Trials@uspto.gov
`571-272-7822
`
`Paper 30
`Entered: August 28, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICRON TECHNOLOGY, INC.; MICRON SEMICONDUCTOR
`PRODUCTS, INC.; and MICRON TECHNOLOGY TEXAS LLC,
`Petitioner,
`v.
`NETLIST, INC.,
`Patent Owner.
`
`IPR2022-00418
`Patent 8,301,833 B1
`
`Before GEORGIANNA W. BRADEN, SHEILA F. McSHANE, and
`KARA L. SZPONDOWSKI, Administrative Patent Judges.
`
`SZPONDOWSKI, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
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`571-272-7822
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`Paper 30
`Entered: August 28, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICRON TECHNOLOGY, INC.; MICRON SEMICONDUCTOR
`PRODUCTS, INC.; and MICRON TECHNOLOGY TEXAS LLC,
`Petitioner,
`v.
`NETLIST, INC.,
`Patent Owner.
`
`IPR2022-00418
`Patent 8,301,833 B1
`
`Before GEORGIANNA W. BRADEN, SHEILA F. McSHANE, and
`KARA L. SZPONDOWSKI, Administrative Patent Judges.
`
`SZPONDOWSKI, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
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`IPR2022-00418
`Patent 8,301,833 B1
`
`INTRODUCTION
`I.
`We instituted inter partes review of claims 1, 3–17, and 19–30 of U.S.
`Patent 8,301,833 B1, issued on October 30, 2012 (Ex. 1001, “the ’833
`patent”) in response to a Petition (Paper 2, “Pet.”) filed by Micron
`Technology, Inc., Micron Semiconductor Products, Inc., and Micron
`Technology Texas LLC (collectively “Petitioner”). Paper 14 (“Inst. Dec.”).
`During the trial, Netlist, Inc. (“Patent Owner”) filed a Response to the
`Petition (Paper 19, “PO Resp.”), Petitioner filed a Reply (Paper 22,
`“Reply”), and Patent Owner filed a Sur-reply (Paper 23, “Sur-reply”).
`An oral hearing was held on June 7, 2023, and a copy of the transcript
`was entered into the record. Paper 29 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial. Based on the complete record, Petitioner
`has shown by a preponderance of the evidence that claims 1, 3–17, and 19–
`30 of the ’833 patent are unpatentable.
`II. BACKGROUND
`A. Real Parties-in-Interest
`Petitioner identifies itself as the real party-in-interest. Pet. 64. Patent
`Owner also identifies itself as the real party-in-interest. Paper 3 (“Patent
`Owner’s Mandatory Disclosure”), 1.
`B. Related Matters
`The parties advise that the ’833 patent is the subject of Netlist, Inc. v.
`Micron Technology, Inc., et al., 6:21-cv-00430 (W.D. Tex.). Pet. 64;
`Paper 3, 2. Petitioner also advises that the ’833 patent has been the subject
`of the following three inter partes review proceedings: IPR2014-00994,
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`Patent 8,301,833 B1
`IPR2014-01370, and IPR2017-00649. Pet. 64. Additionally, Petitioner
`advises that “a nearly identical claim to the ’833 Patent’s claim 15 was
`invalidated as obvious in IPR2017-00692.” Id. at 65.
`C. The ’833 Patent (Ex. 1001)
`The ’833 patent is titled “Non-Volatile Memory Module” and is
`generally directed to “a memory system which can communicate with a host
`system such as a disk controller of a computer system.” Ex. 1001,
`codes (54), (57).
`The ’833 patent states that “[n]on-volatile memory can generally
`maintain stored information while power is not applied to the non-volatile
`memory,” so, “[i]n certain circumstances, it can therefore be useful to
`backup volatile memory using non-volatile memory.” Id. at 1:28–31. The
`invention in the ’833 patent relates to a configuration of hybrid memory
`systems that “can include volatile and non-volatile memory and a controller
`which are configured such that the controller backs up the volatile memory
`using the non-volatile memory in the event of a trigger condition,” such as a
`power failure or power reduction. Id. at code (57), 3:65–67, 17:66–18:1.
`“[T]he volatile memory system can be operated at a reduced frequency
`during backup and/or restore operations which can improve the efficiency of
`the system and save power.” Id. at 4:41–44.
