UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`STMICROELECTRONICS, INC.
`Petitioner
`v.
`OPTICAL LICENSING, LLC
`Patent Owner
`_______________________
`Case No. IPR2021-01593
`Patent 6,791,898
`_______________________
`
`DECLARATION OF FARROKH AYAZI, PH.D. IN SUPPORT OF
`PETITION FOR INTER PARTIES REVIEW
`OF U.S. PATENT NO. 6,791,898
`
`STMicroelectronics, Inc., Ex. 1011
`IPR2021-01593
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`Page 1
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`V.
`
`IPR2021-01593
`Declaration of Dr. Farrokh Ayazi
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`SUMMARY OF OPINIONS ........................................................................... 2
`II.
`III. QUALIFICATIONS AND EXPERIENCE ..................................................... 2
`A.
`Education and Work Experience ........................................................... 2
`B.
`Compensation ........................................................................................ 4
`C.
`Documents and Other Materials Reviewed ........................................... 5
`IV. APPLICABLE LEGAL STANDARDS .......................................................... 6
`A.
`Prior Art ................................................................................................. 6
`B.
`Anticipation ........................................................................................... 7
`C.
`Obviousness ........................................................................................... 8
`D.
`Claim Construction.............................................................................. 11
`E.
`Level of Ordinary Skill in the art ........................................................ 11
`TECHNOLOGY BACKGROUND ............................................................... 13
`A.
`The Date of Invention.......................................................................... 13
`B.
`Background and ’898 Patent Specification ......................................... 13
`C.
`Prosecution History ............................................................................. 16
`D.
`Challenged Claims .............................................................................. 18
`VI. OVERVIEW OF THE PRIOR ART ............................................................. 22
`A.
`Childs ................................................................................................... 22
`B.
`Shiomi.................................................................................................. 24
`C.
`Stephens in Light of Shiomi ................................................................ 31
`VII. UNPATENTABILITY OF CHALLENGED CLAIMS ................................ 36
`A.
`Ground 1: Claims 1-7, 9, 10, 13, 15, and 18 are Anticipated by Childs
` ............................................................................................................. 36
`Ground 2: Claims 1-10, 13, and 15-18 are anticipated by Shiomi .... 54
`Ground 3: Claims 1-10, 13, and 15-18 are rendered obvious by
`Shiomi.................................................................................................. 84
`Ground 4: Claims 11, 12 and 14 are rendered obvious by Shiomi in
`view of Stephens ................................................................................. 85
`No Secondary Indicia of Nonobviousness .......................................... 92
`E.
`VIII. CONCLUSION .............................................................................................. 93
`
`B.
`C.
`
`D.
`
`i
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`IPR2021-01593
`Declaration of Dr. Farrokh Ayazi
`
`I, Farrokh Ayazi, Ph.D, declare as follows:
`
`1.
`
`I have been retained by STMicroelectronics, Inc. (“Petitioner”) to
`
`provide my opinions relating to the patentability of U.S. Patent No. 6,791,898 (“the
`
`’898 Patent”)(Ex. 1001) in connection with the above referenced Petition for inter
`
`partes review. In this Declaration, I provide the basis of my opinion that all Claims
`
`of the ’898 Patent are anticipated, obvious, or both in view of the prior art.
`
`I.
`
`INTRODUCTION
`2.
`This Declaration provides the opinions I have formed to date based on
`
`the information currently available to me as well as the technical bases for those
`
`opinions. Included in my Declaration is a description and application of certain prior
`
`art references and the knowledge of a person of ordinary skill in the art at the time
`
`of the purported invention based upon my personal knowledge. If requested, I am
`
`prepared to testify about opinions expressed in this Declaration.
`
`3.
