Trials@uspto.gov
`571-272-7822
`
`Paper 14
`Date: September 1, 2022
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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.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7822
`
`Paper 14
`Date: September 1, 2022
`
`
`
`
`
`
`
`
`
`
`
`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.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2022-00418
`Patent 8,301,833 B1
`
`INTRODUCTION
`I.
`Micron Technology, Inc., Micron Semiconductor Products, Inc., and
`Micron Technology Texas LLC (collectively “Petitioner”) filed a Petition
`(Paper 2, “Pet.”) to institute an 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”). Netlist, Inc. (“Patent Owner”) filed a Preliminary
`Response (Paper 11, “Prelim. Resp.”). We have jurisdiction under
`35 U.S.C. § 314.
`Institution of an inter partes review is authorized when “the
`information presented in the petition . . . and any response . . . 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).
`Based on the current record, and for the reasons explained below, we
`determine that Petitioner has established a reasonable likelihood that it
`would prevail with respect to at least one challenged claim. Accordingly,
`we institute an inter partes review.
`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
`IPR2014-001370, 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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`IPR2022-00418
`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 17:64–8:1.” 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 8:8–10.
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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,
`
`
`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 clock first
`frequency.
`
`
`Ex. 1001, 21:61–22:17.
`
`
`E. Prior Art and Asserted Challenges to Patentability
`Petitioner asserts that claims 1, 3–17, and 19–30 are unpatentable on
`the following challenges (Pet. 2):
`Claims Challenged
`35 U.S.C. §1
`1, 15
`§ 103(a)
`
`Basis/References
`Collateral Estoppel
`
`
`1 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).
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`Patent 8,301,833 B1
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`35 U.S.C. §1
`§ 103(a)
`
`Basis/References
`Best,2 Bonella,3 Mills4
`
`Claims Challenged
`1, 3–17, 19–30
`
`In support of its proposed challenges, Petitioner relies on the
`Declaration of Ron Maltiel. See Ex. 1003.
`III. ANALYSIS
`A. Discretion to Deny Institution Under § 35 U.S.C. 314(a)
`Patent Owner asserts that the Petition should be denied under
`35 U.S.C. § 314(a), as a “follow on” petition, by application of the factors
`set forth in General Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 at 16 (PTAB Sept. 6, 2017) (precedential as to
`§ II.B.4.i). Prelim. Resp. 9–21. Under the circumstances of this case, we
`decline to exercise discretion to deny the Petition.
`1. Background
`The ’833 patent has been challenged in three prior inter partes review
`proceedings, each of which was denied institution on the merits. Prelim.
`Resp. 10. These three proceedings are:
`In IPR2014-00994, SanDisk Corp. challenged all claims of the ’833
`patent, asserting twenty-two challenges based upon seven references, none
`of which are asserted in this case. Id.; IPR2014-00994, Paper 1. The Board
`denied institution and denied SanDisk’s request for rehearing. Prelim. Resp.
`10; IPR2014-00994, Papers 8, 10.
`
`
`2 US 2010/0110748 A1, published May 6, 2010 (Ex. 1006).
`3 US 2007/0136523 A1, published June 14, 2007 (Ex. 1008).
`4 US 6,026,465, issued Feb. 15, 2000 (Ex. 1009).
`
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`Patent 8,301,833 B1
`In IPR2014-01370, SMART Modular Technologies, Inc. challenged
`all claims of the ’833 patent, asserting eight challenges based upon five
`references. Prelim. Resp. 10; IPR2014-01370, Paper 1. None of the
`references are asserted in this case, although Petitioner here relies on the
`Long5 reference, which was asserted in IPR2014-01370, in support of the
`knowledge of one of ordinary skill in the art and of its rationale to combine
`Best and Bonella. See Pet. 35–37; IPR2014-01370, Paper 1 at 7. The Board
`denied institution. Prelim. Resp. 10; IPR2014-01370, Paper 13.
`In IPR2017-00649, Hynix challenged all claims of the ’833 patent,
`asserting six challenges based on seven references (“Hynix IPR”). Prelim.
`Resp. 10; IPR2017-00649, Paper 1. In particular, one challenge asserted that
`all claims were unpatentable under 35 U.S.C. § 103 over Bonella and Mills.
`IPR2017-00649, Paper 1 at 3. Petitioner here also relies upon Ashmore6 and
`Long, both of which were asserted in IPR2017-00649, in support of the
`knowledge of one of ordinary skill in the art and of its rationale to combine
`Best and Bonella. Pet. 35–37; IPR2017-00649, Paper 1 at 3. Hynix also
`relied upon a declaration from Ron Maltiel, the same declarant Petitioner
`relies on in this proceeding. IPR2017-00649, Ex. 1003. The Board denied
`institution and denied Hynix’s request for rehearing. Prelim. Resp. 11;
`IPR2017-00649, Papers 7, 9.
`In addition, in IPR2017-00692, Hynix challenged all claims of U.S.
`Patent No. 8,874,831 (“the ’831 patent”), which is a continuation-in-part of
`
`
`5 US 7,421,552, issued Sep. 2, 2008 (Ex. 1011).
`6 US 2006/0212651 A1, published Sep. 21, 2006 (Ex. 1010).
`
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`IPR2022-00418
`Patent 8,301,833 B1
`the ’833 patent, asserting six challenges based on seven7 references,
`including Best, Bonella, Mills, and Ashmore (“Hynix ’831 IPR”). Prelim.
`Resp. 11; IPR2017-00692, Paper 1. Hynix also relied upon a declaration
`from Ron Maltiel, the same declarant Petitioner relies on in this proceeding.
`IPR2017-00692, Ex. 1003. In a final written decision, the Board found all
`challenged claims unpatentable. IPR2017-00692, Paper 25. In particular,
`the Board found challenged dependent claim 15 unpatentable over Best,
`Mills, and Bonella, with or without Roy. IPR2017-00692, Paper 25 at 31–
`40. Patent Owner did not appeal that judgment or request rehearing. See
`Pet. 23–24.
`2. Analysis
`General Plastic is directed to multiple petitions serially filed by the
`same petitioner against the same patent. In Valve Corp. v. Elec. Scripting
`Prods., Inc., IPR2019-00062, -00063, -00084, Paper 11 (PTAB Apr. 2,
`2019) (designated precedential May 7, 2019) (“Valve”), the Board extended
`application of General Plastic factors to the situation where multiple
`petitions for review of the same patent are filed by different petitioners.
`Valve, Paper 11 at 2 (“when different petitioners challenge the same patent,
`we consider any relationship between those petitioners when weighing the
`General Plastic factors.”).
`
`
`7 In IPR2017-00692, Hynix did not explicitly identify Mills as part of the
`challenge in the Petition (Paper 1 at 3), but in the Institution Decision, the
`Board stated that “Although Petitioner does not include Mills . . . explicitly
`in its ground . . ., we include it here because Petitioner’s analysis relies upon
`it . . . for teaching part of a limitation.” See IPR2017-00692, Paper 7 at n.2 .
`Thereafter, both parties treated the ground as though Mills were included.
`Paper 12 at 45 (Patent Owner Response); Paper 15 at 19 (Petitioner’s
`Reply).
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`Patent 8,301,833 B1
`The General Plastic factors are as follows:
`1. whether the same petitioner previously filed a petition directed to
`the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner knew
`of the prior art asserted in the second petition or should have known of it;
`3. whether at the time of filing of the second petition the petitioner
`already received the patent owner’s preliminary response to the first petition
`or received the Board’s decision on whether to institute review in the first
`petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the filing of the
`second petition;
`5. whether the petitioner provides adequate explanation for the time
`elapsed between the filings of multiple petitions directed to the same claims
`of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the Director
`notices institution of review.
`IPR2016-01357, Paper 19 at 9–10.
`The parties agree that factors 2, 4, and 7 are neutral. See Pet. 64;
`Prelim. Resp. 17, 19–20. Furthermore, it is undisputed that Petitioner here is
`different from the petitioners in the prior IPRs described above. Pet. 63;
`Prelim. Resp. 12. And although the Petition here does not challenge two of
`the thirty claims previously challenged in the three prior IPRs, we find that,
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`Patent 8,301,833 B1
`due to the extent of the overlap, Petitioner has effectively filed a petition
`directed to the same claims of the ’833 patent.
`The crux of Patent Owner’s arguments as to the remaining factors is
`that “Petitioners clearly used prior IPR petitions against the ’833 Patent and
`its continuation-in-part, the ’831 Patent, as a roadmap to formulate the
`instant Petition.” Prelim. Resp. 13. According to Patent Owner, Petitioner
`(1) used the same declarant as in the Hynix IPR and the Hynix ’831 IPR and
`copied large portions of the prior declarations; and (2) used the Hynix IPR
`and Hynix ’831 IPR as a roadmap and copied verbatim portions of Hynix’s
`arguments. Id. at 12–16. According to Patent Owner, these actions created
`a relationship between Petitioner and the prior petitioners. Id. Patent Owner
`asserts that “Petitioners’ tactics are precisely the sort of serial attacks that
`favor denial, as they implicate the efficiency concerns underpinning General
`Plastic and promote a manifest unfairness by allowing endless attacks on
`valid patents with perpetually refined arguments.” Id. at 21.
