`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`LIMESTONE MEMORY SYSTEMS LLC,
`Patent Owner.
`____________________
`
`Case IPR2016-01561
`U.S. Patent No. 6,233,181
`____________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via the Patent Review Processing System
`
`DC01:1156335.6
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`
`
`
` IPR2016-01561
`
`I.
`II.
`
`B.
`
`C.
`
`TABLE OF CONTENTS
`INTRODUCTION .............................................................................................. 1
`ARGUMENT ...................................................................................................... 7
`Sukegawa Does Not Teach Away from the Any-to-Any
`A.
`Redundant DRAM Claimed in Claims 1 and 2 ..................................... 7
`The Motivation to Use Fujishima’s Sense Amplifiers Is
`Found in Fujishima Itself .................................................................... 11
`Claim 3 Does Not Mention Control Circuitry, and
`Fujishima’s Control Circuitry Is Irrelevant to the
`Analysis of Claim 3 ............................................................................. 14
`D. Dr. Mazumder Properly Considered Obviousness
`Through the Lens of a POSITA at the Time of Invention,
`and the Dispute Between the Parties as to the Level of
`Skill Is Irrelevant Here ........................................................................ 15
`There is No General “Teaching Away” from the
`Combination of Sukegawa and Fujishima .......................................... 16
`Sukegawa and Fujishima Disclose All Elements of Claim
`5 Except for Simultaneously Driving Memory in
`Separate Arrays, Which Is Taught by Walck ...................................... 20
`G. Dr. Mazumder Clearly Describes the Motivations for
`Combining Sukegawa, Fujishima, and Walck to Arrive at
`the Memory Device in Claim 5 ........................................................... 22
`III. CONCLUSION ................................................................................................. 24
`
`
`
`E.
`
`F.
`
`
`
`DC01:1156335.6
`
`i
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`
`
`
` IPR2016-01561
`
`UPDATED TABLE OF EXHIBITS
`
`Exhibit #
`
`Exhibit Description
`
`
`1001* Declaration of Dr. Pinaki Mazumder
`
`1002*
`
`Curriculum Vitae of Dr. Pinaki Mazumder
`
`1003* U.S. Patent No. 6,233,181
`
`1004*
`
`File History for U.S. Patent No. 6,233,181
`
`1005*
`
`U.S. Patent No. 5,487,040 to Sukegawa
`
`1006* U.S. Patent No. 5,267,214 to Fujishima
`
`1007*
`
`U.S. Patent No. 4,967,397 to Walck
`
`1008*
`
`U.S. Patent No. 5,956,285 to Watanabe
`
`1009*
`
`1010*
`
`Masashi Horiguchi et al., A Flexible Redundancy Technique for High-
`Density DRAM’s, IEEE JOURNAL OF SOLID-STATE CIRCUITS, VOL.
`26, NO. 1, Jan. 1991, at 12-17
`
`Kazutami Arimoto et al., A 60-ns 3.3-V-Only 16 Mbit DRAM with
`Multipurpose Register, IEEE JOURNAL OF SOLID-STATE CIRCUITS,
`VOL. 24, NO. 5, Oct. 1989, at 1184-90
`
`1011*
`
`U.S. Patent No. 5,687,123 to Hidaka
`
`1012*
`
`U.S. Patent No. 5,726,946 to Yamagata
`
`1013*
`
`U.S. Patent No. 6,003,148 to Yamauchi
`
`1014*
`
`U.S. Patent No. 6,075,743 to Barth
`
`1015*
`
`1016*
`
`Inter Partes Review No. IPR2016-00096, Decision Granting
`Institution filed April 21, 2016
`
`Inter Partes Review No. IPR2016-00096, Judgment Granting
`Request for Adverse Judgment filed August 3, 2016
`
`DC01:1156335.6
`
`ii
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`
`
`
` IPR2016-01561
`
`1017* Affidavit of Michael N. Zachary in Support of Motion for Pro Hac
`Vice Admission
`1018* Affidavit of Rose Cordero Prey in Support of Motion for Pro Hac
`Vice Admission
`
`1019
`
`Transcript of July 28, 2017 Deposition of Dr. Sunil Khatri
`
`1020
`
`European Patent Application Publication No. 0 499 131 A1 to
`Sukegawa
`
`* Previously filed.
`
`
`
`DC01:1156335.6
`
`iii
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`I.
`
`INTRODUCTION
`
`
`
`IPR2016-01561
`
`With respect to claim 3, the Response (Paper 13, “Resp.”) of Patent Owner
`
`Limestone Memory Systems LLC (“Limestone”) attacks only the motivation to
`
`combine the amplifiers of U.S. Patent No. 5,267,214 to Fujishima et al.
`
`(“Fujishima”) with the dynamic random access memory (“DRAM”) of U.S. Patent
`
`No. 5,487,040 to Sukegawa et al. (“Sukegawa”). Limestone does not dispute that:
`
`• Sukegawa discloses each of the limitations found in claims 1 and 2 of
`U.S. Patent No. 6,233,181 (“the ‘181 patent”).
`• Fujishima discloses each of the additional sense amplifier limitations
`found in claim 3 of the ‘181 patent.
`• The alternate shared sense amplifiers claimed in claim 3 in fact have the
`known benefits set forth in Fujishima.
`
`By admitting that the alternate shared sense amplifier arrangement of
`
`Fujishima possesses the benefits described therein (Paper 13, at 27-28), Limestone
`
`has effectively conceded that claim 3 of the ‘181 patent represents the
`
`incorporation of a known sense amplifier scheme having known benefits into the
`
`any-to-any redundant DRAM of Sukegawa to achieve the expected result. This is
`
`the epitome of an obvious combination. KSR Intern. Co. v. Teleflex Inc., 550 U.S.
`
`398, 401 (2007) (“If a person of ordinary skill in the art can implement a
`
`predictable variation, and would see the benefit of doing so, §103 likely bars its
`
`patentability”). Fujishima itself provides the motivation to use the alternate shared
`
`sense amplifiers claimed in claim 3.
`
`DC01:1156335.6
`
`1
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`
`
`
`IPR2016-01561
`
`Limestone nonetheless argues that there is no motivation to use the
`
`admittedly beneficial alternate shared sense amplifier because Fujishima describes
`
`another shared sense amplifier embodiment that has the same benefits. However,
`
`if a prior art reference provides two embodiments and describes them both as
`
`beneficial it provides a motivation to use either of them, not neither of them. In re
`
`Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[O]ur case law does not require
`
`that a particular combination must be the preferred, or the most desirable,
`
`combination described in the prior art in order to provide motivation for the current
`
`invention”). Fujishima describes the shared sense amplifier claimed in claim 3,
`
`and describes the benefits of such an arrangement. The fact that Fujishima also
`
`describes another shared sense amplifier arrangement as being beneficial does not
`
`erase or negate the favorable teachings with respect to the amplifiers of claim 3 in
`
`Fujishima.
`
`Limestone’s other arguments are likewise based on fundamental
`
`misunderstandings of the law of obviousness. Limestone spends much of its brief
`
`arguing that a POSITA would not use the alternate shared sense amplifier scheme
`
`of Fujishima with Sukegawa’s any-to-any redundant DRAM because a POSITA
`
`would not want to use the any-to-any redundancy scheme in the first instance.
`
`Limestone bases this argument on the fact that the any-to-any (inter-block)
`
`redundancy scheme of Sukegawa—and claims 1 and 2—can be more complex than
`
`DC01:1156335.6
`
`2
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`an intra-block redundancy scheme. This argument fails for various reasons. First,
`
`IPR2016-01561
`
`
`
`to the extent that any-to-any redundancy schemes are more complicated than intra-
`
`block redundant schemes, that is an inherent feature of the claimed invention itself,
`
`and not a reason that claim 3 is valid. Under Limestone’s logic, claims to less-
`
`than-perfect inventions would be harder to invalidate than claims to optimal
`
`inventions. Second, Sukegawa teaches that an any-to-any redundancy scheme can
`
`be useful with DRAM, and Sukegawa thus is an appropriate starting reference
`
`when considering DRAM redundancy, the subject of the ‘181 patent. That
`
`Sukegawa fully teaches the redundancy scheme of claims 1 and 2 is a fact
`
`Limestone admitted when it conceded the obviousness of those claims. To the
`
`extent that Limestone now has implicitly changed its position and is arguing
`
`Sukegawa actually teaches away from an any-to-any redundancy scheme, it is
`
`simply wrong.1
`
`Limestone also argues that the alternate shared sense amplifier of Fujishima
`
`would not be used in Sukegawa because Fujishima discloses a complicated control
`
`system that could not be incorporated into Sukegawa without adding complexity.