`
`I understand that Petitioner seeks review of all claims (1 through 18) of
`
`the ’898 Patent. I further understand that Optical Licensing, LLC (“Patent Owner”)
`
`has asserted Claim 7 of the ’898 Patent against defendants in Optical Licensing, LLC
`
`v. Future Electronics Corp., No. 6:21-cv-00188 (W.D. Tex.), and Optical Licensing,
`
`LLC v. Arrow Electronics, Inc., No. 6:21-cv-00186 (W.D. Tex.). Additionally, I
`
`understand that the Patent Owner has asserted claims of the ’898 Patent in the
`
`following currently pending lawsuits: Optical Licensing LLC v. Home Depot U.S.A.,
`
`1
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`IPR2021-01593
`Declaration of Dr. Farrokh Ayazi
`Inc., No. 6:21-cv-904 (W.D. Tex); Optical Licensing LLC v. Lowe’s Companies,
`
`Inc. et al., No. 6:21-cv-905 (W.D. Tex.); Optical Licensing LLC v. HEICO Corp. et
`
`al., No. 0:21-cv-61832 (S.D. Fla.); Optical Licensing LLC v. Analog Devices, Inc.,
`
`No. 8:21-cv-02308 (M.D. Fla.); Optical Licensing LLC v. TTM Technologies North
`
`America, LLC, No. 4:21-cv-01858 (N.D. Ohio). At this time, I have not provided
`
`any opinions or declarations in any district court proceeding related to the ’898
`
`Patent.
`
`II.
`
`SUMMARY OF OPINIONS
`4.
`It is my opinion that each of the claims of the ’898 Patent is anticipated
`
`and/or obvious in light of grounds described in the Petition. Below is a chart
`
`summarizing the grounds of my opinions.
`
`Claims
`
`1-7, 9-10, 13,
`15, and 18
`
`Proposed Grounds of Unpatentability
`
`Anticipated by U.S. Pat. No. 5,384,737 (“Childs”)(Ground 1);
`Anticipated by U.S. Pat. No. 5,124,589 (“Shiomi”)(Ground 2);
`Obvious in light of Shiomi (Ground 3)
`
`8 and 16-17
`
`Anticipated by Shiomi (Ground 2);
`Obvious in light of Shiomi (Ground 3)
`
`11, 12, and 14 Obvious in light of Shiomi combined with U.S. Pat. No.
`5,548,560 (“Stephens”)(Ground 4)
`
`III. QUALIFICATIONS AND EXPERIENCE
`A.
`Education and Work Experience
`5.
`I am currently a Professor of Electrical Engineering in the School of
`
`2
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`IPR2021-01593
`Declaration of Dr. Farrokh Ayazi
`Electrical and Computer Engineering at Georgia Tech, and hold the Ken Byers
`
`Professorship in Microsystems.
`
`6.
`
`I received my Bachelor of Science degree in electrical engineering from
`
`the University of Tehran in Tehran, Iran in 1994. I received my Masters of Science
`
`and Ph.D. degrees in electrical engineering from the University of Michigan in Ann
`
`Arbor, Michigan in 1997 and 2000, respectively.
`
`7.
`
`I joined the electrical and computer engineering faculty at Georgia
`
`Institute of Technology in December 1999.
`
`8.
`
`My current main research focus has been in the area of Integrated
`
`MEMS and Microsystems Technologies, including mixed-signal interface circuits.
`
`9.
`
`I teach courses in the areas of microelectronic circuits, analog circuit
`
`design, and interface circuits for MEMS and Sensors. I am familiar with memory
`
`devices and circuits used in memory devices.
`
`10.
`
` I have served on the technical program committees of the IEEE
`
`International Solid State Circuits Conference (ISSCC), IEEE Micro-Electro-
`
`Mechanical Systems (MEMS) Conference, International Electron Devices Meeting
`
`(IEDM), and Transducers and IEEE Sensors Conference. I was the chairman of the
`
`Display, Sensors and MEMS (DSM) sub-committee at the IEEE International
`
`Electron Devices Meeting (IEDM 2011). I was the general chair of the IEEE Micro‐
`
`Electro-Mechanical-Systems (MEMS) conference in 2014, held in San Francisco,
`
`3
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`IPR2021-01593
`Declaration of Dr. Farrokh Ayazi
`CA. I am an editor for the Elsevier Sensors & Actuators: A. Physical Journal, and a
`
`past editor for the IEEE Transactions on Electron Devices and IEEE/ASME Journal
`
`of Microelectromechanical Systems. I am a fellow of the IEEE.
`
`11.
`
`In 2008, I co-founded and became the Chief Technology Officer of
`
`Qualtre Inc., a research laboratory that commercializes bulk-acoustic wave silicon
`
`gyroscopes and multi-degrees-of-freedom inertial sensors for consumer electronics
`
`and personal navigation systems. Qualtré was acquired by Panasonic in December
`
`2016.
