Trials@uspto.gov
`571-272-7822
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` Paper 9
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` Entered: August 13, 2019
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`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 IPR2019-00654
`Patent 7,565,469 B2
`____________
`
`
`
`Before JAMESON LEE, J. JOHN LEE,
`and JASON M. REPKO, Administrative Patent Judges.
`
`LEE, JAMESON, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`

`

`IPR2019-00654
`Patent 7,565,469 B2
`
`
`A. Background
`
`I.
`
`INTRODUCTION
`
`On January 31, 2019, Petitioner filed a Petition to institute inter partes
`
`review of claims 19 and 20 of U.S. Patent No. 7,565,469 B2 (Ex. 1001, “the
`
`’469 patent”). Paper 1 (“Pet.”). Patent Owner filed a Preliminary Response.
`
`Paper 6 (“Prelim. Resp.”).
`
`To institute an inter partes review, we must determine that the
`
`information presented in the Petition shows “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). Having considered
`
`all submissions of both parties, we exercise discretion under 35 U.S.C.
`
`§ 325(d) not to institute review, and further find, in the alternative, that
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`Petitioner has not shown a reasonable likelihood that it would prevail in
`
`establishing the unpatentability of either claim 19 or claim 20 on any alleged
`
`ground of unpatentability.
`
`B. Related Matters
`
`The parties identify a civil action involving the ’469 patent: Memory
`
`Technologies, LLC v. Kingston Technology Corp., et al., No. 8-18-cv-00171
`
`(C.D. Cal.). Pet. 2, Paper 3, 1. Patent Owner further identifies the following
`
`terminated litigations involving the ’469 patent: Memory Technologies, LLC
`
`v. SanDisk LLC et al., No. 8-16-cv-02163 (C.D. Cal.); Certain Memory
`
`Devices and Components Thereof, No. 337-TA-1034 (ITC). Paper 3, 1.
`
`Patent Owner additionally identifies another petition for inter partes review
`
`of claims in the ’469 patent: IPR2017-00979 (terminated prior to institution
`
`decision). Id. The petitioner in IPR2017-00979 is not the petitioner in this
`
`proceeding.
`
`2
`
`

`

`IPR2019-00654
`Patent 7,565,469 B2
`
`C.
`
`The ’469 Patent
`
`The ’469 patent is directed to an interface over a bus between a first
`
`unit and a second unit, where the bus includes a data signal line. Ex. 1001,
`
`1:57–59. First information is driven over the data signal line from the first
`
`unit to the second unit, and the second unit causes a change of state of the
`
`data signal line to convey a first meaning. Id. at 1:59–63. In response to
`
`that change of state of the data signal line, the first unit drives second
`
`information to the second unit over the data signal line. Id. at 1:62–64.
`
`Then the second unit causes a change of state of the data signal line to
`
`convey a second meaning. Id. at 1:64–67. Thus, the meaning of a change of
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`state of the data signal line at the second unit varies depending on whether it
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`is first information or second information that is communicated from the
`
`first unit to the second unit.
`
`Figure 1 of the ’469 patent is reproduced below:
`
`
`
`Figure 1 is a block diagram showing a first unit coupled to a second unit
`
`over a bus. Id. at 3:39–40. The first unit is host 1, and the second unit is
`
`memory card 2. Id. at 3:46–47. Connecting host 1 and memory card 2 is
`
`bus 3 that includes data line 5, command line 6, and clock line 7. Id. at
`
`3:46–50. Figure 1 illustrates busy signal 4 associated with data line 5. Id. at
`
`3
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`