`
`This argument fails for at least two reasons. First, Petitioner is not arguing that the
`
`particular control circuitry of Fujishima would be incorporated verbatim into
`
`
`Such an argument also would be estopped under 37 CFR § 42.73(d)(3).
`1
`
`DC01:1156335.6
`
`3
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`Sukegawa, nor does it have to, because claim 3 requires no particular control
`
`IPR2016-01561
`
`
`
`circuitry. Claim 3 covers DRAMs with simple or complex control circuitry.
`
`Limestone cannot distinguish prior art based on unclaimed limitations. In re
`
`Hiniker Co., 150 F.3d 1362, 1368-69 (Fed. Cir. 1998); In re Self, 671 F.2d 1344,
`
`1348 (C.C.P.A. 1982). Second, it is black-letter law that circuitry from one
`
`reference does not have to be able to be incorporated without change into the
`
`circuitry of another reference in order for those two references to be combined.
`
`MCM Portfolio v. Hewlett-Packard, 812 F.3d 1284, 1294 (Fed. Cir. 2015) (“[T]he
`
`test for obviousness is not whether the features of a secondary reference may be
`
`bodily incorporated into the structure of the primary reference.”). Rather, the
`
`POSITA has the ability take beneficial circuit ideas from one reference and
`
`implement them into other circuits. Id.
`
`The remainder of Limestone’s arguments are equally fruitless. Limestone
`
`notes there are thousands of prior art DRAM references, and Petitioner did not
`
`provide a particular reason for choosing these two references out of those
`
`thousands. The law does not require such an exercise. The POSITA is assumed to
`
`be aware of ALL prior art, no matter how crowded, and can make whatever
`
`combinations are suggested from the art or the problem being faced. See
`
`generally, KSR, 550 U.S. at 419-21. A motivation to combine two references does
`
`not first require an explanation of how those two references are distinguished from
`
`DC01:1156335.6
`
`4
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`every other reference not being relied upon for invalidity. Under Limestone’s
`
`IPR2016-01561
`
`
`
`illogical theory, a crowded art field would be less, not more, likely to lead to
`
`invalid patents, because of the difficulty of saying why a POSITA would use two
`
`particular patents out of the universe of potentially relevant patents.
`
`Limestone also criticizes Dr. Mazumder for not applying the correct
`
`standard for a POSITA, either because he applied his own expert understanding, or
`
`too high of a skill level. This also is wrong. Dr. Mazumder properly looked at the
`
`art through the eyes of a POSITA in considering the issue of obviousness.
`
`Lastly, Limestone argues that the POSITA would not use the alternate
`
`shared sense amplifier of Fujishima with Sukegawa’s DRAM because other
`
`references criticize the complexity of any-to-any redundant schemes. This
`
`argument also fails for multiple reasons. First, it is a repeat of the argument
`
`described above that any-to-any redundant schemes are disfavored. Petitioners are
`
`starting with Sukegawa’s any-to-any redundancy scheme, and the relevant inquiry
`
`is which types of amplifiers could be used with that scheme. A certain degree of
`
`complexity is inherent to such schemes and the claimed invention, and is not a
`
`reason that the claims are valid. Further, this argument relies on prior art
`
`references that are not describing Sukegawa, and therefore runs counter to the
`
`notion that the POSITA is aware of all of the prior art, including Sukegawa.
