). A reference is considered “publicly accessible” if
`it was disseminated or otherwise made available such that a person of
`ordinary skill interested in the subject matter or art, exercising reasonable
`diligence, could locate it. Id.; In re Wyer, 655 F.2d 221, 226 (CCPA 1981).
`Based on the record evidence and arguments at this juncture, we determine
`
`7
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`that Petitioner has made a sufficient showing for purposes of institution, as
`explained below.
`Petitioner contends that CompactFlash was publicly accessible
`because it was available for download by “any interested member of the
`public free of charge,” at least as early as 2005. See Pet. 20. Relying on the
`testimony of Dr. Baker, Petitioner asserts that CompactFlash is a
`specification for a device that “became the go-to portable mass storage
`device for electronic devices,” which “remains popular and is supported by
`many devices.” Id. at 19 (citing Ex. 1002 ¶¶ 142–144).
`According to Dr. Baker, the CompactFlash device was first produced
`in 1994, and it “quickly became one of the most popular mass storage
`devices mainly because of its small form size, speed, capacity, and backing
`by major technological companies.” Ex. 1002 ¶¶ 143–144. Such companies
`formed the CompactFlash Association (CFA) “to develop an industry-wide
`standard for CompactFlash.” Id. ¶ 144. The CompactFlash specification
`was developed and produced by the CFA. Id.
`The CompactFlash reference relied on in the Petition (Exhibit 1003) is
`titled, “CF+ and CompactFlash Specification Revision 3.0,” and bears a date
`of December 23, 2004. Ex. 1003, 1. It further indicates that it was produced
`by the CFA, and lists the address and website of the CFA. Id. The reference
`also bears a copyright date of 2004. See id. at 2.
`Petitioner alleges that “CompactFlash was freely and publicly
`available online from the CompactFlash website as of at least January 13,
`2005.” Pet. 21. According to a January 7, 2005 article in the “Business
`Wire” news service, the CFA “announce[d] the approval and availability of
`the CF+(TM) & Compact Flash(R) Specification Revision 3.0” and indicated
`
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`the specification was “available to download free from the CFA web site at
`http://www.compactflash.org.” Ex. 1014, 1–2. Petitioner also relies on a
`U.S. patent application published in 2007 (“Royer”) that mentions “the CF+
`and CompactFlash Specification Revision 3.0, published by the [CFA], Palo
`Alto, Calif., Dec. 23, 2004, http://www.compactflash.org.” Ex. 1015 ¶ 3.
`An archived copy of the CFA website’s homepage from January 2005
`prominently refers to “CF+(TM) & CompactFlash Specification Revision
`3.0,” and provides a link to download the document. Ex. 1019, 2. An
`archived copy of the CFA website’s “Frequently Asked Questions” page
`from the same time period addresses the question, “Where can I get a free
`copy of the CompactFlash Specification?” and provides a link to download
`the document. Id. at 9. Another CFA webpage archived in January 2005
`indicates that downloading the CompactFlash specification required
`“registration” consisting of providing contact information, indicating
`whether the downloading party wished to be provided with “additional
`CompactFlash information,” and optionally providing comments or
`questions. Id. at 4.
`Finally, Petitioner relies on the testimony of Michael Asao (Ex. 1020).
`Pet. 20–21. Mr. Asao testifies that he was a Board member of the CFA from
`1995 to 2000, and otherwise affiliated with the CFA from 2008 to the
`present. Ex. 1020 ¶¶ 1–2. According to Mr. Asao, he was not affiliated with
`the CFA between 2000 and 2008, but he “was aware of and knowledgeable
`about CFA’s development and distribution of industry standards for flash-
`based memory cards” during that time. Id. ¶ 2. According to Mr. Asao, “the
`homepage of the CompactFlash website included a link for a free download
`of the current [CompactFlash] specification,” at least between May 1998 and
`
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`the end of 2005. Id. ¶ 6. He indicates that a registration form including
`contact information was required, but that “[o]nce this form was submitted,
`the specification could be downloaded directly from the website.” Id.