`

`IPR2019-00654
`Patent 7,565,469 B2
`
`3:47–48. Host 1 can be a cellular telephone, a digital camera, a PC, or any
`
`other suitable device that can use memory card 2. Id. at 3:60–62. Host 1
`
`includes driver 1A and receiver 1B coupled to data line 5, and control logic
`
`1C coupled to driver 1A and receiver 1B. Id. at 3:62–65. Memory card 2
`
`includes driver 2A and receiver 2B coupled to data signal line 5, and control
`
`logic 2C coupled to driver 2A and receiver 2B. Id. at 3:66–4:3.
`
`
`
`The ’469 patent explains that because host devices typically
`
`implement a data block size, e.g., 16 k bytes, that is larger than the block
`
`size of data transferrable through an interface of a MultiMedia Card (MMC),
`
`e.g., 512 bytes, it is practical to use multiblock write commands. Id. at
`
`1:32–39. The ’469 patent further explains that in pre-existing operation of
`
`an MMC, busy signaling is used to indicate to the host device whether the
`
`buffers of the MMC are ready to receive next data. Id. at 1:24–28. The ’469
`
`patent also describes that generally there is only one busy signal line. Id.
`
`at 1:29–31. Based on this known configuration, the host device may transfer
`
`multiple 512 byte blocks of data to the MMC without having to poll the
`
`ready status of the MMC’s buffers. Id. at 1:39–42.
`
`
`
`The ’469 patent describes a “problem” associated with sending the
`
`very last data block during execution of a multiblock write command. Id. at
`
`1:43–44. When there are no more data blocks to be transferred, the host
`
`device has to learn whether the MMC has finished programming all of the
`
`received data blocks in the buffer, and thus needs to poll the MMC for its
`
`program ready status. Id. at 1:45–48. The ’469 patent describes this need as
`
`“an inefficient use of the host’s processing capacity.” Id. at 1:48–50.
`
`
`
`The ’469 patent describes changing the meaning of busy signal 4
`
`during command execution. Id. at 4:4–6. For instance, in a multiblock data
`
`4
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`

`

`IPR2019-00654
`Patent 7,565,469 B2
`
`transfer operation of the MMC, for the first data blocks that are transmitted
`
`from the host device, busy signal 4 from the MMC is used by the MMC to
`
`indicate its “buffer busy/ready” status and is so interpreted by the host
`
`device, according to a pre-existing definition of busy signal 4. Id. at 4:6–9.
`
`For the last data block transferred, however, busy signal 4 is used by the
`
`MMC differently, to indicate its “programming ready/busy” status, which is
`
`not according to the pre-existing definition for busy signal 4. Id. at 4:9–10.
`
`The ’469 patent describes that during the data transfer operation there may
`
`be data programming taking place within the MMC in connection with the
`
`transferred data, and this “programming busy/ready” status, as conveyed by
`
`busy signal 4, informs the host device when internal programming of the
`
`MMC is completed. Id. at 4:10–15.
`
`
`
`The ’469 patent explains that by using the invention described therein,
`
`there is no need for the host device to have to poll the internal “program
`
`busy/ready” status of the MMC, and thus the resources of the host device are
`
`conserved. Id. at 4:16–19.
`
`Claims 19 and 20 are reproduced below:1
`
`19. A memory device comprising:
`
`[a] a bus interface configured to be coupled to a host through
`a bus having a data signal line,
`
`[b] the bus interface further comprising a driver at said
`memory device coupled to said data signal line and a
`receiver at said memory device coupled to the data signal
`line, said receiver being operable to receive information
`comprising a first information portion and a second
`
`
`
`1 The alphabetical labels for each limitation, in brackets, are added by
`Petitioner. Pet. 30–38.
`
`5
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`

`

`IPR2019-00654
`Patent 7,565,469 B2
`
`
`information portion from the host over the data signal line
`within a command execution;
`
`[c] said driver being operable to drive a change of state of the
`data signal line to the host within the command execution;
`
`[d] said bus interface further comprising a controller coupled
`to said driver and to said receiver and operable to cause
`the change of state of the data signal line to have a first
`meaning after receiving the first information portion
`within the command execution and to have a second
`meaning different from the first meaning after receiving
`the second information portion within the command
`execution from the host over the data signal line.
`
`Ex. 1001, 9:4–23.
`
`20. A memory device as in claim 19,
`
`where said bus is further comprised of a command signal line,
`and where the controller is responsive to at least one
`command for a multiblock transfer that initiates the
`command execution received through the command signal
`line from the host for causing the change of state of the
`data signal line to have the first meaning after receiving
`the first information portion and to have the second
`meaning after receiving second information portion from
`the host over the data signal line.
`
`Id. at 10:1–10.
`
`D.
`
`Evidence Relied Upon
`
`Petitioner relies on the following references:2
`
`
`
`2 The ’469 patent issued from Application 11/250,711, filed October 14,
`2005. Ex. 1001, [21]. It also lists ancestral Provisional Application
`60/629,098, filed November 17, 2004. Id. [60].
`
`6
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`

