UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PETITIONERS’ REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71
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`SONY CORPORATION, SONY ELECTRONICS INC.,
`SONY MOBILE COMMUNICATIONS AB, and
`SONY MOBILE COMMUNICATIONS (USA) INC.
`Petitioners,
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`v.
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`MEMORY INTEGRITY, LLC,
`Patent Owner.
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`Case IPR2015-00158
`Patent 7,296,121 B2
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PETITIONERS’ REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71
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`SONY CORPORATION, SONY ELECTRONICS INC.,
`SONY MOBILE COMMUNICATIONS AB, and
`SONY MOBILE COMMUNICATIONS (USA) INC.
`Petitioners,
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`v.
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`MEMORY INTEGRITY, LLC,
`Patent Owner.
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`Case IPR2015-00158
`Patent 7,296,121 B2
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`IPR2015-00158
`Patent 7,296,121
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`I.
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`Introduction
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`Sony Corporation, Sony Electronics Inc., Sony Mobile Communications
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`AB, and Sony Mobile Communications (USA) Inc. (collectively, “Petitioners”)
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`hereby respectfully request rehearing of the May 21, 2015 Decision (“Decision”),
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`granting-in-part and denying-in-part institution of trial. In rendering its decision,
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`the Board overlooked the fact that claims 1–3, 8, 15–18, and 25 of U.S. Patent No.
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`7,296,121 (“the ’121 patent”) contain limitations that are not disclosed in ’121
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`patent’s alleged parent application. As such, the Board incorrectly determined that
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`Koster is not prior art to these claims. Furthermore, the Board may have
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`misapprehended the Petitioners’ application of Luick to the claim limitation of
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`“cache memory.” Accordingly, Petitioners respectfully submit reconsideration of
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`the denial to institute several of Petitioners’ proposed grounds for unpatentability
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`of the challenged claims.
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`II. Applicable Rules
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`37 C.F.R. § 42.71(d) states:
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`(d) Rehearing. A party dissatisfied with a decision may file a request
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`for rehearing, without prior authorization from the Board. The burden
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`of showing a decision should be modified lies with the party
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`challenging the decision. The request must specifically identify all
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`1
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`IPR2015-00158
`Patent 7,296,121
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`matters the party believes the Board misapprehended or overlooked,
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`and the place where each matter was previously addressed in a
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`motion, an opposition, or a reply. A request for rehearing does not toll
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`times for taking action. Any request must be filed:
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`(1) Within 14 days of the entry of a non-final decision or a decision to
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`institute a trial as to at least one ground of unpatentability asserted in
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`the petition; or
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`(2) Within 30 days of the entry of a final decision or a decision not to
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`institute a trial.
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`In accordance with 37 C.F.R. § 42.71(d)(1), this request is being filed within
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`14 days of entry of a decision to institute trial as to at least one ground of
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`unpatentability asserted in the petition.
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`III. Requested Relief
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`Petitioners respectfully request rehearing of the Board’s decision: (i) not to
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`institute a review on Ground A for claims 1–3, 8, 15, 16, and 25 of the ’121 patent;
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`(ii) not to institute a review on Ground B for claims 17 and 18 of the ’121 patent;
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`(iii) not to institute a review on Ground D for claims 15 and 25 of the ’121 patent;
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`(iv) not to institute a review on Ground E for claims 1–3, 8, 11, 12, 14–18, 24, and
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`25 of the ’121 patent; (v) not to institute a review on Ground F for claims 19–23 of
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`IPR2015-00158
`Patent 7,296,121
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`the ’121 patent; and (vi) not to institute a review on Ground G for claims 15 and 25
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`of the ’121 patent. Petitioners respectfully request that the Board institute a review
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`on these Grounds for the challenged claims as part of IPR2015-00158.
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`IV. Argument
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`A. Grounds A, B, and D (Koster)
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`With respect to the requests for rehearing based on Koster (Grounds A, B,
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`and D), each of these requests focuses on the same issue: whether the challenged
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`claims of the ’121 patent are properly supported by its alleged parent continuation-
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`in-part application, U.S. Application No. 10/288,347 (“the parent application”).
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`Proper support would exist only if the parent application discloses a “probe
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`filtering unit” that uses “probe filtering information” in connection with “nodes”
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`as claimed in the ’121 patent.
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`Petitioners proffer Koster as §102(e) prior art. Petition at 7. Koster’s filing
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`date of July 13, 2004 is before the filing date of U.S. Application No. 10/966,161
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`(“the ’161 application”)—October 15, 2004—which issued as the ’121 patent.
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`However, the Board found that claims 1–3, 8, 15–18, and 25 of the ’121 patent are
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`entitled to the filing date of the parent application—November 4, 2002. Decision
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`at 18. The Board thus found that Koster is not prior art to these claims. Decision
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`at 18.
