UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`LIMESTONE MEMORY SYSTEMS LLC,
`
`Patent Owner.
`
`
`
`Patent No. 6,233,181
`Issue Date: May 15, 2001
`Filed: Feb. 17, 1999
`Inventor: Hideto Hidaka
`Title: SEMICONDUCTOR MEMORY DEVICE WITH IMPROVED FLEXIBLE
`REDUNDANCY SCHEME
`
`Inter Partes Review No. IPR2016-01561
`
`____________________________________________________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`

`
`IPR2016-01561: Patent Owner’s Preliminary Response
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION ..................................................................................................... 1
`
`II. RELATED MATTERS .............................................................................................. 2
`
`III. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY THE
`PETITION BECAUSE IT IS REDUNDANT TO THE PRIOR MTI
`PETITION .................................................................................................................. 5
`
`IV. SUMMARY OF THE ‘181 PATENT ..................................................................... 11
`
`A. The Inventions Disclosed in the ‘181 Patent ....................................... 11
`
`B. Level of Ordinary Skill in the Art ....................................................... 17
`
`C. Claim Interpretation ............................................................................ 18
`
`V. THE PETITION FAILS TO ESTABLISH A REASONABLE
`LIKELIHOOD THAT APPLE WILL PREVAIL ON EITHER GROUND ........... 19
`
`A. Legal Standard ..................................................................................... 20
`
`B. The Petition Fails To Establish That Claim 3 Is Obvious Over
`Sukegawa In View Of Fujishima Because It Does Not Provide
`Adequate Support For Combining The Teachings Of Fujishima
`With Sukegawa .................................................................................... 22
`
`1. Sukegawa Does Not Disclose Sense Amplifier Bands
`Located Between Memory Blocks, And Sukegawa Does
`Not Contemplate Alternative Configurations In Which
`Sense Amplifier Bands Could Be Located Between
`Memory Blocks ......................................................................... 23
`
`2. Fujishima Does Not Teach Any Method For
`Implementing Redundant Memory Cells .................................. 26
`
`3. Fujishima Teaches A Complicated Shared Sense
`Amplifier Scheme Incompatible With Sukegawa’s “Any
`To Any” Wordline Redundancy ............................................... 27
`
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`IPR2016-01561: Patent Owner’s Preliminary Response
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`4. Ancillary References Cited By The Petition Teach Away
`From The Proposed Combination ............................................. 28
`
`C. Alleged Motivations to Combine Sukegawa With Fujishima,
`As Asserted In The Petition, Are Facially Deficient .......................... 35
`
`D. The Petition Fails To Establish That Claim 5 Is Obvious Over
`Sukegawa and Fujishima In View Of Walck Because The
`Combination of Walck, Fujishima, And Sukegawa Does Not
`Teach All Elements Of The Challenged Claim .................................. 44
`
`VI. CONCLUSION ........................................................................................................ 44
`
`
`
`
`
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`
`ii
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`IPR2016-01561: Patent Owner’s Preliminary Response
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`TABLE OF AUTHORITIES
`
`Page
`
`Cases
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`Case IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12) .................................... 19
`Comaper Corp. v. Antec, Inc.,
`596 F.3d 1343 (Fed. Cir. 2010) ............................................................................ 40
`Conopco, Inc. v. Procter & Gamble Co.,
`Case IPR2014-00506 (PTAB Dec. 10, 2014) (Paper 25) ..................................7, 9
`Cuozzo Speed Techs., LLC v. Lee,
`136 S.Ct. 2131 (2016) ................................................................................... 11, 18
`Google, Inc. v. SimpleAir, Inc.,
`Case CBM2014-00170 (PTAB Jan. 22, 2015) (Paper 13) .............................. 7, 10
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................. 20
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ............................................................... 21, 36, 44