`

`IPR2019-00654
`Patent 7,565,469 B2
`
`
`
`Reference
`
`MMC 3.31 MMCA Tech. Committee,
`MultiMediaCard Ass’n, The
`MultiMediaCard System
`Specification, version 3.31
`
`CompactFlash CompactFlash Ass’n,
`CompactFlash Specification
`Revision 1.3
`
`Date
`
`Exhibit
`
`May 2003
`
`Ex. 1003
`
`July 1998
`
`Ex. 1004
`
`Petitioner also relies on the Declaration of Michael Asao (Ex. 1006)
`
`and the Affidavit of Christopher Butler (Ex. 1005).
`
`The Asserted Grounds of Unpatentability
`
`E.
`
`
`Claims Challenged
`
`Basis3
`
`Reference(s)
`
`19 and 20
`
`19 and 20
`
`§ 103
`
`§ 103
`
`MMC 3.31
`
`MMC 3.31 and CompactFlash
`
`A.
`
`The Law on Obviousness
`
`II. ANALYSIS
`
`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 between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
`Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent was filed before March 16, 2013, we refer to
`the pre-AIA version of § 103.
`
`7
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`

`

`IPR2019-00654
`Patent 7,565,469 B2
`
`indicia of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`
`(1966). One seeking to establish obviousness based on more than one
`
`reference also must articulate sufficient reasoning with rational
`
`underpinnings to combine teachings. See KSR Int’l Co. v. Teleflex, Inc.,
`
`550 U.S. 398, 418 (2007).
`
`B.
`
`The Level of Ordinary Skill in the Art
`
`Petitioner asserts that the level of ordinary skill in the art corresponds
`
`to “a person with a bachelor’s degree in electrical engineering or a closely
`
`related field, and two or three years of experience in the field of memory
`
`system design.” Pet. 16. Patent Owner has not articulated a different level
`
`of ordinary skill and also has not disputed Petitioner’s statement of the level
`
`of ordinary skill. In this circumstance, and for purposes of this decision, we
`
`adopt the level of ordinary skill as articulated by Petitioner.
`
`C. Claim Construction
`
`For petitions filed on or after November 13, 2018, a claim shall be
`
`construed using 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 such claim as understood by one of ordinary skill in the art and
`
`the prosecution history pertaining to the patent. 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)
`
`(codified at 37 C.F.R. § 42.100 (2019)). Petitioner filed its Petition on
`
`January 31, 2019. Paper 1. Thus, we apply the claim construction standard
`
`as set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`
`banc) (“the Phillips standard”).
`
`8
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`

`

`IPR2019-00654
`Patent 7,565,469 B2
`
`
`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 including expert and inventor testimony, dictionaries, and
`
`learned treatises, although extrinsic evidence is less significant than the
`
`intrinsic record. Phillips, 415 F.3d at 1312–17. Usually, the specification is
`
`dispositive, and it is the single best guide to the meaning of a disputed term.
`
`Id. at 1315.
`
`The specification may reveal a special definition given to a claim term
`
`by the patentee, or the specification may reveal an intentional disclaimer or
`
`disavowal of claim scope by the inventor. Id. at 1316. If an inventor acts as
`
`his or her own lexicographer, the definition must be set forth in the
`
`specification with reasonable clarity, deliberateness, and precision.
`
`Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed.
`
`Cir. 1998). The disavowal, if any, can be effectuated by 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. Ltd., 868 F.3d 1013, 1017
`
`(Fed. Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`
`(Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`803 (Fed. Cir. 1999).
`
`9
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`