`Further, Mr. Asao testifies that he is “aware that CF+ and CompactFlash
`Specification Revision 3.0 was released on December 23, 2004,” and that
`the CFA homepage “included a link for a free download” of that document
`in January 2005 consistent with the practice at that time. Id. ¶ 7. He also
`indicates that the CFA “began charging a fee to obtain a copy” of the
`CompactFlash specification “[a]t a later date.” Id. ¶ 8.
`For purposes of this Decision, we conclude that the evidence and
`arguments discussed above constitute a sufficient showing that
`CompactFlash was publicly accessible at this stage of the case. In particular,
`we note the testimony of Dr. Baker indicating that CompactFlash
`technology, and the industry standards associated with that technology as set
`forth in CompactFlash specifications, were well-known to the public and to
`the mass storage device industry in particular. See Ex. 1002 ¶¶ 143–144; see
`also Voter Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374,
`1380–1381 (Fed. Cir. 2012) (finding that a reference posted to a website that
`was a “prominent” forum for electronic voting technology supported public
`accessibility). At this juncture, Dr. Baker’s testimony regarding the
`development of the CompactFlash standard by the CFA, and the additional
`documentary evidence presented by Petitioner—i.e., the Business Wire
`article and Royer—adequately support Petitioner’s contention that a person
`of ordinary skill interested in mass storage device technology would have
`known to look for CompactFlash specifications on the CFA website,
`including the particular specification Petitioner relies on here as a prior art
`
`10
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`reference. Additionally, the archived pages of the CFA website and Mr.
`Asao’s testimony establish sufficiently at this stage that an interested artisan
`in January 2005 would have easily located the CompactFlash reference on
`the website, which was prominently featured on the homepage, and would
`have been able to readily obtain the reference. Patent Owner’s
`counterarguments are not persuasive at this point, as explained below.
`Patent Owner first asserts that Petitioner fails to allege that
`CompactFlash was actually disseminated to anyone. Prelim. Resp. 13–15.
`Although true, “[i]f accessibility is proved, there is no requirement to show
`that particular members of the public actually received the information.”
`Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir.
`1988). Patent Owner next contends that Petitioner failed to show
`sufficiently that CompactFlash was made available such that interested
`artisans could locate it exercising reasonable diligence because Petitioner
`failed to demonstrate that the CFA website was indexed or otherwise
`“findable by a search engine.” Prelim. Resp. 19. A lack of such indexing,
`while an important consideration, does not defeat public accessibility if
`ordinary artisans would otherwise have known about the reference and how
`to locate it. See Voter Verified, 698 F.3d at 1380–1381.
`Along those lines, Patent Owner next asserts that Petitioner does not
`demonstrate that persons of ordinary skill would have been aware of the
`CFA website or the Business Wire article. Id. at 19–20. Simply being
`available on a website, by itself, is insufficient to render a reference publicly
`accessible because “‘public accessibility’ requires more than technical
`accessibility.” Acceleration Bay, 908 F.3d at 773. On the present record,
`however, we determine that Petitioner presents sufficient evidence beyond
`
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`mere availability on the CFA website. The Petition asserts that
`CompactFlash devices were a popular type of mass storage device, and that
`the CFA was formed to develop CompactFlash technology as an industry
`standard for mass storage devices. Pet. 19–20. These assertions are
`supported by testimony from Dr. Baker explaining the development of the
`standard by the CFA, as well as its prominence among consumers and within
`the industry. See Ex. 1002 ¶¶ 143–144. Additionally, the Business Wire
`article and the Royer reference provide further evidence that skilled artisans
`would have known to look for CompactFlash on the CFA website. On this
`record, this evidence is sufficient and persuasive.
`Patent Owner disputes that either the Business Wire article or Royer is
`sufficient evidence that an artisan would have been able to locate
`CompactFlash exercising reasonable diligence. Prelim. Resp. 20, 37–39.