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`Case IPR2013-00324 (PTAB Nov. 21, 2013) (Paper 19) ...................................... 5
`InTouch Techs., Inc. v. VGo Comms., Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .................................................................... passim
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 20, 22
`Medtronic, Inc. v. Robert Bosch Healthcare Sys.,
`839 F.3d 1382, 2016 U.S. App. LEXIS 18855 (Fed. Cir. Oct. 20, 2016) ............ 11
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
`711 F.3d 1348 (Fed. Cir. 2013) ..................................................................... 22, 43
`Schrader-Bridgeport Int’l v. Wasica Fin. Gmbh,
`Case IPR2015-00272 (PTAB Jun. 1, 2015) (Paper 17) ......................................... 6
`Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) ............................................................................ 21
`Std. Oil Co. v. Am. Cyanamid Co.,
`774 F.2d 448 (Fed. Cir. 1985) ................................................................. 20, 21, 38
`Travelocity.com L.P. et al. v. Cronos Techs., LLC,
`Case CBM2014-00082 (PTAB Oct. 16, 2014) (Paper 12) .................................. 20
`UBE Maxwell Co., Ltd. v. Celgard, LLC,
`Case IPR2015-01511 (PTAB Jan. 7, 2016) (Paper 10) ............................... 6, 7, 10
`
`
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`iii
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`IPR2016-01561: Patent Owner’s Preliminary Response
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`Unilever, Inc. v. Procter & Gamble Co.,
`Case IPR2014-00506 (PTAB July 7, 2014) (Paper 17) .....................................6, 9
`Vivid Techs. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) .............................................................................. 18
`Wowza Media Sys., LLC v. Adobe Sys. Inc.,
`Case IPR2013-00054 (PTAB Jul. 13, 2013) (Paper 16) ...................................... 38
`ZTE Corp. v. ContentGuard Holdings Inc.,
`Case IPR2013-00454 (PTAB Sep. 25, 2013) (Paper 12) ....................................... 7
`Statutes
`35 U.S.C. § 103 ................................................................................................. 20, 21
`35 U.S.C. § 313 .......................................................................................................... 1
`35 U.S.C. § 315 .......................................................................................................... 3
`35 U.S.C. § 325 ......................................................................................................5, 7
`Regulations
`37 C.F.R. § 42.100 ................................................................................................... 18
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.108 ........................................................................................ 2, 20, 44
`37 C.F.R. § 42.6 ....................................................................................................... 19
`Other Authorities
`H.R. Rep. No. 112-98, pt. 1, at 48 (2011) .................................................................. 5
`Office Trial Practice Guide,
`77 Fed. Reg. 48,756 (Aug. 14, 2012) ................................................................... 18
`
`
`
`
`
`iv
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`IPR2016-01561: Patent Owner’s Preliminary Response
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`LIST OF EXHIBITS
`
`
`v
`
`
`
`
`
`EXHIBIT NO. TITLE
`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
`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.
`U.S. Patent No. 5,687,123 to Hidaka
`U.S. Patent No. 5,726,946 to Yamagata
`U.S. Patent No. 6,003,148 to Yamauchi
`U.S. Patent No. 6,075,743 to Barth
`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.
`Limestone Memory Sys. LLC v. Apple Inc., Case No. 8:15-cv-
`01274, Dkt. No. 52 (C.D. Cal. Jan. 12, 2016) (Order Granting
`Motions to Stay Cases Pending Inter Partes Review)
`Limestone Memory Sys. LLC v. Apple Inc., Case No. 8:15-cv-
`01274, Dkt. No. 58 (C.D. Cal. Sep. 2, 2016) (Joint Status Report)
`Micron Technology, Inc., v. Limestone Memory Systems LLC,
`Case IPR2016-00696, (PTAB Oct. 26, 2015) (Paper 1)
`
`1011
`1012
`1013
`1014
`1015
`
`1009
`
`1010
`
`1016
`
`2001
`
`2002
`
`2003
`
`

`
`IPR2016-01561: Patent Owner’s Preliminary Response
`
`I.