`

`IPR2019-00654
`Patent 7,565,469 B2
`
`
`Petitioner proposes a construction for two terms:
`
`1.
`
`“within a command execution” as meaning—while
`
`performing in accordance with a command—; and
`
`2.
`
`“within the command execution” as meaning—
`
`while performing in accordance with the command—.
`
`Pet. 15–16.
`
`Patent Owner has not proposed a construction for any claim term, and
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`has not disputed the above-noted proposed constructions by Petitioner. We
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`determine that it is unnecessary to provide an express construction for these
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`terms because of the lack of dispute between the parties with respect thereto,
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`because Petitioner’s construction essentially reflects what the terms facially
`
`or plainly indicate, and because we have no reason, on this record, to
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`conclude that the proposed constructions are too broad or too narrow.
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`D. Discretionary Denial under 35 U.S.C. § 325(d)
`
`
`
`For reasons discussed below, we exercise discretion under 35 U.S.C.
`
`§ 325(d) to deny the Petition.
`
`
`
`“In determining whether to institute or order a proceeding under this
`
`chapter, chapter 30, or chapter 31, the director may take into account
`
`whether, and reject the petition or request because, the same or substantially
`
`the same prior art or arguments previously were presented to the Office.”
`
`35 U.S.C. § 325(d). Institution of review is permitted, but never compelled.
`
`Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016).
`
`Based on the discretionary denial authorized by 35 U.S.C. § 325(d), the
`
`factors considered include: (a) the similarities and material differences
`
`between the asserted art and the prior art evaluated during examination;
`
`(b) the cumulative nature of the asserted art and the prior art evaluated
`
`10
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`

`IPR2019-00654
`Patent 7,565,469 B2
`
`during examination; (c) the extent to which the asserted art was evaluated
`
`during examination, including whether the prior art was the basis for
`
`rejection; (d) the extent of the overlap between the arguments made during
`
`examination and the manner in which Petitioner relies on the prior art or
`
`Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed
`
`out sufficiently how the Examiner erred in its evaluation of the asserted prior
`
`art; and (f) the extent to which additional evidence and facts presented in the
`
`Petition warrant reconsideration of the prior art or arguments. Becton,
`
`Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, slip op.
`
`at 17–18 (PTAB Dec. 15, 2017) (Paper 8) (Precedential in relevant part).
`
`
`
`During examination of the ’469 patent, an earlier version of MMC
`
`3.31, i.e., Version 3.1 (Ex. 2002 (“MMC 3.1”)), was applied by the
`
`Examiner against the application claims, first by itself in an obviousness
`
`rejection, and then in combination with another reference in a still further
`
`obviousness rejection. Ex. 1002, 210, 248. Insofar as the issues involved in
`
`this Petition are concerned, the disclosures of MMC 3.31 and MMC 3.1 are
`
`essentially the same. The disclosures cited by the Examiner and the
`
`disclosures relied on by Petitioner appear in both versions. The disclosures
`
`of MMC 3.31 as described immediately below also appear in both versions.
`
`
`
`MMC 3.31 provides a system specification for a MultiMediaCard
`
`system (“MMC system”). Ex. 1003, 2, 11. It describes MultiMediaCard as
`
`a universal low cost data storage and communication media designed to
`
`cover a wide area of applications such as electronic toys, organizers, PDAs,
`
`cameras, smart phones, digital recorders, MP3 players, pagers, etc. Id. at 11.
`
`Such a low cost mass storage product is implemented as a “card” with a
`
`simple controlling unit, and a compact, easy-to-implement interface. Id.
`
`11
`
`