`
`12.
`
`I have received a number of awards and distinctions, including, of
`
`particular relevance, a 2018 Outstanding Achievement in Research Innovation
`
`Award from Georgia Tech, and a 2001-2002 Georgia Tech Collect of Engineering
`
`Cutting Edge Research Award.
`
`13. My curriculum vitae is provided with this Declaration as Appendix A.
`
`B.
`14.
`
`Compensation
`In connection with my work as an expert, I am being compensated at a
`
`rate of $500.00 per hour. I will also be reimbursed for reasonable and customary
`
`expenses associated with my work, to the extent applicable. My compensation is not
`
`dependent or otherwise contingent upon the results of this or any other proceeding,
`
`the specific opinions reached, or the testimony provided.
`
`4
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`Declaration of Dr. Farrokh Ayazi
`Documents and Other Materials Reviewed
`In forming my opinions in this matter, I have reviewed the ’898 Patent,
`
`C.
`15.
`
`its prosecution history, and the relevant prior art: Childs; Shiomi; and Stephens.
`
`16.
`
`I have also reviewed the following materials:
`
`Exhibit Number1
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`U.S. Patent No. 6,791,898 (“the ’898 Patent”)
`
`’898 Prosecution History
`
`Scheduling Order entered in Optical Licensing, LLC v.
`Arrow Electronics, Inc.; Case No. 6:21-cv-00186 (W.D.
`Tex.) (Doc. No. 17); Optical Licensing, LLC v. Future
`Electronics, Corp.; Case No. 6:21-cv-00188 (W.D. Tex.)
`(Doc. No. 17).
`
`Infringement Contentions served in Optical Licensing,
`LLC v. Arrow Electronics, Inc.; Case No. 6:21-cv-00186
`(W.D. Tex.) and Optical Licensing, LLC v. Future
`Electronics, Corp.; Case No. 6:21-cv-00188 (W.D. Tex.)
`
`Complaint, Optical Licensing LLC v. Home Depot U.S.A.,
`Inc., No. 6:21-cv-904 (W.D. Tex.) (“Home Depot
`Complaint”)
`
`Complaint, Optical Licensing LLC v. Lowe’s Companies,
`Inc. et al., No. 6:21-cv-905 (W.D. Tex.) (“Lowe’s
`Complaint”)
`
`Complaint, Optical Licensing LLC v. HEICO Corp. et al.,
`No. 0:21-cv-61832 (S.D. Fla.) (“HEICO Complaint”)
`
`Childs
`
`1 Citations to “Exhibit” or “Ex.” in this Declaration refer to Exhibits to the Petition.
`5
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`Exhibit Number1
`
`1009
`
`1010
`
`1012
`
`1013
`
`IPR2021-01593
`Declaration of Dr. Farrokh Ayazi
`Description
`
`Shiomi
`
`Stephens
`
`Complaint, Optical Licensing LLC v. Analog Devices,
`Inc., No. 8:21-cv-02308 (M.D. Fla.) (“Analog
`Complaint”)
`
`Complaint, Optical Licensing LLC v. TTM Technologies
`North America, LLC, No. 4:21-cv-01858 (N.D. Ohio)
`(“TTM Complaint”)
`
`IV. APPLICABLE LEGAL STANDARDS
`17.
`In reaching my opinions on the patentability of the claims of the ’898
`
`Patent, I have applied the following relevant legal principles, which were explained
`
`to me by counsel.
`
`A.
`18.
`
`Prior Art
`I understand that a patent or other publication can be used to render a
`
`patent claim unpatentable if it qualifies as prior art.
`
`19.
`
`I understand that a U.S. or foreign patent qualifies as prior art if the date
`
`of issuance or publication of such U.S. or foreign patent is prior to the date of the
`
`purported invention of the patent. I also understand that a U.S. patent or published
`
`U.S. patent application qualifies as prior art to a patent if the application for that
`
`patent was filed in the United States before the invention of the patent.
`
`20.