`
`INTRODUCTION
`
`Patent Owner Limestone Memory Systems LLC (“LMS”) respectfully
`
`submits this Preliminary Response in accord with 35 U.S.C. § 313 and 37 C.F.R.
`
`§ 42.107, responding to the Petition for Inter Partes Review (the “Petition”) filed by
`
`Apple Inc. (“Apple” or “Petitioner”) regarding claims 3 and 5 of United States Patent
`
`No. 6,233,181 (“the ‘181 patent”).1
`
`Respectfully, the Board should deny the Petition because it relies exclusively
`
`on arguments and prior art that are substantially the same as the arguments asserted
`
`previously in an IPR petition filed by Micron Technologies, Inc. (“the MTI
`
`petition”). LMS filed a preliminary response in response to the MTI petition, and the
`
`Board subsequently denied the MTI petition as to claims 3 and 5. Four months later,
`
`applying the teachings of the Board’s decision in the MTI petition, Apple filed the
`
`
`1 Apple concurrently filed another petition for inter partes review, seeking to
`
`invalidate claims of U.S. Patent No. 5,894,441 (“the ‘441 patent”). See IPR2016-
`
`01567. The ‘181 patent and the ‘441 patent are at issue in co-pending litigation
`
`between the parties, Limestone Memory Sys. LLC v. Apple Inc., 8:15-cv-01274 (C.D.
`
`Cal.) (“the Apple litigation”). The Apple litigation, along with multiple coordinated
`
`suits involving other defendants, have been stayed pending the outcome of the
`
`Board’s decisions on institution in these IPRs. (See Ex. 2001; Ex. 2002).
`
`
`
`1
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`

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`IPR2016-01561: Patent Owner’s Preliminary Response
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`instant Petition. The Petition asserts grounds of invalidity predicated on the same
`
`base patent as in the MTI petition: U.S. Patent No. 5,487,040 to Sukegawa
`
`(hereinafter “Sukegawa”).
`
`Additionally, and in the alternative, Apple has not met the standard required
`
`for institution of an inter partes review. 37 C.F.R. § 42.108(c). The Board should
`
`deny the Petition as to each claim because the Petition does not demonstrate a
`
`reasonable likelihood that either claim 3 or claim 5 of the ‘181 patent is unpatentable.
`
`Specifically, the Petition does not offer valid reasons for combining Sukegawa with
`
`any of the secondary art references asserted in the two grounds of invalidity.
`
`II. RELATED MATTERS
`
`LMS filed patent infringement lawsuits against Micron Technologies, Inc. and
`
`seven of its device-manufacturing customers on February 17, 2015 (“the MTI
`
`litigation”). Limestone Memory Sys. LLC v. Micron Tech. Inc. et al., 8:15-cv-00278
`
`(C.D. Cal.). The MTI litigation asserted five patents collectively against one or more
`
`of the defendants.2 Six months later, on August 10, 2015, LMS filed a patent
`
`infringement lawsuit against Apple Inc. (“the Apple litigation”), which is also one
`
`of MTI’s device-manufacturing customers. Limestone Memory Sys. LLC v. Apple
`
`Inc., 8:15-cv-01274 (C.D. Cal.). LMS understands that MTI, as the manufacturer of
`
`
`2 U.S. Patent Nos. 5,805,504; 5,894,441; 5,943,260; 6,233,181 and 6,697,296.
`
`
`
`2
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`

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`IPR2016-01561: Patent Owner’s Preliminary Response
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`the accused chips, is indemnifying Apple and each of the other defendants in the
`
`MTI litigation.3 The Apple litigation asserts four of the same five patents that LMS
`
`asserted previously asserted against MTI.4 LMS served Apple with a copy of the
`
`complaint in that lawsuit two days later, on August 12, 2015.