`Figure 9, which depicts a flowchart of an example method of a
`volatile memory subsystem operating at a reduced rate in back-up mode, is
`reproduced below:
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`Patent 8,301,833 B1
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`Id. at 3:45–48. Figure 9 depicts block 510, “[o]perate volatile memory at
`first frequency in first mode,” block 520, “[o]perate non-volatile memory at
`second frequency in second mode,” and block 530, “[o]perate volatile
`memory at third frequency in second mode.” The memory system “may
`switch from the first mode of operation to the second mode of operation in
`response to a trigger condition,” such as “a power failure condition.” Id.
`at 17:64–18:1. The second mode of operation may include, for example,
`backup and/or restore operations. Id. at 18:1–7. The ’833 patent also
`describes that “[t]he third frequency can be less than the first frequency,”
`and “can be approximately equal to the second frequency.” Id. at 18:8–10.
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`Patent 8,301,833 B1
`D. Illustrative Claims
`Among the challenged claims, claims 1 and 15 are independent.
`Independent claim 15 is representative and is reproduced below.
`15. A memory system operatively coupled to a host system, the
`memory system comprising:
`
`
`a volatile memory subsystem operable at a first clock frequency
`when the memory system is in a first mode of operation in which data
`is communicated between the volatile memory subsystem and the host
`system;
`
`
`and a non-volatile memory subsystem operable at a second
`clock frequency when the memory system is in a second mode of
`operation in which data is communicated between the volatile
`memory subsystem and the nonvolatile memory subsystem,
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`
`the volatile memory subsystem further being operable at a third
`clock frequency when the memory system is in the second mode of
`operation, the third clock frequency being less than the first clock
`frequency.
`
`
`Ex. 1001, 21:61–22:11.
`
`
`E. Prior Art and Asserted Challenge to Patentability
`Petitioner asserts that claims 1, 3–17, and 19–30 are unpatentable on
`the following challenge (Pet. 2):1
`
`
`1 Petitioner also asserts, as a separate challenge, that Patent Owner is
`collaterally estopped from re-litigating the issue of validity of claims 1
`and 15 of the ’833 patent based upon the Final Written Decision in IPR2017-
`00692, where claim 15 of U.S. Patent No. 8,874,831, which is a
`continuation-in-part of the ’833 patent, was determined invalid over the
`combination of Best, Bonella, and Mills. Pet. 18–24; IPR2017-00692,
`Paper 25 at 31–40. Petitioner asserts that claim 15 of the ’831 patent is
`substantively identical to claims 1 and 15 of the ’833 patent. Pet. 18. As we
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`Reference(s)/Basis
`Best, 3 Bonella,4 Mills5
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`Claim(s) Challenged 35 U.S.C. §2
`1, 3–17, 19–30
`§ 103(a)
`
`In support of its proposed challenge, Petitioner relies on the
`Declaration of Ron Maltiel. See Ex. 1003. Patent Owner relies on the
`Declaration of Dr. Steven Przybylski. Ex. 2004. Deposition transcripts have
`been submitted for both witnesses. Exs. 1025 (deposition of
`Dr. Przybylski), 2005 (deposition of Mr. Maltiel).
`III. ANALYSIS
`
`A. Legal Standards
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`
`
`stated in our Institution Decision, collateral estoppel is not an appropriate
`separate ground for inter partes review. Inst. Dec. 19 (citing 35 U.S.C.
`§ 311(b), “A petitioner in an inter partes review may request to cancel as
`unpatentable 1 or more claims of a patent only on a ground that could be
`raised under section 102 or 103 and only on the basis of prior art consisting
`of patents or printed publications.”). Additionally, even if had been
`presented appropriately (i.e., as an argument prohibiting Patent Owner from
`contesting the unpatentability of claims 1 and 15 over Best, Bonella, and
`Mills rather than as a separate ground), because we determine that Petitioner
`has established that claims 1 and 15 are unpatentable based upon the
`combination of Best, Bonella, and Mills, it is not necessary to consider
`Petitioner’s arguments regarding collateral estoppel.
`2 Because the ’833 patent issued from a patent application that was filed
`before March 16, 2013, patentability is governed by the version of 35 U.S.C.
`§ 103 preceding the Leahy-Smith America Invents Act (“AIA”), Pub L.