`
`I understand that, regardless of the date of invention of the patent, a
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`U.S. or foreign patent qualifies as prior art if the date of issuance of the U.S. or
`
`foreign patent is more than one year before the earliest effective filing date of the
`
`patent. I further understand that a printed publication, such as an article published in
`
`a magazine or trade publication or a published patent application, constitutes prior
`
`art if the publication occurs more than one year before the earliest effective filing
`
`date of the patent, again regardless of the date of invention of the patent.
`
`21.
`
`I understand that documents and materials that qualify as prior art can
`
`be used to invalidate a patent claim as anticipated or as obvious.
`
`22.
`
`For purposes of this Declaration, I understand that the time of the
`
`alleged invention is the filing date of the ’898 Patent, October 11, 2002. See Ex.
`
`1004 at p. 3 (Infringement Contentions in Arrow) (“Plaintiff discloses that the ’898
`
`Patent is entitled to a priority date of at least October 11, 2002.”); Ex. 1004 at p. 3
`
`(Infringement Contentions in Future) (same).
`
`B.
`23.
`
`Anticipation
`I understand that anticipation of a patent claim requires a comparison
`
`of the claim language to the prior art on an element-by-element basis. I understand
`
`that a prior art reference “anticipates” a claim, and thus renders the claim
`
`unpatentable, if all elements of the claim are disclosed in that prior art reference,
`
`either explicitly or inherently (i.e., necessarily present or implied).
`
`7
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`Declaration of Dr. Farrokh Ayazi
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`C.
`24.
`
`Obviousness
`I have been instructed by counsel on the law regarding obviousness,
`
`and understand that even if a patent is not anticipated, it may still be unpatentable 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 of ordinary skill in the art. I understand that a person of ordinary
`
`skill in the art at the time of the alleged invention provides a reference point from
`
`which the prior art and claimed invention should be viewed.
`
`25.
`
`I also understand that an obviousness determination includes the
`
`consideration of various factors such as (1) the scope and content of the prior art, (2)
`
`the differences between the prior art and the claims at issue, (3) the level of ordinary
`
`skill in the pertinent art, and (4) the existence of secondary indicia of nonobviousness
`
`or obviousness, which include unexpected results, commercial success, long-felt but
`
`unmet need, failure of others, copying by others, and skepticism of experts.
`
`26.
`
`I understand that an obviousness evaluation can be based on a
`
`combination of multiple prior art references. I understand that a reference may also
`
`be combined with the knowledge of a person of ordinary skill in the art, and that this
`
`knowledge may be used to combine multiple references. I further understand that a
`
`person of ordinary skill in the art is presumed to know the relevant prior art.
`
`27.
`
`I understand that in determining whether a combination of prior art is
`
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`appropriate, an express teaching, suggestion, or motivation to combine is not
`
`required so long as a person of ordinary skill in the art would have a reason to
`
`combine the references.
`
`28.
`
`In determining whether a prior art reference would have been combined
`
`with other prior art or information generally known to a person of ordinary skill in
`
`the art, I understand the following principles may be considered: (1) whether the
`
`combinations involve non-analogous art; (2) whether the combinations are in
`
`different fields or endeavor than the inventions claimed by the challenged patent; (3)
`
`whether the combinations are reasonably pertinent to the problems to which the
`
`inventions of the challenged patent are directed; (4) whether the combination is of
`
`familiar elements according to known methods that would yield predictable results;
`
`(5) whether a combination involves the substitution of one known element for
`
`another that yields predictable results; (6) whether the combination involves the use
`
`of a known technique to improve similar items or methods in the same way that
`
`yields predictable results; (7) whether the combination involves the application of a
`
`known technique to a prior art reference that is ready for improvement, to yield
`
`predictable results; (8) whether the combination is obvious to try; (9) whether the
`
`combination involves some teaching, suggestion, or motivation in the prior art that
`
`would have led one of ordinary skill in the art to modify the prior art reference or to
`
`combine prior art reference teaching to arrive at the claimed inventions; (10) whether
`
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`the combination possesses a reasonable expectation of success; and (11) whether the
`
`combination possesses a requisite degree of predictability at the time the invention
`
`was made.
`
`29.
`
`I also understand that an obviousness inquiry requires a common sense,
`
`flexible approach because a person with ordinary skill also has ordinary creativity,
`
`and therefore able to recognize that familiar items may have obvious uses beyond
`
`their primary purposes. In doing so, I understand that a person having ordinary skill
`
`in the art looking to overcome a problem may fit together multiple pieces of prior
`
`art like pieces of a puzzle resulting in predictable solutions that are the product of
`
`ordinary skill and common sense rather than innovation.
`
`30.
`
`I understand that an obviousness analysis considers the inferences and
`
`creative steps that a person of ordinary skill in the art at the time of the alleged
`
`invention would employ under the circumstances. I further understand that the
`
`combination of familiar elements according to known methods may be obvious
`
`when it does no more than yield predictable results.
`
`31.
`
`I understand that a claim can be obvious in light of a single reference,
`
`without the need to combine references, if the elements of the claim that are not
`
`found explicitly or inherently in the reference can be supplied by the common sense
`
`of one of skill in the art at the time of the alleged invention.
`
`32.
`
`I have been informed and understand that the obviousness analysis
`
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`requires a comparison of the properly construed claim language to the prior art on
`
`an element-by-element basis.
`
`D.
`33.
`
`Claim Construction
`I understand that when construing patent claims, a claim term is
`
`generally given its ordinary and customary meaning, which is the meaning the term
`
`would have to a person of ordinary skill in the art in question at the time of the
`
`alleged invention. I understand that the specification is the single best guide to the
`
`meaning of a term.
`
`34.
`
`For purposes of this Petition, it is my opinion that the claims of the ’898
`
`Patent can be read according to their plain and ordinary meaning by a person having
`
`ordinary skill in the art. I understand, however, that claim construction is a matter of
`
`law and that the ultimate construction that should be applied to the asserted claims
`
`will be provided by the Patent Trial and Appeal Board.
`
`E.
`35.
`
`Level of Ordinary Skill in the art
`It is my understanding that the claims and specification of a patent must
`
`be read and construed through the eyes of a person having ordinary skill in the art as
`
`of the date of invention of the claims at issue.
`
`36. Counsel has also advised me that to determine the appropriate level of
`
`one of ordinary skill in the art, the following factors may be considered: (a) the types
`
`of problems encountered by those working in the field and prior art solutions to those
`
`11
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`problems; (b) the sophistication of the technology in question, and the rapidity with
`
`which innovations occur in the field; (c) the educational level of active workers in
`
`the field; and (d) the educational level of the inventor.
`
`37.
`
`The relevant technology field for the ’898 Patent is memory device
`
`transfer methods and memory circuitry. See generally Ex. 1001 (the ’898 Patent). In
`
`my opinion, as it relates to the ’898 Patent, a person having ordinary skill in the art
`
`(PHOSITA), as of the date of invention for the ’898 Patent, would have generally
`
`have had at least a bachelor's degree in electrical engineering or a related field, or its
`
`equivalent, and some experience in research, teaching, design, or development of
`
`memory devices and circuits. I came to this conclusion based on the nature of the
`
`technology involved and disclosed in the ’898 Patent and the education backgrounds
`
`of those who work in the field of memory devices. A PHOSITA at the time of the
`
`alleged invention would have been familiar with the ways to transfer data into and
`
`out of memory, including a general understanding of the relevant circuitry involved
`
`in the operation of such memory devices.
`
`38.
`
`I am at least a PHOSITA as it relates to the ’898 Patent and I was a
`
`PHOSITA at the time of the alleged invention, as further detailed in my curriculum
`
`vitae (Appendix A) and Section III, above.
`
`12
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`V.
`
`TECHNOLOGY BACKGROUND
`A.
`The Date of Invention
`39.
`The ’898 Patent issued from U.S. Patent Application No. 10/269,391
`
`(“the ’391 Application”), filed October 11, 2002. For purposes of this report, I use
`
`October 11, 2002, as the date of the invention.
`
`B.
`40.
`
`Background and ’898 Patent Specification
`The subject matter of the ’898 Patent relates to a memory device having
`
`multiple modes of data transfer utilizing a configuration register and control signals
`
`to provide asynchronous and synchronous data transfer. Ex. 1001 (’898 Patent) at
`
`Abstract.
`
`41.
