UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY INC.,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-00238
`Patent 6,157,589
`____________
`
`PATENT OWNER POLARIS INNOVATIONS LTD.’S
`PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF UNITED STATES PATENT NO. 6,157,589
`PURSUANT TO 35 U.S.C. § 313, 37 C.F.R. § 42.107
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY INC.,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-00238
`Patent 6,157,589
`____________
`
`PATENT OWNER POLARIS INNOVATIONS LTD.’S
`PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF UNITED STATES PATENT NO. 6,157,589
`PURSUANT TO 35 U.S.C. § 313, 37 C.F.R. § 42.107
`
`
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`
`
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`I.
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`II.
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`Case IPR2017-00238
`Patent 6,157,589
`Attorney Docket No. 160831-006USIPR
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................ 1
`
`THE PETITION’S “CLAIM CONSTRUCTIONS” UNLAWFULLY REST
`ON PRELIMINARY INFRINGEMENT CONTENTIONS. ......................... 6
`
`A. Petitioner Fails To Construe The Claims Or Even To Substantiate Its
`Positions Regarding What They Must Implicitly Cover “In Light Of
`The Specification,” As Is Its Burden. .................................................. 13
`
`B. The Petition Should Be Rejected Because Petitioner Provides No
`Explanation For Why The “Claim Construction” Positions It Disagrees
`With In Litigation Are Necessarily Correct Under BRI. ...................... 16
`
`C. Patent Owner’s Preliminary Infringement Contentions Are Not A
`Lawful Foundation For Claim Construction. ....................................... 19
`
`D. Even If It Were Appropriate To Rely On The Preliminary Infringement
`Contentions, Petitioner Misconstrues Them. ....................................... 26
`
`E. The Petition Fails To Identify A Corresponding Structure For Two
`Limitations It Maintains Are Means-Plus-Function. ............................ 32
`
`III. THE PETITION FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD OF PREVAILING ON THE MERITS. .............................. 33
`
`A. Petitioner Fails To Meet Its Burden To Show That The Claims Are
`Obvious In View Of Merritt Alone (Ground 1). .................................. 36
`
`1. Petitioner Fails To Show “An Initialization Circuit” In Merritt........ 36
`
`2. Petitioner Fails To Show A “Supply Voltage Stable Signal” Supplied
`“Via The Initialization Circuit” “Once A Supply Voltage Has Been
`Stabilized” In Merritt. ...................................................................... 40
`
`3. Petitioner Fails To Show An “Enable Circuit” In Merritt. ................ 44
`
`4. Merritt Teaches Away From The ’589 Patent. ................................. 48
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`B. Petitioner Fails To Show That The Claims Are Rendered Obvious In
`View Of Nagai Alone (Ground 3). ...................................................... 50
`
`1. Petitioner Fails To Show An “Initialization Circuit” In Nagai. ........ 51
`
`2. Petitioner Fails To Show An “Initialization Circuit” Receiving
`“Further Command Signals” In Nagai. ............................................ 52
`
`3. Petitioner Fails To Show An “Enable Circuit,” Much Less An
`“Enable Circuit” In The “Initialization Circuit,” In Nagai................ 55
`
`4. Nagai Teaches Away from the ’589 Patent. ..................................... 57
`
`C. Petitioner Fails To Show That The Claims Are Obvious In View Of
`The Combination Of Merritt And Nagai (Ground 2). .......................... 59
`
`D. Petitioner Wholly Fails To Comply With 37 C.F.R. § 42.104(b)(4). ... 63
`
`IV. PETITIONER PROPOSES REDUNDANT GROUNDS FOR REVIEW
`AND DOES NOT ARGUE OTHERWISE. ................................................ 65
`
`V.
`
`CONCLUSION .......................................................................................... 68
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`TABLE OF AUTHORITIES
`
`
`
`COURT DECISIONS
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) .........................................................................48
`
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) .........................................................................16
`
`In re Cortright,
`165 F.3d 1353 (Fed. Cir. 1999) .........................................................................16
`
`In re Donaldson Co.,
`16 F.3d 1189 (Fed. Cir. 1994) ...........................................................................32
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ...........................................................................48
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) .........................................................................16
`
`In re Nuvasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) ................................................................... 44, 61
`
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ...........................................................................39
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .........................................................................17
`
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ..........................................................................................61
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .........................................................................15
`
`Neomagic Corp. v. Trident Microsystems Inc.,
`287 F.3d 1065 (Fed. Cir. 2002) ..................................................................... 3, 25
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`Par Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) .........................................................................60
`
`PPC Broadband, Inc. v. Corning Optical Communs. RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) ..................................................................... 15, 16
`
`Ricoh Co., Ltd. v. Quanta Computer Inc.,
`550 F.3d 1325 (Fed. Cir. 2008) .........................................................................48
`
`Samsung SDI Co. v. Matsushita Elec. Indus. Co.,
`2006 U.S. Dist. LEXIS 97060 (C.D. Cal Jul. 10, 2006).....................................22
`
`SIBIA Neurosciences, Inc. v. Cadus Pharmaceutical Corp.,
`225 F.3d 1349 (Fed. Cir. 2000) .........................................................................39
`
`ADMINISTRATIVE DECISIONS
`
`Apex Medical Corp. v. Resmed Ltd.,
`IPR2013-00516 Paper 8 (PTAB Feb. 20, 2014) ................................................26
`
`Apple, Inc. v. ContentGuard Holdings, Inc.,
`IPR2015-00358, Paper 9 (PTAB Jul. 2, 2015) ..................................................64
`
`Apple, Inc. v. Personal Web Technologies, LLC,
`IPR2013-00596, Paper 9 (PTAB Mar. 26, 2014) ...............................................67
`
`Baxter Healthcare Corp. v. Millenium Biologix, LLC,
`IPR2013-00590, Paper 9 (PTAB Mar. 21, 2014) ...............................................66
`
`Canon Inc. v. Intellectual Ventures I, LLC,
`IPR2014-00535 to -00537, Paper 9 (PTAB Sept. 24, 2014) ..............................67
`
`Canon Inc. v. Intellectual Ventures II LLC,
`IPR2014-00631, Paper 9 (PTAB Sept. 9, 2014) ................................................20
`
`CareFusion Corp., v. Baxter Int’l, Inc.,
`IPR2016-01456, Paper 9 (PTAB Feb. 6, 2017) ........................................... 18, 19
`
`Dish Network L.L.C. v. TQ Beta, LLC,
`IPR2015-01756, Paper 12 (PTAB Feb. 19, 2016) .............................................21
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`E.I. Du Pont v. Monsanto Tech. LLC,
`IPR2014-00332, Paper 16 (PTAB Jul. 11, 2014) ..................................... 3, 20, 26
`
`Gracenote, Inc. v. Iceberg Industries, LLC,
`IPR2013-00551, Paper 6 (PTAB Feb. 28, 2014) ...............................................33
`
`InfoBionic, Inc. v. Braemer Mfg., LLC,
`IPR2015-01704, Paper 11 (PTAB Feb. 16, 2016) ......................................... 2, 20
`
`Intellectual Ventures Management, LLC v. Xilinx, Inc.,
`IPR2012-00019, Paper 13 (PTAB Feb. 12, 2013) .............................................66
`
`Kingbright v. