Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 18
`
` Filed: July 21, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., HTC CORPORATION, HTC AMERICA, INC.,
`SAMSUNG ELECTRONICS CO. LTD,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`MEMORY INTEGRITY, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00159
`Patent 7,296,121 B2
`____________
`
`
`
`
`Before JENNIFER S. BISK, NEIL T. POWELL, and KERRY BEGLEY,
`Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71
`
`Apple Inc., HTC Corporation, HTC America, Inc., Samsung
`
`
`
`
`
`Electronics Co. Ltd., Samsung Electronics America, Inc., and
`
`Amazon.com, Inc. (collectively, “Petitioner”) timely filed a request for
`
`
`571.272.7822
`
`
`Paper No. 18
`
` Filed: July 21, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., HTC CORPORATION, HTC AMERICA, INC.,
`SAMSUNG ELECTRONICS CO. LTD,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`MEMORY INTEGRITY, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00159
`Patent 7,296,121 B2
`____________
`
`
`
`
`Before JENNIFER S. BISK, NEIL T. POWELL, and KERRY BEGLEY,
`Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71
`
`Apple Inc., HTC Corporation, HTC America, Inc., Samsung
`
`
`
`
`
`Electronics Co. Ltd., Samsung Electronics America, Inc., and
`
`Amazon.com, Inc. (collectively, “Petitioner”) timely filed a request for
`
`
`
`IPR2015-00159
`Patent 7,296,121 B2
`
`rehearing of our decision on institution of inter partes review (“Rehearing
`
`Request”). Paper 14 (“Req. Reh’g”). The request seeks rehearing of our
`
`determination to deny institution of inter partes review of claim 12 of
`
`U.S. Patent No. 7,296,121 B2 (Ex. 1001, “the ’121 patent”) on the
`
`asserted ground of anticipation by U.S. Patent Application Publication
`
`No. 2002/0053004 A1 (published May 2, 2002) (Ex. 1003, “Pong”). For the
`
`reasons given below, we deny the Rehearing Request.
`
`LEGAL STANDARDS
`
`When rehearing a decision whether to institute inter partes review, we
`
`review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The
`
`burden of showing [the] decision should be modified lies with the party
`
`challenging the decision.” 37 C.F.R. § 42.71(d). The request for rehearing
`
`“must specifically identify all matters the party believes the Board
`
`misapprehended or overlooked, and the place where each matter was
`
`previously addressed in” the petition. Id.
`
`DISCUSSION
`
`
`
`Claim 12 of the ’121 patent depends from claim 11, which, in turn,
`
`depends from independent claim 1. See Ex. 1001, 30:65–31:7, 31:49–57.
`
`Based on its dependency from claims 1 and 11, claim 12 recites “a plurality
`
`of processing nodes” “wherein each of the processing nodes is programmed
`
`to complete a memory transaction after receiving a first number of responses
`
`to a first probe.” Id. at 30:65–66, 31:49–54. Claim 12 adds the limitation:
`
`“and the first number is one.” Id. at 31:56–57.
`
`
`
`The Petition argues that Pong discloses this limitation of claim 12
`
`even though Pong’s processors may wait to receive more than one response
`
`before completing a memory transaction. See Paper 6 (“Pet.”), 33–34.
`
`
`
`2
`
`
`
`IPR2015-00159
`Patent 7,296,121 B2
`
`Specifically, the Petition asserts that in one example described in Pong, “the
`
`requesting processor may receive, at most, two responses.” Id. at 33. The
`
`Petition then argues that Pong’s processors “necessarily” satisfy the claim
`
`language because “‘the first number is one’ simply imparts a temporal
`
`requirement . . . that the memory transaction be completed after receiving
`
`one response.” Id. at 34. In other words, the Petition contends that in Pong:
`
`[t]he requesting processor is . . . programmed to complete a
`memory transaction after receiving at most, two responses to a
`request . . . and, therefore, necessarily is configured to perform
`a memory transaction after receiving one response, since even
`in the case where the requesting processor waits for the second
`response to complete the memory transaction, that memory
`transaction is completed after receiving the first response.