`
`DC01:1156335.6
`
`5
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`
`
`
`IPR2016-01561
`
`In claim 3, the applicants took an any-to-any redundancy scheme, which is
`
`admittedly disclosed in the prior art Sukagawa reference, and described using it
`
`with a shared sense amplifier scheme, the description of which in the ‘181 patent is
`
`copied nearly verbatim from the prior art, such as Fujishima. Paper 1, at 54; Ex.
`
`1001, ¶ 131. Further, the alternate shared sense amplifier scheme is admittedly
`
`described as being beneficial in Fujishima, and is, in fact, beneficial. Under these
`
`circumstances, the conclusion that claim 3 is obvious is inescapable. The Patent
`
`and Trial Appeal Board (“Board”) was correct to initiate this proceeding, and it
`
`should now find claim 3 unpatentable as obvious.
`
`
`
`As to claim 5, Limestone argues that Walck discusses driving multiple
`
`memory “banks” of DRAM into particular states, not memory “blocks” as required
`
`by claim 5, and therefore the combination allegedly does not teach the limitations
`
`of claim 5. This argument fails to address that Sukegawa discloses the requisite
`
`memory blocks; the only concept being taken from Walck is that multiple arrays of
`
`memory can be simultaneously driven during DRAM refresh. Thus, Limestone
`
`fails to address the references in combination. Further, to the extent Limestone is
`
`arguing that Walck does not teach simultaneously driving multiple memory blocks
`
`into a particular state during DRAM refresh, Limestone is wrong. Walck clearly
`
`discloses a refresh operation in which banks (and, therefore, the memory blocks
`
`included in the banks) are simultaneously driven.
`
`
`
`DC01:1156335.6
`
`6
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`II. ARGUMENT
`A.
`Sukegawa Does Not Teach Away from the Any-to-Any Redundant
`DRAM Claimed in Claims 1 and 2
`
`IPR2016-01561
`
`
`
`Limestone, having previously conceded that Sukegawa renders claims 1 and
`
`2 obvious, does not argue that Sukegawa lacks any elements from those claims.
`
`As explained in the Petition (Paper 1), and found by the Board in its Decision on
`
`Institution (“Decision”), Sukegawa does disclose those elements. Sukegawa is the
`
`closest prior art and should be the starting point for any obviousness determination
`
`with respect to claim 3, which simply adds a shared sense amplifier scheme to
`
`claims 1 and 2.
`
`Limestone nevertheless argues that Sukegawa “teaches away” from its any-
`
`to-any redundancy scheme. This is wrong both factually, as Sukegawa does not
`
`state that the any-to-any scheme is disfavored (in fact, it embraces and claims it),
`
`and legally, since a reference that discloses multiple embodiments does not “teach
`
`away” from those embodiments (even embodiments that are not preferred) absent a
`
`clear discouragement from using the embodiment. Syntex (U.S.A.) LLC v. Apotex,
`
`Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). See also Allergan, Inc. v. Apotex, Inc.
`
`754 F.3d 952, 964 (Fed. Cir. 2014) (“mere disclosure of alternative preferences”
`
`not a teaching away); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A known
`
`or obvious composition does not become patentable simply because it has been
`
`described as somewhat inferior to some other product . . . .”).
`
`DC01:1156335.6
`
`7
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`
`
`
`IPR2016-01561
`
`To begin, the argument that Sukegawa “explicitly teaches away” (Paper 13,
`
`at 18) from the any-to-any redundancy scheme disclosed and claimed therein is
`
`specious. In making this argument, Limestone refers to 2:47-51; 4:51-55; 5:53-57
`
`and 6:17-24, 29-31, and 36-39 of Sukegawa.2 Its expert relies solely on 2:47-51 in
`
`Sukegawa. Ex. 2004, ¶ 74. None of these sections teach away (i.e., clearly
`
`discourages) from any-to-any redundancy, or even state that it is not preferable. At
`
`most, Sukegawa notes that any-to-any redundancy may require the use of
`
`additional components. That is not a “teaching away.” See In re Dance, 160 F.3d
`
`1339, 1344 (Fed. Cir. 1998) (“simplicity of the prior art is rarely a characteristic
`
`that weighs against obviousness of a more complicated device with added
`
`function.”). Sukegawa explicitly embraces any-to-any redundancy as one of its
`
`preferred embodiments and discusses the benefits thereof:
`
`The row redundancy adopts a method that allows ANY TO ANY
`programming for realizing a high yield. When this ANY TO ANY
`redundant mechanism is adopted, the 64 redundant rows in one
`quadrant can be allotted selectively to all quadrants, including the
`present quadrant.
`Ex. 1005 at 2:30-35.
`
`The redundant memory placed in each quadrant can be replaced to the
`main memory of the other quadrants; hence increase in the data lines
`is not hampered.
`Id. at 2:51-54.
`
`2
`Limestone’s citations are tellingly selective—portions of text excised from
`these cites explicitly discuss benefits of the any-to-any redundancy scheme, and
`include it in the description of preferred embodiments.
`8
`
`DC01:1156335.6
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`
`
`
`IPR2016-01561
`
`Here, attention should be paid to the fact that the ANY TO ANY
`method tolerates about four times the defective memory of those in
`the conventional case in the stage with yield over 80% . . . . by using
`the ANY TO ANY method, only 20% of the chips have to be disposed
`of . . . .
`Id. at 3:4-15.
`
`In the redundant mechanism shown in Fig. 8, connection is made
`between one memory quadrant and fuse decoders. In the case when
`the ANY TO ANY method for the redundant mechanism is used, fuse
`decoders 82-94 can function for replacing the defective memory in the
`other quadrants not shown in the figure.
`Id. at 6:29-35.
`
`Further, Sukegawa’s claims cover the any-to-any redundancy scheme.
`
`Claim 1 calls for a redundancy scheme having a plurality of memory blocks, but
`
`does not require that each block have its own redundant memory dedicated only to
`
`that block. Rather, claim 1 requires only that “at least some of the arrays of
`
`memory cells” include redundant memory. Id. at 8:3-6 (emphasis added).
`
`Similarly, claim 5 requires only that alternating memory blocks have the redundant
`
`memory. Id. at 8:49-55. In sum, Sukegawa describes any-to-any redundancy as a
`
`preferred embodiment that increases yield, and claims such redundancy schemes.
`
`This is not a teaching away.
`
`The argument that Fujishima would not be combined with Sukegawa’s any-
`
`to-any redundancy because it is more complicated than an intra-block redundancy
`
`scheme also ignores that any complications that arise from the use of any-to-any
`
`redundancy schemes are a part of the claimed invention. In short, if any-to-any
`
`DC01:1156335.6
`
`9
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`redundancy schemes are more complicated than other possible redundancy
`
`IPR2016-01561
`
`
`
`schemes, the claims themselves embrace those complications, and they cannot be
`
`used to avoid the prior art. In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012).
`
`Indeed, Limestone’s analysis, which starts with Fujishima and discusses why
`
`a POSITA would not like the any-to-any redundancy of Sukegawa, is backwards.
`
`As noted above, Sukegawa is directed to the arrangement of redundant memory
`
`cells used to repair defective memory and teaches the redundancy scheme of claim
`
`3, which is the focus of the ‘181 patent, titled “Semiconductor Memory Device
`
`with Improved Flexible Redundancy Scheme.” Limestone has already conceded
`
`that Sukegawa alone renders claims 1 and 2 obvious. Sukegawa is an appropriate
`
`starting point for a POSITA considering redundancy schemes for DRAM. The
`
`only disclosure missing from it is the shared sense amplifier arrangement
`
`additionally claimed in claim 3. Sukegawa does not describe any particular sense
`
`amplifier arrangement. Thus, the question presented is whether a POSITA would
`
`know to use, for instance, an alternating shared sense amplifier such as those
`
`disclosed in Fujishima. Since the amplifiers are being used exactly as intended, the
`
`answer is yes. Paper 1, at 60-63; Ex. 1001, ¶¶ 46 and 141-43. KSR, 550 U.S. at
`
`416 (Where “a patent claims a structure already known in the prior art that is
`
`altered by the mere substitution of one element for another known in the field, the
`
`combination must do more than yield a predictable result.”).