`Under the circumstances in this case, we disagree with Patent
`Owner’s arguments. When different petitioners challenge the same patent,
`the relationship between those petitioners may be considered when weighing
`the General Plastic factors. Valve, Paper 11 at 9. Here, there is no evidence
`in the record that Petitioner has any significant relationship with the
`petitioners of the three prior IPRs challenging the ’833 patent—for example,
`that Petitioner is a co-defendant with any of the other three petitioners or
`was accused of infringing the ’833 patent based on the same product. See
`Valve, Paper 11 at 10. For this reason, we find that factor 1 does not weigh
`in favor of exercising our discretion to deny institution.
`
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`Patent 8,301,833 B1
`It is, however, undisputed that the full record of the prior IPR
`proceedings against the ’833 patent and the Hynix ’831 IPR were available
`when the Petition was filed. Accordingly, the timing raises the potential for
`abuse because Petitioner had ample opportunity to study the arguments
`raised by Patent Owner, and the Board’s findings and conclusions of law
`regarding the claims of the ’833 patent, as well as the claims of the
`related ’831 patent. However, here, there is no indication in the record that
`Petitioner specifically waited to file the Petition in a strategic move to gain
`any sort of advantage. That is, it does not appear that the Petition was filed
`with any consideration of the timing of the prior IPR proceedings, because
`Petitioner did not file the Petition until over three years after the prior IPRs
`concluded, and only after being sued for infringement of the ’833 patent by
`Patent Owner. See Pet. 64. That Petitioner apparently may have reviewed
`and considered strategies undertaken by prior petitioners on similar issues
`does not, in and of itself, constitute unfairness to Patent Owner or create a
`relationship with any of the prior petitioners. This is unlike a situation
`where a petitioner purposely waited in order to learn from prior petitioners’
`mistakes or success. Although Patent Owner contends that institution was
`denied in other non-precedential Board decisions alleged to be similar (see
`Prelim. Resp. 12–16), we find that argument unavailing because “[e]ach case
`is decided on the basis of its own facts, and the Board’s consideration of the
`factors . . . may vary from case to case.” General Plastic, Paper 19 at 21;
`see also id. at 18. For the foregoing reasons, we are not persuaded that any
`of factors 1, 5, or 6 weigh in favor of exercising our discretion to deny
`institution.
`
`11
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`IPR2022-00418
`Patent 8,301,833 B1
`
`Accordingly, upon review of the evidence and the General Plastic
`factors, we are not persuaded that we should exercise our discretion to deny
`institution under § 314.
`B. Discretion to Deny Under 35 U.S.C. § 325(d)
`Patent Owner asserts that we should exercise our discretion under
`35 U.S.C. § 325(d) to deny institution because the Petition presents the same
`art and arguments previously analyzed in the Hynix IPR and Petitioner fails
`to show that the Board erred. Prelim. Resp. 21–32. We do not agree with
`Patent Owner for the reasons discussed below.
`1. Standards of Law
`In evaluating the exercise of discretion to deny institution under
`Section 325(d), the Board uses the following two-part framework:
`(1) determining whether the same or substantially the same art previously
`was presented to the Office or whether the same or substantially the same
`arguments previously were presented to the Office; and (2) if either
`condition of the first part of the framework is satisfied, determining whether
`the petitioner has demonstrated that the Office erred in a manner material to
`the patentability of challenged claims. Advanced Bionics, LLC v. Med-El
`Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB
`Feb. 13, 2020) (precedential).
`In applying the two-part framework, we consider several non-
`exclusive factors, including:
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination;
`
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
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`IPR2022-00418
`Patent 8,301,833 B1
`(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, IPR2017-01586,
`Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5,
`first paragraph) (“Becton, Dickinson”). Becton, Dickinson factors (a), (b),
`and (d) relate to whether the art or arguments presented in the Petition are
`the same or substantially the same as those previously presented to the
`Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to
`whether the petitioner has demonstrated a material error by the Office” in its
`prior consideration of that art or arguments. Id. Only if the same or
`substantially the same art or arguments were previously presented to the
`Office do we consider whether petitioner has demonstrated a material error
`by the Office. Id. “At bottom, this framework reflects a commitment to
`defer to previous Office evaluations of the evidence of record unless
`material error is shown.” Id. at 9.