`No. 112–29, 125 Stat. 284 (2011).
`3 US 2010/0110748 A1, published May 6, 2010 (Ex. 1006).
`4 US 2007/0136523 A1, published June 14, 2007 (Ex. 1008).
`5 US 6,026,465, issued Feb. 15, 2000 (Ex. 1009).
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`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 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. See Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR, 550
`U.S. at 418. An obviousness determination requires finding “both ‘that a
`skilled artisan would have been motivated to combine the teachings of the
`prior art references to achieve the claimed invention, and that the skilled
`artisan would have had a reasonable expectation of success in doing so.’”
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418.
`Further, an assertion of obviousness “cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.” KSR, 550 U.S. at 418; In re NuVasive, Inc., 842 F.3d 1376,
`1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be
`supported by a ‘reasoned explanation’”).
`B. Level of Ordinary Skill in the Art
`Petitioner asserts a person of ordinary skill in the art “would have
`been a person with a bachelor’s degree in materials science, electrical
`engineering, computer engineering, computer science, or in a related field
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`and at least one year of experience with the design or development of
`semiconductor non-volatile memory circuitry or systems.” Pet. 4 (citing Ex.
`1003 ¶¶ 48–52).
`Patent Owner “disputes Petitioners’ definition of the level of a person
`of ordinary skill in the art . . . [but] resolution of such dispute is not
`necessary for the Board to determine the validity of the Challenged Claims.”
`PO Resp. 13. Dr. Przybylski testifies that he does not take exception to the
`education and years of experience identified by Mr. Maltiel, however, he
`believes that “an individual with that level of experience would have less
`knowledge and familiarity than Mr. Maltiel presumes, as described herein.”
`Ex. 2004 ¶ 42. We do not discern any further explanation of that statement
`in the testimony nor does Patent Owner propose any alternative
`qualifications of a person of ordinary skill in the art.
`In our Institution Decision, we preliminarily adopted Petitioner’s
`unopposed6 proposed level of ordinary skill in the art. Inst. Dec. 17–18.
`Nothing in the full record persuades us that our preliminary finding as to the
`level of ordinary skill in the art was incorrect. Accordingly, we maintain our
`adoption of Petitioner’s proposed level of ordinary skill in the art, as
`consistent with the level of ordinary skill in the art reflected by the prior art
`of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`C. Claim Construction
`Petitioner provides the parties’ proposed constructions from the
`related district court litigation, but asserts that “[t]hese construction disputes
`from the related litigations do not affect the outcome of this Petition with
`
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`6 Patent Owner did not challenge the proposed level of ordinary skill in the
`art in the Preliminary Response. See generally Paper 11.
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`Patent 8,301,833 B1
`respect to any claim.” Pet. 9 (citing Exs. 1012, 1013). Petitioner also asserts
`that the term “clock frequency” was construed in IPR2014-00994, Paper 8
`at 6 as “identification of a clock running at a particular frequency,” which
`Petitioner contends is consistent with the ’833 patent’s Specification. Id.
`(citing Ex. 1001, 17:25–18:13; Ex. 1003 ¶ 136). Petitioner states that it has
`applied this construction of “clock frequency” in its analysis. Id.
`Patent Owner asserts that “a first mode of operation” and “a second
`mode of operation,” as recited in independent claims 1 and 15, require
`construction. PO Resp. 15–27. Patent Owner contends that Petitioner
`improperly interprets “a first mode of operation” as “the operation of the
`system when no write-back trigger is detected,” and “a second mode of
`operation” as “the operation of the system when a power-loss event write-
`back trigger is detected.” Id. at 15.
`1. “a first mode of operation”
`a) The Parties’ Contentions
`Patent Owner contends that “a first mode of operation” should be
`construed as “a mode of operation wherein no backup or restore operations
`are performed, wherein the non-volatile memory subsystem does not
`communicate with the volatile memory subsystem or the host system.” PO
`Resp. 16.
`According to Patent Owner, the ’833 patent describes the first mode
`of operation as having “three key features.” PO Resp. 16 (citing Ex. 2004
`¶¶ 45–46).