`
`DC01:1156335.6
`
`10
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`
`
`
`IPR2016-01561
`
`B. The Motivation to Use Fujishima’s Sense Amplifiers Is Found in
`Fujishima Itself
`
`Limestone completely discounts the benefits that Fujishima ascribes to its
`
`shared sense amplifiers because those benefits are present in the alternate shared
`
`sense amplifier array of Fig. 14, as well as the shared sense amplifier array of Fig.
`
`1. Limestone thus admits that the alternate shared sense amplifier of Figure 14 is
`
`beneficial, and has the benefits set forth in Fujishima. Paper 13, at 27-28. See also
`
`Ex. 1019 at 144:14-145:17, 93:9-94:19. This is fatal to its case.
`
`Limestone would have the Board hold that when a prior art reference
`
`discloses two beneficial embodiments, it provides no motivation to use either
`
`embodiment, because it does not particularly favor one over the other. That is
`
`nonsensical. Legions of cases hold that a prior art embodiment need not be
`
`preferred in order to be used successfully in an obviousness combination. See,
`
`e.g., In re Fulton, 391 F.3d at 1201 (“[T]he prior art’s mere disclosure of more
`
`than one alternative does not constitute a teaching away from any of these
`
`alternatives because such disclosure does not criticize, discredit, or otherwise
`
`discourage the solution claimed....”); Tyco Healthcare Group LP v. Ethican Endo-
`
`Surgery, Inc., 774 F.3d 968, 977 (Fed. Cir. 2014); Merck & Co. v. Biocraft Labs,
`
`Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). A fortiori, a prior art embodiment need
`
`not be described as the only embodiment to have a particular benefit before there is
`
`a motivation to use that embodiment. Apple Inc. v. Samsung Elecs. Co., 816 F.3d
`
`DC01:1156335.6
`
`11
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`788, 801 (Fed. Cir. 2016) (“[A] motivation to use the teachings of a particular prior
`
`IPR2016-01561
`
`
`
`art reference need not be supported by a finding that that feature be the ‘preferred,
`
`or the most desirable.’”). Limestone’s argument undermines one of the
`
`foundations of KSR, which is that a POSITA is not an automaton, and can use
`
`known embodiments for their intended purposes in various contexts. KSR, 550
`
`U.S. at 420-21.
`
`Further, Dr. Mazumder explained in his deposition that, in fact, alternate
`
`shared sense amplifiers do have additional benefits that other shared sense
`
`amplifiers do not. Ex. 2007 at 234:3-46:18, 172:6-20, 174:4-20. For instance, in
`
`an alternate shared sense amplifier arrangement, each band has half as many
`
`amplifiers, because the amplifiers are only sensing either the odd or even lines in
`
`the adjacent memory blocks. This provides greater room for each amplifier,
`
`reducing manufacturing errors and decreasing noise (parasitic capacitance). Id.
`
`Limestone also suggests that there is no motivation to combine because
`
`Petitioner did not explain why the POSITA would choose Fujishima to combine
`
`with Sukegawa from among the thousands of prior art references that are not being
`
`relied upon for invalidity. Paper 13, at 65. However, the POSITA is assumed to
`
`have knowledge of all prior art in a field, and can combine any two references that
`
`might be useful to combine. KSR, 550 U.S. at 420. The references need not be the
`
`two most optimal references in the entire universe of possible references. Taken to
`
`DC01:1156335.6
`
`12
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`its conclusion, Limestone’s argument would mean that patent claims in crowded
`
`IPR2016-01561
`
`
`
`art fields are more likely to be valid than claims in wide open art fields, which is
`
`illogical. Similarly, claimed inventions that themselves incorporate shortcomings
`
`or are inferior in some way (such as being more complex) would be more likely to
`
`be held valid under Limestone’s logic, because the patent owner could in effect
`
`argue that the shortcomings of his own invention prevent the POSITA from ever
`
`wanting to make that invention.