`

`IPR2019-00654
`Patent 7,565,469 B2
`
`at 15. Communication with the card is achieved through use of a command
`
`line or channel CMD and a data line or channel DAT. Id. at 18. There also
`
`is a separate clock pin CLK on the card for supplying a clock signal. Id.
`
`With each cycle of a clock signal, a one bit transfer on the command and
`
`data lines is carried out. Id. The command line is a bidirectional channel
`
`used for card initialization and data transfer commands, and the data line is a
`
`bidirectional channel, unless the card is a read-only card. Id.
`
`
`
`The MMC 3.31 describes a block write operation in which a host can
`
`write or transfer one or more blocks of data to the card. Id. at 38. It
`
`describes and supports two different types of block write operations:
`
`(1) open-ended multiple block write, and (2) multiple block write with pre-
`
`defined block count. Id. The command CMD25 starts a transfer of multiple
`
`blocks. Id. To invoke a transfer with pre-defined block count, the host must
`
`additionally use the command CMD23 immediately preceding the command
`
`CMD25. Id. Otherwise, the command CMD25 would start an open-ended
`
`multiple block write operation, in which case the card will continuously
`
`accept and program data blocks until a stop transmission command is
`
`received. Id.
`
`
`
`MMC 3.31 describes that the card provides buffers for block writes,
`
`so that the next block can be sent while the earlier block is being
`
`programmed by the card. Id. at 35. MMC 3.31 describes that if the card
`
`does not have a free buffer available to receive the next block, it will pull the
`
`data line down to low. Id. at 63. As soon as one receiving buffer becomes
`
`free, the card will stop pulling down on the data line. Id. MMC 3.31 further
`
`describes: “If all write buffers are full, and as long as the card is in
`
`12
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`IPR2019-00654
`Patent 7,565,469 B2
`
`Programming State (see MultiMediaCard state diagram Figure 19), the DAT
`
`line will be kept low.” Id. at 35.
`
`
`
`In the case of an open-ended block write operation, a stop
`
`transmission command may be received while the card is busy programming
`
`the last received block of data or while the card is idle. Id. at 64. In either
`
`case, there are still unprogrammed data blocks in the buffers of the card. Id.
`
`Upon receiving the stop transmission command, the card will activate the
`
`busy signal and program these yet to be programmed data blocks. Id. MMC
`
`3.31 explains that in the case of multiple block write with a pre-defined
`
`block count, a stop command is not required at the end, and that the card will
`
`accept the requested number of data blocks and terminate the transaction.
`
`Id. at 38. MMC 3.31 further describes that the host can use either type of
`
`multiple block write at any time. Id. For instance, MMC 3.31 describes a
`
`host using the stop command to abort the write operation. Id.
`
`
`
`Figure 10 of MMC 3.31 is reproduced below:
`
`Figure 10 generally illustrates the use of busy signaling on the data line by
`
`the card during a multiple block write operation.
`
`
`
`In the rejection by the Examiner based on MMC Version 3.1 alone,
`
`the Examiner cited to the following disclosure: “If all write buffers are full,
`
`and as long as the card is in Programming State (see MultiMediaCard state
`
`
`
`13
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`

`IPR2019-00654
`Patent 7,565,469 B2
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`diagram figure 19), the DAT line will be kept low.” Ex. 2002, 28 (cited at
`
`Ex. 1002, 212). The Examiner then reasoned that this busy signaling gives
`
`notification of the card being busy based on the buffers being full and based
`
`on the card being in a programming state. Id. In response, the Applicants
`
`for patent argued that the cited language only notifies about buffer status and
`
`not about the card’s programming state. Id. at 237–238. Then the Examiner
`
`applied a new rejection based on MMC Version 3.1 in combination with
`
`U.S. Patent 6,977,656 (“Lee”). Id. at 248. Thereafter, Applicants amended
`
`the claims to require the change of state to occur during an information
`
`transmission operation wherein the meaning of that signal changes from a
`
`first meaning to a second meaning. Id. at 264–272, 276, 277 (cited at Pet.
`
`13). Applicants argued that the applied prior art does not disclose a change
`
`in meaning of the busy signal during an information transmission operation
`
`but between two distinct modes of operation. Id. at 277. The Examiner still
`
`maintained the rejection, but later agreed to allow the claims if the
`
`independent claims were amended to require the busy signaling to occur
`
`“during the command execution.” Id. at 308, 311–316 (cited at Pet. 13).
`
`That is how patent claim 19 (application claim 31) came to include the
`
`requirement of having the change of state reflect two different meanings
`
`within the same command execution. Id. at 317–319.
`
`
`
`Here, Petitioner seeks to apply teachings from the open-ended block
`
`write operation of MMC 3.31, which involves a write and a stop command,
`
`to MMC 3.31’s block write operation with a pre-defined block count, which
`
`does not use a stop command. Pet. 38–51. According to Petitioner, in case
`
`of the former, MMC 3.31 discloses a busy signal that takes on different
`
`meanings depending on the identity of the command being executed. Id.
`
`14
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`