`First, Patent Owner contends that during a first mode of operation,
`“data is communicated between the volatile memory subsystem and the host
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`system.” PO Resp. 16 (citing Ex. 1001, 2:18–22, 2:35–37, 2:63–66, 15:6–
`10, Figs. 6, 7; Ex. 2004 ¶ 47).
`Second, Patent Owner contends that during the first mode of
`operation, “memory system 10 is not performing a backup or restore
`operation,” and cites to disclosure from the ’833 patent allegedly supporting
`this assertion. PO Resp. 16–17 (citing Ex. 1001, 16:43–48, 9:15–17, 19:41–
`44). Patent Owner asserts, a person of ordinary skill in the art “would
`understand that no backup or restore operations are occurring during the
`‘first mode of operation.’” Id. (citing Ex. 2004 ¶ 48).
`Third, Patent Owner contends that during the first mode of operation,
`“the non-volatile memory subsystem does not communicate with the volatile
`memory subsystem or the host.” PO Resp. 17 (citing Ex. 2004 ¶ 49). Patent
`Owner argues that “the specification expressly touts the importance of
`isolating the non-volatile memory subsystem during the first mode of
`operation as advantageous.” Id. (citing Ex. 1001, 4:5–9, 8:57–62; Ex. 2004
`¶¶ 49–50). Patent Owner argues “[b]ecause of the importance of isolating
`the non-volatile memory subsystem during the first mode of operation,
`the ’833 Patent discloses multiple examples of ‘isolation devices’ used to
`isolate the data bus and address busses of the host system and the volatile
`memory system when the volatile memory is interacting with the host
`system.” Id. at 18. In support, Patent Owner cites to the embodiments
`disclosed in Figures 3, 4A, and 4B, and their associated circuit 52, which is
`described as a “switch” or “isolation device.” Id. at 18–21.
`In Reply, Petitioner contends that Patent Owner’s proposed
`construction is improper and seeks “to fundamentally modify the claim
`language.” Reply 1–2. Petitioner contends that this term is clear on its face
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`because the claim language recites the requirements for the “first mode of
`operation,” and, therefore, this term need not be construed. Id. at 2–4.
`Petitioner also argues that some dependent claims already recite the
`limitations Patent Owner proposes for the independent claims. Id. at 4–5.
`Petitioner further argues that Dr. Przybylski’s testimony is unreliable
`because, among other things, it cites to portions of the Specification that
`refer to embodiments or to portions of the Specification that do not use the
`term “first mode of operation” and omit embodiment language, such as “for
`example,” from the cited portions of the Specification. Id. at 5–6.
`In Sur-reply, Patent Owner argues that Petitioner’s application of Best
`to the “first mode of operation” defines the term with respect to backup or
`restore operations. Sur-reply 2. Patent Owner contends that the
`Specification and both experts support its proposed construction. Id. at 3–5.
`Regarding Petitioner’s claim differentiation argument, Patent Owner argues
`that Petitioner ignores claim scope differences between the independent and
`dependent claims. Id. at 3–4. For example, Patent Owner argues that
`“decouple from,” as recited in claim 16, conveys a narrower claim scope
`than “does not communicate with.” Id. at 3. Patent Owner also reiterates
`that the ’833 patent “consistently and repeatedly teaches the importance of
`not allowing the non-volatile memory to communicate in the first mode in
`order to preserve the memory system’s integrity and ensure its operation is
`not adversely affected.” Id. at 6; see also id. at 7–8.
`b) Analysis
`We construe each 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,” the same
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`standard used to construe the claim in a civil action. 37 C.F.R. § 42.100(b)
`(2019). “In determining the meaning of the disputed claim limitation, we
`look principally to the intrinsic evidence of record, examining the claim
`language itself, the written description, and the prosecution history, if in
`evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d
`1005, 1014 (Fed. Cir. 2006) (citing Phillips v. AWH Corp., 415 F.3d 1303,
`1312–1317 (Fed. Cir. 2005) (en banc)). “]T]he claims themselves provide
`substantial guidance as to the meaning of particular claim terms,” but “do
`not stand alone.” Phillips, 415 F.3d at 1314–1315. They are part of “‘a
`fully integrated written instrument,’ consisting principally of a specification
`that concludes with the claims,” and must therefore “be read in view of the
`specification.” Id. at 1315 (quoting Markman v. Westview Instruments, Inc.,
`52 F.3d 967, 978–79 (Fed. Cir. 1995)). There is a “heavy presumption,”
`however, that a claim term carries its ordinary and customary meaning. CCS
`Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)
`(citation omitted). “[T]he ordinary and customary meaning of a claim term
`is 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.