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`2. Whether the Same or Substantially the Same Art or Arguments
`Were Previously Presented to the Office
`As discussed above, the Hynix IPR involved a challenge to all claims
`of the ’833 patent, and in particular, a challenge to all claims based upon the
`combination of Bonella and Mills. IPR2017-00649, Paper 7 at 4. Petitioner
`here challenges claims 1, 3–17, and 19–30 based upon the combination of
`Best, Bonella, and Mills. Pet. 2. Petitioner contends that this petition
`involves a different prior art combination than in the Hynix IPR. Pet. 7–8.
`There is no dispute that Best was not part of the Hynix IPR. Thus, a
`different combination of references is presented here.
`Patent Owner focuses its argument on Becton, Dickinson’s factor (b),
`arguing that Best is merely cumulative of Bonella. Prelim. Resp. 24–25.
`Patent Owner argues that for the preamble of claim 1, “Best teaches no more
`than what a reasonable examiner would consider to be taught by Bonella”
`and “Petitioners fail to obscure the substantial overlap between the
`arguments made in the Hynix 833 IPR–which the Board rejected–and those
`made here.” Id. at 26. Turning to the body of claim 1, for the first clause,
`Patent Owner argues that “Petitioner relies on the same functionality in Best
`as purportedly disclosing the claimed ‘first mode of operation’ as Hynix
`relied on with Bonella in the Hynix 833 IPR.” Id. at 27. Patent Owner
`contends that “[t]here was no need for Petitioners to rely on Best as opposed
`to Bonella in the instant Petition–other than to manufacture a superficial
`difference between this Petition and the Hynix 833 IPR Petition.” Id. at 28.
`For the second and third clauses, Patent Owner again argues that Petitioner
`merely swapped Best for Bonella. Id. at 28–31.
`
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`We do not agree with Patent Owner’s arguments that Best is merely
`cumulative of Bonella. Initially, we note that Patent Owner’s arguments are
`difficult to reconcile, given that the Board denied institution in the Hynix
`IPR over the combination of Bonella and Mills but found a facially similar
`claim in the ’831 patent unpatentable in a final written decision over the
`combination of Best, Bonella, and Mills in IPR2017-00692. IPR2017-
`00649, Paper 7 at 5–15; IPR2017-00692, Paper 25 at 31–40. This would
`seem to indicate that Best is not merely cumulative of Bonella.
`Moreover, in the Hynix IPR, petitioner had not shown, for purposes of
`institution, that Bonella alone taught the limitations of the third clause in
`claim 1. IPR2017-00649, Paper 7 at 5–15. Specifically, the Board found
`that petitioner “does not point to any disclosure in Bonella, however, that
`indicates what frequency the DRAM is operating at during a power loss.”
`Id. at 11; see also id. at 12 (“Petitioner does not provide sufficient objective
`evidence sufficient to support a finding that the DRAM operates at the
`frequency of Power Level 4 when a power failure occurs during Power
`Level 4”). Here, Petitioner relies on a combination of Best and Bonella to
`teach the third clause’s limitations in claim 1 (and claim 15), where Bonella
`is only relied upon to teach the “third clock frequency” portion of the
`limitation, as opposed to the entire limitation, as was asserted in the Hynix
`IPR. See Pet. 34–38. We find this sufficient to determine that the art and
`arguments presented in the Hynix IPR are not substantially similar.
`We conclude that the art raised in the Petition is not the same or
`substantially the same as that presented to the Office during the Hynix IPR;
`nor do we consider the arguments for unpatentability to be substantially
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`similar. As such, we decline to exercise our discretion under 35 U.S.C
`§ 325(d) to deny institution.
`C. 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
`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,
`
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`1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be
`supported by a ‘reasoned explanation’” (citation omitted)).
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio-Sys., 821
`F.3d at 1369. Therefore, to prevail in an inter partes review, Petitioner must
`explain how the proposed combinations of prior art would have rendered the
`challenged claims unpatentable. At this preliminary stage, we determine
`whether the information presented in the Petition shows there is a reasonable
`likelihood that Petitioner would prevail in establishing that at least one of the
`challenged claims would have been obvious over the proposed combinations
`of prior art.