`Petitioner does not rely solely on either of these documents individually,
`however, and we are persuaded at this stage that the totality of the evidence
`sufficiently supports Petitioner’s contention that CompactFlash was publicly
`accessible. For similar reasons, Patent Owner’s arguments that Mr. Asao’s
`testimony and the Declaration of Christopher Butler (offered to authenticate
`the archived pages from the CFA website) each individually lacks certain
`facts, also are unpersuasive. See id. at 26–29, 32–37.
`In addition, Patent Owner addresses various other factors to argue
`against a finding of public accessibility. See id. at 29–32. We do not find
`these arguments persuasive at this point. Although Patent Owner speculates
`that a person of ordinary skill may not have wanted to provide contact
`information to register with the CFA before downloading CompactFlash, no
`evidence is cited to indicate that this would have posed any meaningful
`
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`barrier to an interested artisan. See id. at 29–30. Patent Owner also cites
`Mr. Asao’s testimony that obtaining CompactFlash specifications eventually
`required a fee, but his testimony also makes clear that no fee was required in
`or before 2005. See id. at 30; Ex. 1020 ¶¶ 6–8. Finally, Patent Owner also
`relies on a notice in CompactFlash regarding copyright protections
`prohibiting further dissemination, but we are not persuaded such a
`boilerplate copyright notice defeats public accessibility here, particularly
`given the evidence indicating CompactFlash was readily available directly
`from the CFA website. See Prelim. Resp. 31–32 (citing Ex. 1003, 2).
`Critically, however, we note that we do not consider at this stage the
`numerous arguments Patent Owner makes regarding purported evidentiary
`issues relating to CompactFlash and Petitioner’s public accessibility
`evidence. For example, we do not consider for institution purposes whether
`the CompactFlash reference has been adequately authenticated as the
`document available on the CFA website in January 2005. See Prelim Resp.
`25–26, 38. Nor do we assess whether Mr. Asao’s testimony regarding his
`background and knowledge of the CFA adequately establishes personal
`knowledge of the facts he discusses in his declaration. See id. at 22–25.
`Such issues are typically assessed during trial, if instituted, to allow the
`parties to state objections, provide supplemental evidence or supplemental
`information, and depose witnesses to create a complete record on which
`admissibility can be judged. See 37 C.F.R. §§ 42.51(b)(1)(ii), 42.53, 42.64.
`For similar reasons, we also do not make any final determinations in this
`Decision as to the persuasive weight any evidence or testimony is accorded,
`which also is assessed on a complete record after trial.
`
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`
`In summary, as discussed above, we conclude for purposes of this
`Decision that the evidence and arguments presented thus far, on the whole,
`sufficiently support Petitioner’s contention that CompactFlash was publicly
`accessible as of 2005 and, consequently, qualifies as § 102(b) prior art.
`
`Overview of CompactFlash
`2.
`CompactFlash is Revision 3.0 of a technical specification for the
`CompactFlash standard for flash memory data storage cards and other
`related devices. Ex. 1003, 15. The specification provides technical details
`for CompactFlash devices, such as physical dimensions, pinout and signal
`definitions, software interface requirements, and details for other devices
`(such as adapters) that may be used with CompactFlash devices. Id. at 18.
`Under the version of the standard embodied in the CompactFlash reference
`at issue here, a CompactFlash storage card contains a single chip controller
`and flash memory module(s) with a 50-pin connector that allows the
`controller to interface with a host system. Id. at 19.
`
`Claim 1
`3.
`The Petition sets forth a detailed explanation of Petitioner’s
`contention that claim 1 is anticipated by CompactFlash, which we find
`persuasive on the present record. See Pet. 33–45. For the recited “one or
`more registers,” Petitioner cites disclosures in CompactFlash regarding
`selecting a DMA mode by “specifying a value in the Sector Count register.”