`
`Two months after LMS filed the Apple lawsuit, on October 27, 2015, MTI
`
`filed five petitions for inter partes review of the patents asserted against itself and
`
`its device-manufacturing customers (“the MTI petitions”). Cases IPR2016-00093–
`
`IPR2016-00097. The Court in the MTI litigation ordered each of the cases filed by
`
`LMS to be stayed, including the Apple litigation. (Ex. 2001.) LMS filed preliminary
`
`responses in four of those IPR cases. In decisions on institution, the Board denied
`
`MTI’s petitions wholly or in part on three of the five asserted patents.5 In the interest
`
`
`3 LMS reserves the right to assert that the Petition is time-barred under 35 U.S.C. §
`
`315(b), to the extent that evidence of these or other facts establish that Apple and
`
`Micron are in privity under that statute.
`
`4 U.S. Patent Nos. 5,805,504; 5,894,441; 6,233,181 and 6,697,296.
`
`5 The table below details the claims asserted and the current status of the claims:
`
`Patent No. Asserted
`Claim
`5,805,504 1–2
`
`Results of the MTI IPR Petitions
`
`IPR2015-00093: Board denied MTI’s
`petition and no trial was instituted.
`
`Live Asserted
`Claims
`1–2
`
`
`
`3
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`

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`IPR2016-01561: Patent Owner’s Preliminary Response
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`of quick resolution of the MTI petitions and a resumption of the stayed district court
`
`litigation, LMS disclaimed claims upon which the Board instituted trial. The Board
`
`entered adverse judgments against certain claims in case nos. IPR2015-00095, IPR
`
`2015-00096, and 2015-00097 on August 3, 2016.
`
`On August 12, 2016, exactly one year after being served with the complaint
`
`in the Apple lawsuit, Apple filed the instant Petition along with a separate petition
`
`asserting invalidity of claims 6–12, 14, and 15 of U.S. Patent No. 5,894,441 (“the
`
`‘441 patent”) (see IPR2016-01567). The MTI litigation and the Apple litigation
`
`remain stayed, meaning that the MTI litigation and the Apple litigation has been at
`
`a standstill since MTI filed its petitions for IPR in October, 2015. (Ex. 2002.) By
`
`
`5,894,441 6–12,
`IPR2015-00094: Board denied MTI’s
`14, and
`petition as to claims 6–15. No trial was
`15
`instituted.
`5,943,260 1–4
`IPR2015-00095: Board instituted trial on
`claims 1–4. LMS subsequently
`disclaimed all claims of the ‘260 patent
`and accepted adverse judgment.
`IPR2015-00096: Board denied MTI’s
`petition as to claims 3 and 5 and
`instituted trial on claims 1–2, 4, and 6.
`LMS subsequently disclaimed claims 1–
`2, 4, and 6 and accepted adverse
`judgment as to those claims.
`IPR2015-00097: Board instituted trial on
`claims 17–20 only. LMS subsequently
`disclaimed claims 17–20 and accepted
`adverse judgment as to those claims.
`
`6,233,181 1–4, and
`6
`
`6,697,296 13–15,
`and 17–
`19
`
`
`
`6–12, 14, and
`15
`
`–
`
`3
`
`13–15
`
`
`
`4
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`IPR2016-01561: Patent Owner’s Preliminary Response
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`waiting until the last possible day to file the Petition, Apple has maximized the delay
`
`both for the MTI litigation and the Apple litigation.
`
`III. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`THE PETITION BECAUSE IT IS REDUNDANT TO THE PRIOR MTI
`PETITION
`
`Institution of inter partes review is discretionary, and the Board’s decision to
`
`do so “may take into account whether, and reject the petition or request because, the
`
`same or substantially the same prior art or arguments previously were presented to
`
`the Office.” 35 U.S.C. § 325(d)6 (emphasis added); Intelligent Bio-Systems, Inc. v.