`
`Id. (first and second emphases added).
`
`In our Decision, we determined that the Petition does not show
`
`sufficiently that Pong inherently discloses “after receiving a first number of
`
`responses to a first probe” “and the first number is one,” as recited in
`
`claim 12. See Decision – Institution of Inter Partes Review (Paper 12,
`
`“Dec.”), 23–24. Upon careful review and analysis of the claims and written
`
`description of the ’121 patent, we concluded that the Petition’s proposed
`
`interpretation of this limitation as encompassing processing nodes
`
`programmed to complete a memory transaction at any time after receiving
`
`one response—including after receiving two, three, four, etc. responses—
`
`was too broad to be reasonable. Id. at 10–13. Instead, we determined that
`
`“after receiving a first number of responses to a first probe” “wherein . . . the
`
`first number is one” means “after receiving one response—not at least one or
`
`more than one response, as Petitioner proposes.” Id. at 13. Under this claim
`
`construction, we were not persuaded by the Petition’s argument that Pong
`
`
`
`3
`
`
`
`IPR2015-00159
`Patent 7,296,121 B2
`
`inherently discloses claim 12, which is “premised on the possibility that
`
`Pong’s processors may receive more than response to a request” before
`
`completing a memory transaction. Id. at 23–24. We further noted that “the
`
`Petition does not point to any evidence that Pong’s processors necessarily
`
`perform a memory transaction after receiving one response.” Id. at 24.
`
`In its Rehearing Request, Petitioner argues that the Board overlooked
`
`or misapprehended the Petition’s “citation” to paragraph A-22 of the
`
`Declaration of Dr. Robert Horst (Ex. 1014, “Dr. Horst Declaration”) in
`
`rendering our Decision. Req. Reh’g. In this paragraph, Dr. Horst opines:
`
`Since Pong does not describe that the directory filter ever
`informs the requesting processor of the number of responses it
`should expect to receive, the requesting processor must
`necessarily be configured to complete a memory transaction as
`soon as it receives the first response. Otherwise, the requesting
`processor would have to wait for an unknown number of
`responses to its request.
`
`Ex. 1014 ¶ A-22.
`
`
`
`We acknowledge that one sentence of the Petition features,
`
`without explanation, a citation to paragraphs “A-19 to A-24,” including
`
`paragraph A-22, of the Dr. Horst Declaration, and that Dr. Horst opines in
`
`paragraph A-22 that Pong’s processors necessarily must be programmed to
`
`complete a memory transaction upon receiving one response. See id.;
`
`Pet. 32. Yet merely pointing to the Petition’s citation of this paragraph of
`
`the Dr. Horst Declaration—as Petitioner does in its Rehearing Request—is
`
`insufficient to warrant rehearing of our determination to deny institution of
`
`inter partes review of claim 12.
`
`
`
`Petitioner’s Rehearing Request does not point us to any argument in
`
`the Petition that Pong discloses claim 12 because Pong’s processors are
`
`
`
`4
`
`
`
`IPR2015-00159
`Patent 7,296,121 B2
`
`configured to perform a memory transaction after receiving one—as
`
`opposed to at least one or more than one—response, as required to satisfy
`
`claim 12 under the claim construction we adopted in our Decision, which
`
`Petitioner does not contest. See Req. Reh’g. Rather, the Rehearing Request
`
`refers only to a “citation” in the Petition to paragraph A-22 of the Dr. Horst
`
`Declaration, in which Dr. Horst states his opinion that Pong’s processors
`
`must be configured to complete a memory transaction after receiving one
`
`response. See id.; Ex. 1014 ¶ A-22. Therefore, Petitioner has failed to show
`
`sufficiently where the relevant “matter was previously addressed” in the
`
`Petition, as required in a request for rehearing. 37 C.F.R. § 42.71(d).