`
`The ’898 Patent posits that conventional memory devices were
`
`disadvantageous because they typically only provided a single mode of data transfer,
`
`either only synchronous or only asynchronous. Id. at 2:25-30. The ’898 Patent
`
`purports to provide a novel memory device having multiple modes of data transfer
`
`by utilizing logic circuitry and a configuration register to provide for either
`
`asynchronous or synchronous transfer of data, among other functionalities. Id. at
`
`Col. 2:38-40.
`
`42.
`
`The asynchronous/synchronous logic uses the configuration register
`
`and various control signals to determine whether a data transfer operation should be
`
`asynchronous or synchronous. Id. at Col. 2:40-43. Figure 3, below, shows a block
`
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`diagram of a memory device in accordance with one embodiment of the present
`
`invention.
`
`43. Conversely, Figures 1 and 2 purport to show the conventional art for
`
`asynchronous and synchronous memory devices, respectively. In the embodiment in
`
`Figure 3, the principle differences over this purported conventional art is the use of
`
`a configuration register (340) and the addition of sync/async logic (355).
`
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`44. According to the specification of the ’898 Patent, the configuration
`
`register is used to specify the operation of the device in synchronous or
`
`asynchronous modes and may also be used to configure certain other options. See,
`
`e.g., id. at Col. 4:65-67, 5:60-63, and 7:23-26. The specification further provides that
`
`the configuration register “may be a single register or may comprise a plurality of
`
`registers.” Id. at Col. 4:60-62.
`
`45.
`
`The ’898 Patent, however, does not disclose any specific circuitry
`
`required for the allegedly novel memory device, particularly with respect to the logic
`
`providing for synchronous and asynchronous data transfer, or for a configuration
`
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`IPR2021-01593
`Declaration of Dr. Farrokh Ayazi
`register. The “configuration register” claimed by the ’898 Patent is simply a
`
`generalized register that may stand alone or as a plurality of registers, which is used
`
`to hold the configuration of the functionalities of the operations of the memory
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`circuitry. The ’898 Patent recognizes registers were known in the art and the
`
`operation of such registers readily understood by a PHOSITA. Id. at Col. 4:9-12;
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`4:60-62. Similarly, the ’898 Patent does not disclose any particularized circuitry with
`
`respect to the “asynchronous/synchronous logic.” Id. at Col. 4:28-38. As discussed
`
`below, this circuitry and functionality were not unique to the ’898 Patent at the time
`
`of the invention.
`
`C.
`46.
`
`Prosecution History
`The ’898 Patent was filed on October 11, 2002 as U.S. Patent
`
`Application No. 10/269,391. The patent does not claim priority to any previous
`
`patent application. I have reviewed the prosecution history of the ’898 Patent.
`
`47. During prosecution of the ’898 Patent, I understand that the examiner
`
`rejected original claims 1, 4-7, and 8 as anticipated by Stephens. See Ex. 1002 at 31,
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`Office Action dated January 14, 2004. I understand that the examiner determined
`
`that these claims would be allowable if rewritten in independent form. For example,
`
`I understand that the examiner determined that Stephens failed to disclose “a
`
`configuration register” as specified in originally filed claims 2 (claiming a
`
`configuration register that “specifies the transfer mode between synchronous and
`
`16
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`IPR2021-01593
`Declaration of Dr. Farrokh Ayazi
`asynchronous”), 3 (claiming a configuration register that “specifies a plurality of
`
`functionalities of the transfer mode”), or 9 (claim a configuration register that is
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`“coupled to the asynchronous/synchronous logic, wherein the first state of the
`
`control signals or the second state of the control signals is latched for access by the
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`asynchronous/synchronous logic”). Id. at 33. I also understand that the examiner
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`allowed originally filed claims 11-20 because the prior art cited did not disclose “a
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`configuration register that provides for selection between the transferring data
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`asynchronous and the transferring data synchronous.” Id.
`
`48.
`
`In response, Applicant amended original claim 1 to include the
`
`limitation from originally filed claim 2 and amended original claim 8 to include the
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`additional limitations of original claim 9. See Ex. 1002 at 22-23, Amendment and
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`Response to Office Action, dated March 11, 2004. I understand original claims 4-7
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`did not require amendment because they depended from Claim 1, which was
`
`amended to overcome the examiner’s objection. Id.
`
`49.