`
`Illumina Cambridge Ltd., Case IPR2013-00324, slip op. at 4–5 (PTAB Nov. 21,
`
`2013) (Paper 19). In considering whether to exercise its discretion, the Board should
`
`consider the interests of patent owners, who seek to avoid harassment and enjoy
`
`quiet title to their rights. See H.R. Rep. No. 112-98, pt. 1, at 48 (2011) (AIA
`
`proceedings “are not to be used as tools for harassment or a means to prevent market
`
`entry through repeated litigation and administrative attacks on the validity of a
`
`
`6 Although this provision appears in Chapter 32 of the Patent Act, which is directed
`
`to post-grant reviews, by its terms it is applicable also to inter partes review
`
`proceedings under Chapter 31. 35 U.S.C. § 325(d) (“In determining whether to
`
`institute or order a proceeding under . . . chapter 31, the director may take into
`
`account . . .”) (emphasis added).
`
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`5
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`IPR2016-01561: Patent Owner’s Preliminary Response
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`patent. Doing so would frustrate the purpose of the section as providing a quick and
`
`cost effective alternative to litigation.”). The burden is on the Petitioner to identify
`
`differences between references cited in previous petitions and the references cited in
`
`a new petition. See Schrader-Bridgeport Int’l v. Wasica Fin. Gmbh, Case IPR2015-
`
`00272, slip op. at 4–5 (PTAB Jun. 1, 2015) (Paper 17). Here, the Petition does not
`
`include any argument regarding the differences between the references cited in the
`
`‘096 petition and the references cited in the Petition.
`
`In determining whether prior art and arguments are “substantially the same”
`
`the Board evaluates whether the prior art or arguments will require a materially
`
`different analysis. UBE Maxwell Co., Ltd. v. Celgard, LLC, Case IPR2015-01511,
`
`slip op. at 9 (PTAB Jan. 7, 2016) (Paper 10) (“the only difference in argument
`
`indicated by [Petitioner] addresses an alleged deficiency in [the previously asserted
`
`art] that we did not consider to be a deficiency”). In particular, grounds based on
`
`obviousness arguments are substantially the same even when petitioner replaces one
`
`reference for another that discloses the allegedly missing feature. Unilever, Inc. v.
`
`Procter & Gamble Co., Case IPR2014-00506, slip op. at 7 (PTAB July 7, 2014)
`
`(Paper 17) (“In both petitions, Unilever advances “substantially the same”
`
`argument—namely, that claim 13 would have been obvious over Kanebo in view of
`
`other prior art disclosing ketoconazole.”)
`
`
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`6
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`IPR2016-01561: Patent Owner’s Preliminary Response
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`Arguments and prior art are also substantially the same when petitioners use
`
`prior board decisions as a roadmap for buttressing their previous arguments.
`
`Conopco, Inc. v. Procter & Gamble Co., Case IPR2014-00506, slip op. at 4–5
`
`(PTAB Dec. 10, 2014) (Paper 25); see also UBE Maxwell, Case IPR2015-01511,
`
`slip op. at 11 (“Merely bolstering previously-made arguments that the Board found
`
`lacking does not change the argument sufficiently for us to consider the arguments
`
`not “substantially the same” for the purposes of § 325(d).”). A later petition should
`
`be denied if it merely remedies deficiencies identified by the Board in prior decisions
`
`denying institution. Google, Inc. v. SimpleAir, Inc., Case CBM2014-00170, slip op.
`
`at 22–23 (PTAB Jan. 22, 2015) (Paper 13); see also ZTE Corp. v. ContentGuard
`
`Holdings Inc., Case IPR2013-00454, slip op. at 6 (PTAB Sep. 25, 2013) (Paper 12).
`
`The prior art and arguments in the instant Petition are substantially the same
`
`as the prior art and arguments presented in an earlier petition. As discussed above,
`
`MTI filed multiple petitions including a petition requesting inter partes review of
`
`claims 1–6 of the ‘181 patent. (Ex. 2003, IPR2016-00096 Pet. at 4–5 (hereinafter
`
`“the ‘096 petition”).) Relevant to this Petition, Ground #2 of the ‘096 petition
`
`asserted that claim 3 of the ‘181 patent is invalid as obvious over U.S. Patent No.