`Independent claim 15 recites, in part, “the memory system is in a first
`mode of operation in which data is communicated between the volatile
`memory subsystem and the host system.” Ex. 1001, 21:64–22:2 (emphasis
`added). We agree with Petitioner that the plain language of the claim clearly
`recites the requirements for the “first mode of operation,” i.e., data is
`communicated between the volatile memory subsystem and the host system.
`See Reply 3. This language replicates the first of the “three key features”
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`that Patent Owner contends is part of the “first mode of operation.” PO
`Resp. 16.
`Patent Owner’s proposed construction seeks to limit “a first mode of
`operation” to particular embodiments disclosed in the Specification, which
`are themselves exemplary embodiments. Patent Owner supports its
`contentions that “no backup or restore operations are performed” in the “first
`mode of operation” with citations from the ’833 patent, but each of Patent
`Owner’s citations explicitly refers to examples and “certain embodiments.”7
`See Ex. 1001, 16:43–48 (“For example, when the memory system 10 is not
`performing a backup or restore operation and is communicating with the
`host system (e.g., normal operation), the volatile memory system clock
`signal 420 may be provided by the multiplexer 422 to the volatile memory
`PLL block 424.”) (emphasis added), 9:15–17 (“In certain embodiments, the
`memory system 10 is in the first state when no trigger condition . . . is
`present”) (emphasis added), 19:41–44 (“For example, the memory system
`10 may be in the first mode of operation when no trigger condition has
`occurred and the memory system is not performing a backup and/or restore
`operation”) (emphasis added).
`Patent Owner similarly provides citations to exemplary embodiments
`in support of its contention that the “non-volatile memory subsystem does
`not communicate with the volatile memory subsystem or the host system”
`during a “first mode of operation.” Patent Owner asserts that “the
`specification expressly touts the importance of isolating the non-volatile
`memory subsystem during the first mode of operation as advantageous,” (PO
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`7 In its citations, Patent Owner omits the language from the Specification
`referring to “for example” or “certain embodiments.”
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`Resp. 17) but Patent Owner’s citations to the ’833 patent again are directed
`to “certain embodiments.” See Ex. 1001, 4:5–9 (“In certain embodiments,
`the memory system can be configured such that the operation of the volatile
`memory is not adversely affected by the non-volatile memory or by the
`controller when the volatile memory is interacting with the host system. For
`example . . . .”) (emphasis added); 8:22–23, 8:57–62 (“The memory system
`10 of certain embodiments is configured to be operated in at least two states
`. . . The isolation or operational decoupling of the volatile memory
`subsystem 30 from the on-volatile memory subsystem in the first state can
`preserve the integrity of the operation of the memory system 10 during
`periods of operation in which signals (e.g., data) are transmitted between the
`host system and the volatile memory subsystem 30”) (emphasis added).
`Patent Owner’s reliance on switch 52 in the Figure 3, 4A, and 4B
`embodiments, and supporting citations is similarly unavailing. See, e.g., Ex.
`1001, 4:61–64 (“In certain embodiments, the memory system 10 includes at
`least one circuit 52 configured to selectively operatively decouple the
`controller 62 from the volatile memory subsystem 30”) (emphasis added);
`6:63–7:4 (“In certain embodiments, the at least one circuit 52 comprises one
`or more switches coupled to the volatile memory subsystem 30, to the
`controller 62, and to the host computer (e.g., via the interface 22)”)
`(emphasis added); 7:4–6 (“In addition, in certain embodiments the at least
`one circuit 52 selectively operatively couples and decouples the volatile
`memory subsystem 30 and the host system”) (emphasis added); 7:11–16 (“In
`certain such embodiments, the at least one circuit 52 can comprise one or
`more switches 172 coupled to the controller 62 (e.g., logic element 70) and
`to the volatile memory subsystem 30 . . .”) (emphasis added).
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`We are not persuaded that the proper interpretation of “a first mode of
`operation” requires that we read in the unclaimed features of these
`embodiments. Claims are not limited to specific embodiments described in
`the specification. See Phillips, 415 F.3d at 1323.