`

`IPR2019-00654
`Patent 7,565,469 B2
`
`at 44. Petitioner proposes to modify MMC 3.31’s block write operation with
`
`a pre-defined block count such that it also would apply a busy signal with
`
`two different meanings depending on the circumstance even if all the
`
`circumstances are within the same command execution. Id. at 45–51. Such
`
`a proposal directly challenges the Examiner’s decision to allow the claims
`
`when the claims were amended to include the requirement of “within the
`
`command execution.” The record shows that MMC 3.1 was fully considered
`
`by the Examiner and, in particular, within the context of whether the busy
`
`signaling or change of state takes on two different meanings within the same
`
`command execution.
`
`
`
`As Patent Owner has noted (Prelim. Resp. 20 (citing Ex. 1002, 18, 19,
`
`213, 228, 239)), the Examiner was aware of the open-ended block write
`
`operation of MMC 3.1. For example, original application claims 19, 23, and
`
`27 were first rejected by the Examiner on the basis of MMC 3.1’s open-
`
`ended multiple block write operation. Ex. 1002, 213. Additionally,
`
`Petitioner has not specifically or clearly explained what might have been a
`
`source of misunderstanding or error on the part of the Examiner to merit a
`
`second review of essentially the same prior art.
`
`
`
`For the foregoing reasons, all of the factors (a) through (f) of Becton,
`
`Dickinson weigh in favor of discretionary denial of the Petition, insofar as
`
`the alleged ground of unpatentability over MMC 3.31 is concerned.
`
`However, we still need to consider the effect of Petitioner’s inclusion of
`
`another ground of unpatentability, i.e., MMC 3.31 in combination with
`
`CompactFlash. For reasons discussed below, this additional ground does not
`
`sufficiently merit instituting review. Thus, we determine the Petition should
`
`be discretionarily denied under 35 U.S.C. § 325(d).
`
`15
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`IPR2019-00654
`Patent 7,565,469 B2
`
`
`
`Petitioner asserts:
`
`To the extent that MMC 3.31 alone is not deemed to render
`causing the change of the data signal line “to have a second
`meaning different from the first meaning after receiving the
`second information portion within the command execution from
`the host over the data signal line” obvious, CompactFlash
`discloses this limitation.
`
`Pet. 60. Petitioner explains that CompactFlash, like MMC 3.31, discloses
`
`commands for transferring multiple sectors of data to a card, and that these
`
`data sectors correspond to the data blocks of MMC 3.31. Id. at 61.
`
`Petitioner relies on CompactFlash’s disclosure of the use of an “interrupt” as
`
`a change of state that takes on two different meanings depending on the
`
`circumstance. Id. at 61–62. Specifically, Petitioner relies on the following
`
`description in CompactFlash of the generation of an interrupt in connection
`
`with data transfer of multiple sectors:
`
`This command writes from 1 to 256 sectors as specified in the
`Sector Count Register. A sector count of zero requests 256
`sectors. The transfer begins at the sector specified in the Sector
`Number Register. When this command is accepted, the
`CompactFlash storage card sets BSY, then sets DRQ and clears
`BSY, then waits for the host to fill the sector buffer with the data
`to be written. No interrupt is generated to start the host transfer
`operation. No data should be transferred by the host until BSY
`has been cleared by the host.
`
`For multiple sectors, after the first sector of data is in the buffer,
`BSY will be set and DRQ will be cleared. After the next buffer
`is ready for data, BSY is cleared, DRQ is set and an interrupt is
`generated. When the final sector of data is transferred, BSY is
`set and DRQ is cleared. It will remain in this state until the
`command is complete at which time BSY is cleared and an
`interrupt is generated.
`
`Ex. 1004, 80 (emphases added) (cited at Pet. 61–62).
`
`16
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`IPR2019-00654
`Patent 7,565,469 B2
`
`
`
`Petitioner has not adequately explained the above-cited operation of
`
`CompactFlash to support a reasonable likelihood that Petitioner would
`
`prevail in establishing that either claim 19 or 20 of the ’469 patent is
`
`unpatentable over MMC 3.31 and CompactFlash. For instance, Petitioner
`
`has not explained the form of the generated interrupt and whether the
`
`interrupt merely is a call for attention in response to which the host has to
`
`investigate the status of other control lines or signals to ascertain what action
`
`is needed. In that case, the meaning of the “interrupt” is the same, no matter
`
`when it is generated. Also, Petitioner has not explained whether the BSY
`
`signal also is communicated by the card to the host, in addition to any
`