`
`5,487,040 to Sukegawa (hereinafter “Sukegawa”) in view of excerpts from Betty
`
`Prince, Semiconductor Memories (2d ed. 1992) (“Prince”). Ground #4 of the ‘096
`
`
`
`7
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`IPR2016-01561: Patent Owner’s Preliminary Response
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`petition asserted that claim 5 of the ‘181 patent is invalid as obvious over Sukegawa,
`
`in further view of U.S. Patent No. 4,967,397 to Walck (hereinafter “Walck”).
`
`In the ‘096 petition, MTI argued that “in view of Prince, it would have been
`
`obvious to a person of ordinary skill in the [art that] sense amplifier bands of
`
`Sukegawa would be between the blocks.” (Ex. 2003, IPR2016-00096 Pet. at 41.)
`
`MTI further argued that “Prince further discloses that a sense amplifier can be shared
`
`between adjacent memory blocks.” (Id. at 43.)
`
`The Board,
`
`in denying
`
`the ‘096 petition, disagreed with MTI’s
`
`characterization of Prince. (Ex. 1015 at 8 (“Figure 6.25(b) of Prince does not show
`
`the boundaries of the memory blocks, and, thus, does not show whether the sense
`
`amplifier is shared by adjacent memory blocks.”).) In accord with this finding, the
`
`Board denied the ‘096 petition as to both claim 3 and claim 5. (Id. at 9.)
`
`Just like the ‘096 petition, the instant Petition points to Sukegawa as the
`
`primary reference.7 (Pet. at 39–52.) And also like the ‘096 petition, the instant
`
`
`7 Claim 3 is dependent upon claim 2, which in turn is dependent upon claim 1. The
`
`Petition cites Sukegawa for all elements of claims 1 and 2 and relies upon Fujishima
`
`for additional elements recited in claim 3. (Pet. at 39–52 (elements of claims 1 and
`
`2), 53–63 (elements of claim3).) Claim 5 is dependent upon claim 3. The Petition
`
`
`
`8
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`IPR2016-01561: Patent Owner’s Preliminary Response
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`Petition argues that a second reference, now U.S. Patent No. 5,267,214 to Fujishima
`
`(hereinafter “Fujishima”) instead of Prince, “discloses a sense amplifier band located
`
`and shared between memory blocks.” (Pet. at 53.)
`
`The Petition has not done anything more than replace Prince with Fujishima
`
`in a way that is substantially the same and should therefore be denied. See Unilever,
`
`Case IPR2014-00506, slip op. at 7. As discussed further below, the Petition clearly
`
`uses the Board’s opinion as a roadmap for its arguments, and this evidences the
`
`substantial sameness of prior art and arguments in this Petition and the ‘096 petition.
`
`See Conopco, Case IPR2014-00506, slip op. at 4.
`
`Indeed, to the extent the prior art and arguments in the Petition differ from the
`
`‘096 petition, they merely attempt to bolster those prior arguments in view of the
`
`Board’s decision on the ‘096 petition; accordingly, the Petition should be denied.
`
`Four months after the Board denied institution of claims 3 and 5 based on the ‘096
`
`petition, Apple filed the instant Petition with two asserted grounds of invalidity:
`
`claim 3 of the ‘181 patent is alleged to be invalid as obvious over Sukegawa and
`
`Fujishima, and claim 5 of the ‘181 patent is alleged to be invalid as obvious over
`
`Sukegawa, Fujishima, and Walck. Fujishima is clearly intended to improve upon the
`
`
`cites a combination of Sukegawa, Fujishima, and Walck as disclosing the additional
`
`elements recited in claim 5. (Pet. at 64–71.)