`Ex. 1003, 157; Pet. 38. Such DMA modes include “Multiword DMA mode”
`and “Ultra DMA Mode.” Ex. 1003, 158. According to Petitioner, each
`DMA mode discloses a “predefined access profile” that is “used to
`determine how access to the memory device is configured for at least one
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`usage,” as recited in claim 1, because each DMA mode causes the
`CompactFlash memory device to operate differently when reading or writing
`data. Pet. 33–37 (citing Ex. 1002 ¶¶ 219–223).
`Regarding the “controller” recited in claim 1, Petitioner identifies the
`disclosure in CompactFlash of a “controller” for the CompactFlash memory
`card. Id. at 39 (citing Ex. 1002 ¶ 226–227; Ex. 1003, 15, Fig. 1). With
`respect to the limitation “receive at least one first command to activate at
`least one of the one or more predefined access profiles,” Petitioner relies on
`CompactFlash’s description of a “SET FEATURES” command. Id. at 39–
`40. CompactFlash indicates that this command “is used by the host to
`establish or select certain features,” including “Feature 03h” that allows the
`host to “select the PIO or Multiword DMA transfer mode,” such as a
`Multiword DMA mode or an Ultra DMA mods. Ex. 1003, 156–157.
`For the “receive at least one second command” limitation, Petitioner
`relies on disclosures in CompactFlash regarding how read and write
`operations are performed under the DMA modes discussed above. Id. at 40–
`45 (citing Ex. 1003, 68–83, Figs. 32, 33, 38). In particular, CompactFlash
`discloses that when an Ultra DMA mode is selected, “the Ultra DMA
`protocol shall be used instead of the Multiword DMA protocol when [READ
`DMA or WRITE DMA commands] are issued by the host.” Ex. 1003, 68.
`Thus, according to Petitioner, CompactFlash discloses receiving a second
`command (e.g., a READ DMA or WRITE DMA command) that causes
`accessing the device (i.e., reading or writing data) to be configured in
`accordance with a predefined access profile (e.g., an Ultra DMA mode) “for
`the at least one usage” (i.e., a read or write operation), as recited in claim 1.
`See Pet. 40–45 (citing Ex. 1002 ¶¶ 228–234).
`
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`
`Patent Owner does not dispute at this stage that CompactFlash
`discloses each of the individual limitations of claim 1. Instead, Patent
`Owner contends CompactFlash does not anticipate claim 1 because those
`limitations are not disclosed as part of a single embodiment. Prelim. Resp.
`39–45 (citing Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325,
`1332 (Fed. Cir. 2010)).
`Based on the present record, we agree with Petitioner’s analysis of the
`disclosures of CompactFlash, as discussed above. The disclosures regarding
`the “SET FEATURES” command are not within a separate embodiment
`than the disclosures regarding read/write operations under certain DMA
`modes. Rather, the read/write operations are conducted pursuant to the
`selected DMA mode—e.g., “Multiword DMA” or “Ultra DMA”—which are
`the same DMA modes set using the “SET FEATURES” command.
`Although they are not disclosed together in the same place within the
`CompactFlash reference, we are persuaded by Petitioner’s analysis and
`evidence, including Dr. Baker’s testimony, that an ordinary artisan would
`have understood both sets of disclosures to be part of the same embodiment,
`i.e., a CompactFlash memory device operating in accordance with the
`CompactFlash technical specifications.
`Patent Owner’s reliance on Therasense is unavailing. In Therasense,
`the Federal Circuit held that a jury instruction was inconsistent with
`governing law because it stated that anticipation could be proven by showing
`that the claimed elements as disclosed in the prior art “could have been
`arranged” the same way as in the claim. Therasense, 593 F.3d at 1332. The
`court made clear that the claims at issue cannot be treated like a catalog of
`spare parts wherein the claim elements may be considered without
`
`16
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`IPR2019-00648
`Patent 9,063,850 B2
`
`considering the “part-to-part relationships set forth in the claims.” Id.