`Though understanding the claim language may be aided by
`explanations contained in the written description, it is important
`not to import into a claim limitations that are not a part of the
`claim. For example, a particular embodiment appearing in the
`written description may not be read into a claim when the claim
`language is broader than the embodiment.
`
`
`SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed Cir.
`2004) (citing Electro Med. Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048,
`1054 (Fed. Cir. 1994)); see also Thorner v. Sony Computer Ent. Am. LLC,
`669 F.3d 1362, 1366 (Fed. Cir. 2012) (“It is likewise not enough that the
`only embodiments, or all of the embodiments, contain a particular limitation.
`We do not read limitations from the specification into claims; we do not
`redefine words.”). The mere description of a preferred embodiment is not a
`limiting definition for a claim term. See E-Pass Techs., Inc. v. 3Com Corp.,
`343 F.3d 1364, 1369 (Fed. Cir. 2003); Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898, 908–09 (Fed. Cir. 2004).
`Patent Owner’s contention that the ’833 patent includes “numerous
`and consistent teachings describing the importance of the structures used to
`perform the claimed functions” is not supported by the ’833 patent.
`Although the specification's emphasis of a particular feature’s importance to
`the invention can indicate “what the patentee had claimed and
`disclaimed,” see SafeTCare Mfg., Inc. v. Tele-Made, Inc., 497 F.3d 1262,
`1269–70 (Fed. Cir. 2007), Patent Owner has not shown that here. The
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`Federal Circuit has acknowledged “the difficulty in drawing the ‘fine line
`between construing the claims in light of the specification and improperly
`importing a limitation from the specification into the claims.’” Continental
`Circuits LLC v. Intel Corp., 915 F.3d 788, 797 (Fed. Cir. 2019) (citing
`Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305
`(Fed. Cir. 2011)). To avoid improperly importing limitations into the
`claims, “it is important to keep in mind that the purposes of the specification
`are to teach and enable those of skill in the art to make and use the invention
`and to provide a best mode for doing so.” Phillips, 415 F.3d at 1323.
`The written description includes embodiments with a switch that may
`operate to isolate the non-volatile memory subsystem from the volatile
`memory subsystem or the host system, but does not indicate that this is an
`important or essential part of the invention, or that it is important or essential
`in distinguishing the prior art. Patent Owner focuses on the following two
`statements from the Specification: (1) “In certain embodiments, the
`memory system can be configured such that the operation of the volatile
`memory is not adversely affected by the non-volatile memory or by the
`controller when the volatile memory is interacting with the host system”;
`and (2) “The isolation or operational decoupling of the volatile memory
`subsystem 30 from the non-volatile memory subsystem in the first state can
`preserve the integrity of the operation of the memory system 10 during
`periods of operation in which signals (e.g., data) are transmitted between the
`host system and the volatile memory subsystem 30.” See PO Resp. 17
`(citing Ex. 1001, 4:5–9, 8:57–62); Sur-reply 6. However, as discussed
`above, these statements are limited to “certain embodiments” and are not
`statements clearly limiting or expressly requiring that the claimed “first
`
`16
`
`
`
`IPR2022-00418
`Patent 8,301,833 B1
`mode of operation” include this functionality, or setting forth its importance.
`See, e.g., Continental Circs., 915 F.3d at 797; Hill-Rom Services, Inc. v.
`Stryker Corp., 755 F.3d 1367, 1372–1373 (Fed. Cir. 2014). Indeed, the ’833
`patent expressly states that “[a]lthough this invention has been described
`with reference to these specific embodiments, the descriptions are intended
`to be illustrative of the invention and are not intended to be limiting.” Ex.
`1001, 20:64–67. Nothing in the language of the Specification suggests that
`the “first mode of operation” should be limited to operations when “no
`backup or restore operations are performed” and “the non-volatile memory
`subsystem does not communicate with the volatile memory subsystem or the
`host system.” Thus, there is no reason to depart from the plain and ordinary
`meaning of a “first mode of operation,” as recited in the claim language.
`Moreover, we find Patent Owner’s assertions that Mr. Maltiel agrees
`with its interpretation of this term to be disingenuous. See Sur-reply 4–6.