`
`
`
`9
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`IPR2016-01561: Patent Owner’s Preliminary Response
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`disclosures in Prince, which was held by the Board not to disclose the claimed shared
`
`sense amplifiers. (Ex. 1015 at 7–8.) Further, in a not-so-subtle attempt to bolster the
`
`arguments from the ‘096 petition, the instant Petition includes an entire section
`
`dedicated to “State of the Art as of 1997: DRAM and Shared Sense Amplifiers.”
`
`(Pet. at 7–13.) This serial approach to IPR petitions is disfavored as a waste of the
`
`Board’s resources, is a form of harassment of patent owners, serves to unnecessarily
`
`delay underlying district court litigation (as is clearly the case here), and is a factor
`
`that should strongly weigh in favor of denying the Petition. See, e.g., Google, Case
`
`CBM2014-00170, slip op. at 22–23.
`
`The Board has exercised its discretion to deny duplicative petitions based on
`
`a variety of additional extenuating factors, as discussed in UBE Maxwell, Case
`
`IPR2015-01511, slip op. at 12–14. Although Apple was neither a party nor a real
`
`party in interest in the ‘096 petition, Apple clearly stood to benefit from the ‘096
`
`petition. Apple manufactures devices that incorporate chips from MTI. Both Apple
`
`and MTI are part of the same coordinated district court cases, making MTI’s desire
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`to invalidate the asserted claims overlap with Apple’s. In fact, the ‘096 petition was
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`an attempt on behalf of all similarly situated defendants to invalidate the asserted
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`claims. The present petition is nothing more than a further attempt to achieve that
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`goal, by a party whose interests were so well-addressed by the ‘096 petition that
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`none of the remaining defendants filed a similar petition for inter partes review. The
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`Board denied institution of the ‘096 petition, a decision that is unappealable and
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`final. Medtronic, Inc. v. Robert Bosch Healthcare Sys., 839 F.3d 1382, ____, 2016
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`U.S. App. LEXIS 18855, at *4–5 (Fed. Cir. Oct. 20, 2016) (citing Cuozzo Speed
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`Techs., LLC v. Lee, 136 S.Ct. 2131 (2016)). These facts further weigh against the
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`Petition.
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`The fact that Apple waited until the last possible day to file the Petition should
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`not weigh against denying the Petition as duplicative. If Apple was dissatisfied with
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`the ‘096 petition it could have filed its Petition after reviewing LMS’s preliminary
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`response and had nearly six months to re-file if necessary. Thus, it should not weigh
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`against LMS that Apple will be statutorily barred from re-filing the Petition. The
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`fact that one or more additional extenuating factors are not present here is not reason
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`to allow this duplicative Petition.
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`IV. SUMMARY OF THE ‘181 PATENT
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`A.
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`The Inventions Disclosed in the ‘181 Patent
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`The ‘181 patent discloses a scheme for providing redundancy circuits within
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`semiconductor memory devices in which the memory array is divided into a plurality
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`of memory blocks and for providing a power supply circuit corresponding to each
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`block. (Ex. 1003 at 1:6–13.) The ‘181 patent explains that “logical independence”
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`of the plurality of memory blocks is a factor affecting efficient replacement of
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`defective wordlines across memory blocks. (Id. at 2:51–3:8 (“M/m is the number of
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`memory arrays which are logically independent from one another”).) Describing this
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`further, the ‘181 patent explains that “in FIG. 53, if a normal word line is
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`simultaneously selected in memory arrays MA0 and MA2, memory arrays MA0 and
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`MA2 are not logically independent from each other.” (Id. at 2:67–3:3.)