`(quoting Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co.,
`730 F.2d 1452, 1459 (Fed. Cir. 1984)). Here, Petitioner does not rely on an
`arrangement of the elements of claim 1 that is different than the arrangement
`recited in the claim. By identifying disclosures in CompactFlash regarding
`read/write operations under particular DMA modes, and also disclosures
`regarding the command used to set the device to operate under those very
`DMA modes, Petitioner has explained sufficiently how CompactFlash
`discloses the same part-to-part relationships recited in claim 1.
`Accordingly, we determine that Petitioner has demonstrated
`sufficiently that CompactFlash discloses each element in claim 1, arranged
`as in the claim. As a result, Petitioner has shown a reasonable likelihood of
`prevailing on its asserted anticipation ground against claim 1.
`
`Claims 10, 19, and 28
`4.
`Claims 10, 19, and 28 recite similar limitations as claim 1, and
`Petitioner relies on the same analysis as for the corresponding limitations of
`claim 1. See Pet. 46–48. Patent Owner relies on the same arguments as for
`claim 1, which are unpersuasive at this juncture for the reasons explained
`above. See Prelim. Resp. 41–42.
`Based on the present record, we find Petitioner’s analysis persuasive
`for the same reasons as for claim 1. Consequently, we conclude that
`Petitioner has demonstrated sufficiently that CompactFlash discloses each
`element in claims 10, 19, and 28, and has shown a reasonable likelihood of
`prevailing on this ground on those claims.
`
`17
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`IPR2019-00648
`Patent 9,063,850 B2
`
`
`Claims 3, 9, 12, 21, 27, and 30
`5.
`Claims 3, 12, 21, and 30 depend from claims 1, 10, 19, and 28,
`respectively, and each recites that “at least one of the one or more predefined
`access profiles comprises a default access profile.” Petitioner relies on
`disclosures in CompactFlash indicating that the device may revert to
`“default non-Ultra DMA modes after executing a power-on.” Ex. 1003, 69;
`Pet. 45, 47. At this stage, Patent Owner does not dispute Petitioner’s
`contentions regarding claims 3, 12, 21, and 30. We are persuaded by
`Petitioner’s analysis and conclude Petitioner has shown a reasonable
`likelihood of prevailing on this ground for these claims.
`Claims 9 and 27 depend from claims 1 and 19, respectively, and
`recite, “wherein the one or more registers comprise a plurality of registers
`for storing a plurality of the predefined access profiles.” Petitioner relies on
`the same disclosures discussed above relating to the multiple DMA modes in
`CompactFlash. Pet. 45. Patent Owner does not dispute Petitioner’s
`contentions regarding claims 9 and 27 at this juncture. Petitioner’s analysis
`is persuasive, and we determine it demonstrates a reasonable likelihood of
`prevailing on this ground for these claims.
`
`D.
`
`Alleged Obviousness Grounds
`A claim is unpatentable under § 103 if the differences between the
`claimed subject matter and the prior art are “such that the subject matter as a
`whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`
`18
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`IPR2019-00648
`Patent 9,063,850 B2
`
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) objective evidence of nonobviousness, i.e., secondary
`considerations.10 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
`(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
`v. C. H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
`
`1.
`
`Overview of the Asserted Prior Art
`a.
`Ziv (Ex. 1004)
`Ziv is a U.S. patent filed in 2002 and issued on January 13, 2009.
`Ex. 1004, at [22], [45]. Ziv relates to “portable storage devices including a
`microprocessor.” Id. at 1:7–9. In particular, Ziv relates to securing data
`stored on such portable storage devices independently of a host device and
`allowing access only when a user has supplied, for example, an appropriate
`password. Id. at 1:53–56. This is done using a “secure user area” in the
`storage device that holds the user’s secure data, and access to which is
`blocked until the user password is provided. Id. at 2:7–16.
`
`
`10 Neither party presents any evidence or argument regarding secondary
`consi
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