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`In the Notice of Allowance, the examiner provided that claims 1, 3-8,
`
`and 10-20 of the application were then allowable because the examiner’s cited prior
`
`art did not include the limitation of “[d]etermining a transfer mode between
`
`synchronous and asynchronous, wherein a configuration register specifies the
`
`transfer mode between synchronous and asynchronous as claimed in the
`
`independent claim 1; or A configuration
`
`register coupled
`
`to
`
`said
`
`17
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`IPR2021-01593
`Declaration of Dr. Farrokh Ayazi
`asynchronous/synchronous logic, wherein the first state of the control signals or the
`
`second
`
`state of
`
`the control
`
`signals
`
`is
`
`latched
`
`for access by
`
`the
`
`asynchronous/synchronous logic as claimed in the independent claim 8” in the prior
`
`art. See Ex. 1002 at Notice of Allowance, p. 10-11, dated May 5, 2004 (emphasis
`
`added).
`
`D.
`50.
`
`Challenged Claims
`I understand Petitioners are challenging all of the claims (1 through 18)
`
`of the ’898 Patent. Three of these claims are independent and the remainder depend
`
`from independent Claims 1, 7, and 9.
`
`51. Claim 1 of the ’898 Patent recites a memory device capable of both
`
`synchronous and asynchronous transfer of data using a configuration register that
`
`specifies the mode. Claim 1 is reproduced here:
`
`A memory device data transfer method comprising:
`determining a transfer mode between synchronous and
`asynchronous, wherein a configuration register specifies
`said
`transfer mode
`between
`synchronous
`and
`asynchronous;
`determining whether said transfer mode is write or read;
`and transferring data according to said determined mode.
`52. Claims 2 through 6 all depend from Claim 1, but add the following
`
`limitations:
`
`Claim 2: wherein said configuration register specifies a
`plurality of functionalities of said transfer mode;
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`Claim 3: wherein a first state of a plurality of control
`signals specifies that said transfer mode is synchronous;
`Claim 4: wherein a second state of a plurality of control
`signals specifies that said transfer mode is asynchronous;
`Claim 5: wherein a third state of a plurality of control
`signals specifies that said transfer mode is write;
`Claim 6: wherein a fourth state of a plurality of control
`signals specifies that said transfer mode is read.
`53. Claim 7 of the ’898 Patent recites a memory device capable of both
`
`synchronous and asynchronous transfer of data coupled to a configuration register
`
`that utilizes latched control signals. Claim 7 is reproduced here:
`
`A memory device comprising:
`an array of memory cells for storing data;
`an asynchronous/synchronous logic coupled to a plurality
`of control signals and said array of memory cells, wherein
`asynchronous transfer of data stored in said array of
`memory cells is provided based upon a first state of said
`control signals and wherein synchronous transfer of data
`stored in said array of memory cells is provided based
`upon a second state of said control signals; and
`said
`a
`configuration
`register
`coupled
`to
`asynchronous/synchronous logic, wherein said first state
`of said control signals or said second state of said control
`signals
`is
`latched
`for
`access
`by
`said
`asynchronous/synchronous logic.
`54. Claim 8 depends from Claim 7 and likewise requires a device, but
`
`further requires the following additional elements:
`
`an address buffer coupled to an address bus;
`
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`an address register coupled to said address buffer and said
`control logic, wherein an address is latched during
`synchronous transfers;
`an address decoder coupled to said array of memory cells,
`and said address buffer during asynchronous transfers, and
`said address register during synchronous
`transfers,
`wherein a memory cell is selected;
`a sense amplifier coupled to said array of memory cells,
`wherein a state of said selected memory cell is detected;
`a data-in driver coupled to said array of memory cells and
`a data bus, wherein a state of said selected memory cell is
`programmed;
`a data register coupled to said data-in driver and said sense
`amplifier, wherein a data is latched during synchronous
`transfers;
`a data buffer coupled to a data bus, and said data-in driver
`and said sense amplifier during asynchronous transfers,
`and said data register during synchronous transfers; and
`a control logic coupled to a plurality of control signals,
`wherein operation of said address register, said address
`decoder, said sense amplifier, said data-in drive and said
`data registers are controlled in response to said control
`signals.
`55. Claim 9 of the ’898 Patent recites a method for the transfer device
`
`capable of both synchronous and asynch