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`3
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`IPR2015-00158
`Patent 7,296,121
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`As discussed in the Petition, the parent application does not disclose the
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`“probe filtering unit” as claimed by the ’121 patent, and therefore, any claim in the
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`’121 patent that contains this limitation is not entitled to the priority date of the
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`parent application and may be challenged by Koster under § 102(e). Petition at 4–
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`7. The Petition acknowledges that the parent application includes some discussion
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`of “probe filtering information” which the Board concluded provides support for
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`the claimed “probe filtering unit.” Decision at 17–18. However, it is respectfully
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`submitted that in doing so, the Board overlooked the fact that the definition of
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`“probe filtering information” was broadened significantly between the parent
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`application and the ’161 application. Petition at 6–7. Specifically, the parent
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`application expressly defines the term “probe filtering information” as “[a]ny
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`criterion that can be used to reduce the number of clusters probed from a home
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`cluster.” .Petition at 6. But in the ’161 application, the definition of the term
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`“probe filtering information” was expressly broadened to also include “nodes”:
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`“[a]ny criterion that can be used to reduce the number of clusters or nodes probed
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`. . ..” Petition at 6–7. Thus, Patent Owner broadened the term “probe filtering
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`information” in the ’161 application to include criterion used to filter probes
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`transmitted to clusters or nodes which is not supported by the parent applications’
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`disclosure of criterion used to filter probes transmitted to just clusters. Petition at
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`4
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`IPR2015-00158
`Patent 7,296,121
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`7. This distinction is significant because while the parent application concerns the
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`filtering of probes transmitted between clusters, the ’161 application concerns the
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`filtering of probes transmitted within a cluster (i.e., from node to node). ’121
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`patent at claim 4; 26:58-61.
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`Petitioners respectfully submit that the Board overlooked the broadening of
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`the definition of the term as used in the ’121 Patent. Petition at 7. Quite simply,
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`the parent application does not disclose a “probe filtering unit” (whether
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`specifically a “cache coherence controller” or not) that uses “probe filtering
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`information” in connection with nodes. Petition at 5–7. Such a disclosure would
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`be necessary for the parent application to properly support claims 1–3, 8, 15–18,
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`and 25 of the ’121 patent. X2Y Attenuators, LLC v. Int’l Trade Comm’n, 757 F.3d
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`1358, 1365 (Fed. Cir. 2014) (“[A] claim is entitled to the priority date of an earlier
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`application only if the earlier application provides sufficient written support for the
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`full scope of the claim.”) (emphasis added); Anascape, Ltd. v. Nintendo of Am.,
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`Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010) (“To obtain the benefit of the filing date
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`of a parent application, the claims of the later-filed application must be supported
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`by the written description in the parent in sufficient detail that one skill in the art
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`can clearly conclude that the inventor invented the claimed invention as of the
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`5
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`IPR2015-00158
`Patent 7,296,121
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`filing date sought.”). Accordingly, these claims are not entitled to the filing date of
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`the parent application. Therefore, Koster is § 102(e) prior art to these claims.
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`B.
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`Luick (Grounds E, F, and G)
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`In reaching its decision on Grounds E, F, and G, the Board stated that “Luick
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`teaches its GCT includes information identifying which nodes contain shared data
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`blocks, but not identifying whether those nodes contain the information in cache or
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`memory.” Decision at 33. From this, the Board concluded that “it is not facially
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`apparent that the information in Luick’s GCT is ‘representative of states associated
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`with selected ones of the cache memories,’ as recited in each of the independent
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`claims.” Decision at 33. However, the Board overlooked Petitioners’ position
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`with respect to Luick’s disclosure of the claimed “cache memory” limitation.
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`Specifically, Petitioners stated that Luick discloses both “a memory 105 [and] a
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`cache 107.” Petition at 33, 53 (emphasis added). Thus, Petitioners believe that
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`the disclosed “memory 105” and “cache 107” each meet the claim limitation of
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`“cache memory” because Luick teaches that in its system the “cache lines” are
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`stored in either the “cache 107” or the “memory 105” of a node. Luick at 5:8-13
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`(“Thus, the functions of the cache controller 113 and the control processor 119
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`may be combined, such that the entry in the LCT indicates whether the most
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`current copy of a particular cache line is available from the cache 107, the memory
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`6
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`IPR2015-00158
`Patent 7,296,121
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`105, or a source outside the node (i.e., either storage or a non-local cache (i.e.,
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`cache within another node)).” (emphasis added). As such, this discloses the
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`claimed “cache memory” under the broadest reasonable interpretation of that term.
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`Accordingly, the Board’s reasoning for denying the institution of the IPR for
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`Grounds E, F, and G is inapplicable to Petitioners’ actual argument.
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`V. Conclusion
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`For the forgoing reasons, Petitioners respectfully request that inter partes
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`review be instituted on:
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`Ground A for claims 1–3, 8, 15, 16, and 25;
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`Ground B for claims 17 and 18;
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`Ground D for claims 15 and 25;
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`Ground E for claims 1–3, 8, 11–12, 14–18, and 24–25;
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`Ground F for claims 19–23; and
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`Ground G for claims 15 and 25.
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`7
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`IPR2015-00158
`Patent 7,296,121
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`Dated: June 4, 2015
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`/s/ Lewis V. Popovski
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`Lewis V. Popovski, Lead Counsel, Reg. No. 37,423
`lpopovski@kenyon.com
`Zaed M. Billah, Backup Counsel, Reg. No. 71,418
`zbillah@kenyon.com
`Michael Sander, Backup Counsel, Reg. No. 71,667
`msander@kenyon.com
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Tel: 212-425-7200
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`8
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`IPR2015-00158
`Patent 7,296,121
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`Certificate of Service Under 37 C.F.R. § 42.6(e)(4)
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`I certify that I caused a true and correct copy of the forgoing to be served via
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`email on the following:
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`Jonathan D. Baker, Reg. No. 45,708
`Farney Daniels PC
`411 Borel Ave., Suite 350
`San Mateo, CA 94402
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`Bryan Atkinson, Reg. No. 52,574
`Farney Daniels PC
`800 S. Austin, Suite 200
`Georgetown, Texas 78626
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`Email:
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`jbaker@farneydaniels.com
`batkinson@farneydaniels.com
`fdlitsupport@farneydaniels.com
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`Dated: June 4, 2015
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`/s/ Michael E. Sander
`Michael Sander, Reg. No. 71,667
`msander@kenyon.com
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Tel: 212-425-7200
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`9
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