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`According to the ‘181 patent, the idea of logical independence is important
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`because, when components (such as sense amplifiers) are shared across memory
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`blocks, control of the memory block needs to be more complicated to isolate the
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`desired memory cells (whether redundant or normal) in a given memory block. The
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`following passage illustrates the problem:
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`In the previously mentioned document, a defective row is repaired by
`replacing the defective row with a spare word line provided within a
`memory array including that defective row. Thus, a spare word line
`must be provided for each of memory arrays, and the spare word lines
`are not efficiently utilized. If a defective normal word line in one
`memory array is replaced with a spare word line in another memory
`array, the control of the memory array related circuits will be
`complicated, and therefore such arrangement must be avoided and is
`not considered at all.
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`(Id. at 3:58–67 (referring to “A Flexible Redundancy Technique for High-Density
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`DRAM’s,” Horiguchi et al., IEEE Journal of Solid-State Circuits, Vol. 26, No. 1,
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`January 1991, pp. 12 to 17)8, cited at 1:24–26 and described throughout the
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`“Description of the Background Art”).) The ‘181 patent further describes similar
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`problems that arise when controlling power supplies for the memory array:
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`As previously described, when a defective row/column is repaired
`using a spare decoder, a row/column to be selected is determined after
`determining if a spare is to be used/not used. In this case, as shown in
`FIG. 53, if redundancy replacement is performed within the same block,
`a corresponding power supply circuit (a circuit transmitting any of the
`power supply voltage and ground voltage) can be selected in response
`to an address signal to control the connection. If, however, a spare
`row/column is used for repairing a defective cell in another memory
`block in the flexible redundancy arrangement, a memory block
`including a memory cell to be driven into a selected state must be
`specified according to a spare determination result, the power source
`voltage (power supply voltage and ground voltage) cannot be driven
`into a stable state at a high speed, and high speed accessing operations
`cannot be implemented.
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`(Id. 6:25–40.) In view of these problems identified in the art, the ‘181 patent
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`describes its objects in part as follows:
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`Another object of the invention is to provide an array divided
`semiconductor memory device including a redundancy circuit, which
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`8 The Petition cites this same reference as Ex. 1009, and it is discussed further below.
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`permits a defective normal line to be accurately repaired without
`erroneous operation.
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`(Id. at 6:48–51 (emphasis added).)
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`A further object of the present invention is to provide an array-divided
`semiconductor memory device including a redundancy circuit which
`permits the spare line use efficiency to be improved and a power supply
`circuit which permits accessing time and power consumption to be
`reduced.
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`(Id. at 6:56–61 (emphasis added).)
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`In view of the problems disclosed in the ‘181 patent and the objects of the
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`invention, the ‘181 patent discloses a number of features. When arranged together,
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`these features improve the replacement efficiency of spare word lines, thus reducing
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`the overall number of circuits on the chip. For example, the embodiment illustrated
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`in figure 9 discloses shared row decoders, which reduces the overall number of such
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`row decoders.
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`In the configuration shown in FIG. 9, spare array SPX# is provided in
`common to normal memory sub-arrays MA#0 to MA#m. As a result, if
`defective rows concentrate in one normal memory sub-array, spare
`word lines included in spare array SPX# can be used for repairing by
`replacement, and therefore the yields of the products can be improved.
`A spare row decoder is shared among a plurality of normal memory
`sub-arrays (row blocks) and therefore the number of spare decoders can
`be reduced.
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`(Id. at 16:31–39.)
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`
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`(Id. at FIG. 9.) According to the ‘181 patent, the advantage in this arrangement lies
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`in the increased efficiency of using spare word lines because they are shared among
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`all of the normal memory blocks. (Id. at 16:65–17:4.)
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`In another example of a feature that adds to the efficient use of chip space, the
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`‘181 patent discloses the use of shared sense amplifier bands.
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`Sense amplifier bands SAB1 to SABm are provided between memory
`sub-arrays adjacent to one another in the column direction. A sense
`amplifier band SAB0 is provided outside normal memory sub-array
`MA#0-0, and a sense amplifier band SABm+l is provided adjacent to
`normal memory sub-array MA#l-N.
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`These sense amplifier bands SAB0 to SABm+l have an alternate shared
`sense ampl