`Patent Owner cites to testimony on pages 58 and 59 of Mr. Maltiel’s
`deposition in support of its assertions that Mr. Maltiel testified that the non-
`volatile memory does not communicate with the volatile memory in the first
`mode (id. at 4–5), but when Mr. Maltiel’s testimony is read in context, it is
`clear that Mr. Maltiel was being questioned about certain passages in
`the ’833 patent, not about the interpretation of a “first mode of operation” as
`recited in the claims. See Ex. 2005, 53:3–54:20 (asking Mr. Maltiel to read
`aloud the sentences beginning at Ex. 1001, 2:18, and 2:34); see also id. at
`59:5–8 (“Q. And isn’t it true that neither of those passages discuss the
`communication of data between the volatile memory and the nonvolatile
`memory in the first mode of operation?”) (emphasis added); see Tr. 38:9–16.
`
`17
`
`
`
`IPR2022-00418
`Patent 8,301,833 B1
`As discussed above, there is no dispute that during a first mode of
`operation “data is communicated between the volatile memory subsystem
`and the host system.” PO Resp. 16; Ex. 2005, 56:20–57:1. This is precisely
`what the claim language recites. For the reasons explained above, we
`decline to import limitations into the claim, as Patent Owner urges. See,
`e.g., SuperGuide Corp., 358 F.3d at 875 (“Though understanding the claim
`language may be aided by explanations contained in the written description,
`it is important not to import into a claim limitations that are not a part of the
`claim.”)
`Accordingly, we agree with Petitioner that the term “a first mode of
`operation” does not require construction, and its meaning is evident from the
`claim language, i.e., “a first mode of operation in which data is
`communicated between the volatile memory subsystem and the host
`system.”
`2. “a second mode of operation”
`a) The Parties’ Contentions
`Patent Owner contends that “a second mode of operation” should be
`construed as “a backup or restore mode of operation wherein the host system
`does not communicate with the volatile memory subsystem.” PO Resp. 23.
`According to Patent Owner, the ’833 patent “makes clear that the
`second mode of operation is a mode in which backup or restore operations
`are performed.” PO Resp. 23 (citing Ex. 1001, 7:41–48, 10:33–58, 18:1–7;
`Ex. 2004 ¶ 61). Patent Owner also contends that Mr. Maltiel agrees with
`this interpretation. Id. (citing Ex. 2005, 68:5–8). As with the “first mode of
`operation,” Patent Owner similarly relies on circuit 52 (switch) and
`switch 174 as shown in Figures 3, 4A and 4B, respectively, which show
`
`18
`
`
`
`IPR2022-00418
`Patent 8,301,833 B1
`“that the host system may be isolated from the volatile memory subsystem
`using isolation devices, such as switches.” Id. at 24–26 (citing Ex. 1001,
`7:20–22, 7:26–29, 8:22–35, 10:19–23, Figs. 3, 4A, 4B; Ex. 2004 ¶¶ 62–64,
`66). Similarly, Patent Owner contends that Mr. Maltiel agrees that “in the
`second mode of operation, when backup or restore operations are performed,
`the volatile memory does not communicate with the host.” Id. at 26 (citing
`Ex. 2005, 68:13–19).
`In Reply, Petitioner contends that Patent Owner’s proposed
`construction is improper and seeks “to fundamentally modify the claim
`language.” Reply 1–2. Petitioner contends that this term is clear on its face
`because the claim language clearly recites the requirements for the “second
`mode of operation,” and, therefore, this term need not be construed. Id.
`at 2–4. Petitioner also argues that some dependent claims already recite the
`limitations Patent Owner proposes for the independent claims. Id. at 4–5.
`Petitioner also argues that Dr. Przybylski’s testimony is unreliable because,
`among other things, it cites to portions of the Specification that refer to
`embodiments or do not use the term “second mode of operation” and omits
`embodiment language, such as “for example,” from the cited portions of the
`Specification. Id. at 5–6.
`In Sur-reply, Patent Owner argues that Petitioner’s application of Best
`to the “second mode of operation” defines the term with respect to backup or
`restore operations. Sur-reply 2. Patent Owner contends that the
`Specification and both experts support its proposed construction. Id. at 3–5.
`Regarding Petitioner’s claim differentiation argument, Patent Owner argues
`that Petitioner ignores claim scope differences between the independent and
`dependent cla
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