`D. 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 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 does not dispute
`Petitioner’s proposed level of skill in the art. See generally Prelim. Resp.
`We find Petitioner’s proposal is consistent with the level of ordinary
`skill in the art reflected by the prior art of record, and, therefore, adopt
`Petitioner’s proposed level of ordinary skill in the art for purposes of this
`Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`17
`
`
`
`IPR2022-00418
`Patent 8,301,833 B1
`E. 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
`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 asserts 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 does not present any arguments on claim construction.
`See generally Prelim. Resp. At this stage in the proceeding, only terms that
`are in controversy need to be construed, and then only to the extent
`necessary to determine whether to institute inter partes review. See Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999))). After reviewing the parties’ arguments and
`evidence, we determine that we do not need to expressly construe any term
`for purposes of this Decision.
`F. Collateral Estoppel
`“Collateral estoppel protects a party from having to litigate issues that
`have been fully and fairly tried in a previous action and adversely resolved
`against a party-opponent.” Ohio Willow Wood Co. v. Alps South, LLC, 735
`F.3d 1333, 1342 (Fed. Cir. 2013) (citing Pharmacia & Upjohn Co. v. Mylan
`Pharm., Inc., 170 F.3d 1373, 1379 (Fed Cir. 1999)). “It is well established
`that collateral estoppel, also known as issue preclusion, applies in the
`
`18
`
`
`
`IPR2022-00418
`Patent 8,301,833 B1
`administrative context.” MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d
`1373, 1376 (Fed. Cir. 2018) (citations omitted). The application of collateral
`estoppel is not limited to patent claims that are identical. Ohio Willow
`Wood, 735 F.3d at 1342. “Rather, it is the identity of the issues that were
`litigated that determines whether collateral estoppel should apply . . . . If the
`differences between the unadjudicated patent claims and the adjudicated
`patent claims do not materially alter the question of invalidity, collateral
`estoppel applies.” Id.
`Collateral estoppel precludes a party from relitigating an issue if:
`(1) the prior action presents an identical issue; (2) the prior action actually
`litigated and adjudged that issue; (3) the judgment in that prior action
`necessarily required determination of the identical issue; and (4) the prior
`action featured full representation of the estopped party. VirnetX Inc. v.
`Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (quoting Stephen
`Slesinger, Inc. v. Disney Enters., Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)).
`1. Collateral Estoppel As a Separate Challenge
`Petitioner asserts “Unpatentable as obvious under the doctrine of
`collateral estoppel” as Challenge 1 to patentability. See Pet. 2. At this point,
`we agree with Patent Owner that this is not per se an appropriate challenge
`for an inter partes review petition. Prelim. Resp. 33. “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.” 35 U.S.C. § 311(b) (emphasis added).
`Nonetheless, although we make no determinations here, collateral
`estoppel may or may not be a consideration in evaluating issues relating to
`
`19
`
`
`
`IPR2022-00418
`Patent 8,301,833 B1
`findings under Sections 102 and 1038. Accordingly, in order to provide
`some guidance to the parties, we discuss the parties’ collateral estoppel
`arguments.
`2. Petitioner’s Contentions
`Petitioner asserts that collateral estoppel bars Patent Owner from
`relitigating the validity of claims 1 and 15, based upon the final written
`decision in the Hynix ’831 IPR, finding claim 15 of the ’831 patent
`unpatentable over Best, Mills, and Bonella. Pet. 18.
`First, Petitioner contends that “the substantive features of challenged
`claims 1 and 15 of the ’833 Patent are materially identical to the substantive
`features of unpatentable claim 15 of the ’831 Patent,” and provides a side by
`side chart showing the comparison. Id. at 20–21. Petitioner asserts that
`“[t]he patent claims need not be verbatim identical, but ‘substantially
`similar’ so that the issues of validity are materially the same.” Id. at 21.
`Petitioner argues that there is only a “very slight difference in a few words”
`between the claims. Id. at 22. Petitioner also argues that “the prior art
`references, and supporting arguments” provided here are “also identical to
`the prior art references, and supporting arguments” evaluated in the
`Hynix ’831 IPR. Id.
`Second, Petitioner contends that the ultimate issue of validity of
`claim 15 of the ’831 Patent was actually litigated and adjudged in the
`Hynix ’831 IPR, “as well as the sub-issues pertaining to the same prior art,
`materially similar specific claim features, and materially similar arguments.”
`Id. at 23.
`
`
`8 As
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