`interrupt. If so, the status of the card would seem to be indicated by the
`
`BSY signal rather than by an “interrupt.” Petitioner has, in its reasoning,
`
`oversimplified a complex structure provided by CompactFlash for
`
`communication between a host and a card, and has not provided a sufficient
`
`explanation. In summary, Petitioner’s explanation of CompactFlash is
`
`inadequate to support its contentions.
`
`
`
`Of the two grounds advanced in the Petition, one presents
`
`substantially the same prior art (MMC 3.31) and arguments as was
`
`considered during prosecution. The other, also based in part on MMC 3.31,
`
`adds a new reference but is insufficiently explained to merit institution. For
`
`the foregoing reasons, we exercise discretion under 35 U.S.C. § 325(d) to
`
`deny the Petition.4
`
`
`
`4 Patent Owner asserts that because Petitioner failed to certify in its Petition,
`as is required by 37 C.F.R. § 42.104(a), that the patent for which review is
`sought is available for inter partes review, and that Petitioner is not barred
`or estopped from requesting review, we should discretionarily deny the
`
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`IPR2019-00654
`Patent 7,565,469 B2
`
`E. MMC 3.31 Not Sufficiently Shown as Constituting
`
`Printed Publication Prior Art Against the ’469 Patent
`
`Alternatively, notwithstanding our decision to deny the Petition under
`
`35 U.S.C. § 325(d), we determine that Petitioner has not shown a reasonable
`
`likelihood that it would prevail in establishing unpatentability of any
`
`challenged claim, because Petitioner has not sufficiently shown that MMC
`
`3.31 constitutes “printed publication” prior art against the ’469 patent.
`
`Only patents and printed publications may serve as the applied prior
`
`art under 35 U.S.C. §§ 102 and 103 in a petition for inter partes review.
`
`35 U.S.C. § 311(b). MMC 3.31 is a system specification for a
`
`MultiMediaCard system, provided by the MultiMediaCard Association.
`
`Ex. 1003, 2, 3, 11. It is not a patent. Therefore, MMC 3.31 must qualify as
`
`a printed publication to be applied by Petitioner.
`
`
`
`“Public accessibility” is the “touch-stone” in determining whether a
`
`prior art reference constitutes a printed publication. Acceleration Bay, LLC
`
`v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018); Jazz Pharm.,
`
`Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1355 (Fed. Cir. 2018); In re
`
`Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). A reference is considered
`
`publicly accessible if it was disseminated or otherwise made available to the
`
`extent that persons interested and ordinarily skilled in the subject matter can
`
`
`
`Petition. Prelim. Resp. 15. Patent Owner further asserts that because
`Petitioner failed to inform the Board that it urged a different claim
`construction in related litigation before the United States District Court
`relative to what it proposes in its Petition, we should discretionarily deny the
`Petition. Id. at 15–17. Petitioner made the required certification on July 19,
`2019 (Paper 8), and, as explained herein, we determine the Petition should
`be denied for other reasons. Thus, we need not consider whether these
`alleged shortcomings of the Petition warrant denial.
`
`18
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`IPR2019-00654
`Patent 7,565,469 B2
`
`locate it with exercise of reasonable diligence. Acceleration Bay, 908 F.3d
`
`at 772; Jazz Pharm., 895 F.3d at 1355–1356. We do not read the Petition as
`
`alleging actual dissemination or presenting proof of actual dissemination.
`
`Thus, we discuss only whether Petitioner sufficiently has shown that MMC
`
`3.31 was made available such that persons interested and ordinarily skilled
`
`in the subject matter could locate it with exercise of reasonable diligence.
`
`According to Petitioner,
`
`MMC 3.31 bears a copyright date of May 2003 and was
`publicly available on
`the MultiMediaCard Association
`(“MMCA”) website, www.mmca.org, at least as of June 3, 2003.
`Ex. 1003 at 3; Ex. 1005, at 5. As of November 22, 2001, the
`MMCA website homepage contained a link for host platform
`developers to buy an MMCA specification. Ex. 1005 at 11. As
`of June 3, 2003, the linked page stated that MMC 3.31 was
`available for purchase. Ex. 1005 at 5. This page provided links
`to a “System Summary,” a “Table of Contents of the MMCA
`System Specification,” and a link to place an order for MMC
`3.31. Id. The linked System Summary document bears a
`copyright date of March 2003, and was available on the MMCA
`website as of at least June 29, 2003. Ex. 1005 at 14–51. As of
`August 18, 2003, the link to place an order redirected you to a
`form requesting “Customer Information” and “Product Interest”
`that would be submitted with the order for MMC 3.31. Ex. 1005
`at 6.
`
`Pet. 25.
`