`
`
`
`In addition, Petitioner’s attempt in its Rehearing Request to rely solely
`
`on a paragraph of the Dr. Horst Declaration cited in the Petition is
`
`impermissible under our rules. Specifically, 37 C.F.R. § 42.6(a)(3) prohibits
`
`incorporating arguments into the Petition by reference to other documents,
`
`and 37 C.F.R. § 42.104(b)(5) gives us discretion to “exclude or give no
`
`weight to . . . evidence” where the Petition “fail[s] to state its relevance.”
`
`See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by
`
`reference from one document into another document.”); 37 C.F.R.
`
`§ 42.104(b)(5) (“The Board may exclude or give no weight to the evidence
`
`where a party has failed to state its relevance or to identify specific portions
`
`of the evidence that support the challenge.”).
`
`
`
`Even considering paragraph A-22 of Dr. Horst’s testimony, we remain
`
`unpersuaded that Pong inherently discloses claim 12. This testimony,
`
`opining that Pong’s processors “must necessarily be configured to complete
`
`a memory transaction as soon as it receives the first response,” Ex. 1014
`
`¶ A-22 (emphasis added), is contrary to the position Petitioner takes in the
`
`
`
`5
`
`
`
`IPR2015-00159
`Patent 7,296,121 B2
`
`Petition, which acknowledges “the case where the requesting processor [in
`
`Pong] waits for the second response to complete the memory transaction,”
`
`Pet. 34 (emphasis added). Petitioner does not address, or explain, the
`
`apparent inconsistency between these diverging positions. Moreover,
`
`Dr. Horst’s testimony on this point is conclusory and is insufficient to show
`
`inherency. See Ex. 1014 ¶ A-22; Paper 11 (“Prelim Resp.”), 48–50. The
`
`mere fact that “Pong does not describe that the directory filter ever informs
`
`the requesting processor of the number of responses it should expect to
`
`receive” is insufficient to establish that the requesting processor “must
`
`necessarily be configured to complete a memory transaction as soon as it
`
`receives the first response.” Ex. 1014 ¶ A-22. The relevant testimony does
`
`not sufficiently exclude other possible means of programming processors in
`
`Pong—as required for inherency. See Akamai Techs., Inc. v. Cable &
`
`Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003) (“A
`
`claim limitation is inherent in the prior art if it is necessarily present in the
`
`prior art, not merely probably or possibly present.”).
`
`
`
`In conclusion, we are not persuaded that Petitioner identifies
`
`sufficiently where the Petition “addressed” the “matter” that is the focus of
`
`its Rehearing Request, as required under 37 C.F.R. § 42.71(d). Nor are we
`
`persuaded that we abused our discretion in denying institution of inter partes
`
`review of claim 12 of the ’121 patent on the asserted ground of anticipation
`
`by Pong.
`
`
`
`Accordingly, it is:
`
`ORDER
`
`ORDERED that Petitioner’s Request for Rehearing Pursuant to
`
`37 C.F.R. § 42.71 (Paper 14) is denied.
`
`
`
`6
`
`
`
`IPR2015-00159
`Patent 7,296,121 B2
`
`PETITIONER:
`
`W. Karl Renner
`Roberto Devoto
`FISH & RICHARDSON P.C.
`P.O. Box 1022
`Minneapolis, MN 55440-1022
`(202) 783-5070
`axf@fr.com
`IPR39521-0007IP2@fr.com
`
`
`
`PATENT OWNER:
`
`Jonathan D. Baker
`FARNEY DANIELS PC
`411 Borel Avenue, Suite 350
`San Mateo, CA 94402
`(424) 268-5210
`jbaker@farneydaniels.com
`
`Bryan Atkinson
`FARNEY DANIELS PC
`800 S. Austin, Suite 200
`Georgetown, TX 78626
`(512) 582-2836
`memoryintegrityIPR@farneydaniels.com
`
`
`
`
`7
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