`
`Here, Sukegawa discloses the any-to-any redundant scheme of claims 1 and
`
`2, and states that such a scheme can improve yield (which it does, by allowing for
`
`more flexible replacement of memory). These are the same goals the ‘181 patent is
`
`attempting to achieve with its inter-block memory replacement. The only thing
`
`missing from Sukegawa with respect to claim 3 is the shared sense amplifier
`
`scheme additionally disclosed in claim 3. But, as set forth in the Petition, the
`
`alternate shared sense amplifier shown in Figure 14 of Fujishima has certain
`
`known benefits that are set forth in that reference and thus provide to a POSITA a
`
`motivation to combine Fujishima with Sukegawa. The fact that another
`
`embodiment of Fujishima also has these benefits does not remove the motivation
`
`to use the embodiment of Figure 14. The shared sense amplifiers in the ‘181
`
`patent were known in the prior art to be beneficial and are being used as intended
`
`to sense the adjacent memory arrays. This is the definition of an obvious
`
`DC01:1156335.6
`
`13
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`combination. KSR, 550 U.S. at 416 (“The combination of familiar elements
`
`IPR2016-01561
`
`
`
`according to known methods is likely to be obvious when it does no more than
`
`yield predictable results.”).
`
`C. Claim 3 Does Not Mention Control Circuitry, and Fujishima’s
`Control Circuitry Is Irrelevant to the Analysis of Claim 3
`
`Limestone argues that the alternate shared sense amplifier scheme of
`
`Fujishima could not be combined with Sukegawa because its allegedly
`
`complicated control circuitry for the amplifiers could not be imported into
`
`Sukegawa without being reworked. This argument fails for two simple reasons.
`
`First, claim 3 does not require any particular control circuitry—it equally covers
`
`devices with elegant control circuitry, and devices with cumbersome control
`
`circuitry. Thus, the fact that Fujishima’s control circuitry is less than ideal
`
`(according to Limestone) is irrelevant. See In re Self, 671 F.2d at 1348. Petitioner
`
`is not relying on Fujishima’s disclosure of control circuitry for its proposed
`
`combination, merely its disclosure of the shared sense amplifiers, which is all that
`
`is actually claimed by Claim 3.3
`
`
`3
`This is not changed by the fact that Fujishima’s claimed invention related to
`control circuitry. See KSR, 550 U.S. at 420; In re Lemelson, 397 F.2d 1006, 1009
`(C.C.P.A. 1968) (“The use of patents as references is not limited to what the
`patentees describe as their own inventions or to the problems with which they are
`concerned.”).
`
`DC01:1156335.6
`
`14
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`
`
`
`IPR2016-01561
`
`Second, it is well established that circuitry from one reference (even claimed
`
`circuitry, which the control circuitry is not) need not be able to be physically
`
`incorporated directly into another reference’s circuit in order for the teachings of
`
`the references to be combined. See MCM, 812 F.3d at 1294; In re Mouttet, 686
`
`F.3d at 1332; In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); In re
`
`Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983); In re Keller, 642 F.2d 413, 425
`
`(CCPA 1981). The fact that surrounding circuitry would have to be “reworked,” as
`
`opposed to copied rotely from one circuit into another, is not grounds for a finding
`
`of nonobviousness. A POSITA here is a memory designer with years of
`
`experience. Not even Dr. Khatri claims that a POSITA could not incorporate an
`
`alternate shared sense amplifier into Sukegawa’s DRAM.
`
`D. Dr. Mazumder Properly Considered Obviousness Through the
`Lens of a POSITA at the Time of Invention, and the Dispute
`Between the Parties as to the Level of Skill Is Irrelevant Here
`
`Dr. Mazumder properly considered the requirements of 35 U.S.C. § 103,
`
`especially as it related to a POSITA and the corresponding level of ordinary skill in
`
`the art. Ex. 1001, ¶¶ 23-25 and 28-30; and p. 17, n.4; Ex. 2007 at 73:18-87:14.
`
`Dr. Mazumder considered his own experience, for instance, in determining what
`
`the level of a POSITA was. He did not say that he undertook the obviousness
`
`analysis using himself as a POSITA. Further, both experts have said that their
`
`analysis is not affected by the minor dispute between the parties over the level of a
`
`DC01:1156335.6
`
`15
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`POSITA. Ex. 1001, p. 17, n.4; Ex. 2004, ¶ 33. Dr. Mazumder did not
`
`
`
`IPR2016-01561
`
`misunderstand the nature of the obviousness inquiry.
`
`If either expert took a legally-improper or unsupported approach to
`
`obviousness, it was Dr. Khatri. He had no understanding of whether DRAM
`
`suppliers in the 1990’s were actually incorporating alternate shared sense
`
`amplifiers or inter-block memory redundancy into DRAMs. Ex. 1019 at 52:6-
`
`54:8, 56:3-11, 66:12-67:5, 75:16-78:17. He couldn’t say for sure whether he had
`
`even heard of alternate shared sense amplifiers or inter-block memory redundancy
`
`prior to June 1998. Id. at 75:16-78:17. The first time he had read any of the
`
`materials he considered was after he was retained in this matter. Id. at 40:4-14,
`
`42:1-18. He argued against the Petitioner’s combination of references because
`
`they allegedly did not solve the same problem as the ‘181 patent (Ex. 2004, ¶ 109)
`
`-- reasoning that was explicitly rejected in KSR. KSR, 550 U.S. at 420-21. And,
`
`as explained supra at 7-10 and infra at 17-19, in testifying that Sukegawa and
`
`Horiguchi’s 1997 article “teach away” from the proposed combination, he
`
`evidences no understanding of what a teaching away actually is.
`
`E.
`
`There is No General “Teaching Away” from the Combination of
`Sukegawa and Fujishima
`
`
`
`To underscore the ubiquity of alternate shared sense amplifiers, the Petition
`
`cited various articles describing such amplifiers, largely in the exact same manner
`
`DC01:1156335.6
`
`16
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`that the ‘181 patent describes them. Paper 1, at 12 and 23. Dr. Mazumder likewise
`
`IPR2016-01561
`
`
`
`underscored the ubiquity of such amplifiers at the time of invention. Ex. 1001, ¶¶
`
`46, 104, 139, 143, at p. 56, n.21; Ex. 2007 at 174:4-176:3, 234:3-236:14.
`
`Limestone’s statement that Petitioner has offered only “attorney argument” to
`
`support the fact that alternate shared sense amplifiers were a well-known design
`
`choice (Paper 13, at 40) is wrong.
`
`While ignoring that the cited articles disclose the shared sense amplifier
`
`scheme claimed in claim 3, Limestone attempts to use these articles to its
`
`advantage to argue that they teach that such amplifiers should not be used with
`
`“disfavored” any-to-any redundancy schemes. 4 Limestone’s argument does not
`
`save claim 3.
`
`
`
`To begin, by 1997, as shown in the 1997 Horiguchi article (Ex. 2012 at 26-
`
`27), inter-block memory replacement was accepted in the prior art. See also Ex.
`
`2007 at 139:21-143:1, 221:19-222:9. This article explicitly discloses inter-block
`
`memory replacement and removes the 1991 language quoted by Limestone
`
`
`4
`Largely, the references are silent regarding whether any-to-any redundancy
`should be used with alternate shared sense amplifiers. As the Board recognized in
`its Decision (Paper 11, at 8), Limestone essentially argues that any reference
`failing to teach the combination being asserted “teaches away” from that
`combination.
`
`DC01:1156335.6
`
`17
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`referring to such schemes as cumbersome.5 To the contrary, Horiguchi in 1997
`
`IPR2016-01561
`
`
`
`concludes:
`
`Enhancing the replacement flexibility between defective lines and
`spare lines through the flexible intra-subarray replacement or through
`inter-subarray replacement is effective for DRAMs of increased
`memory array division.
`
`Id. at 29 (emphasis added). This is in line with the inter-s
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
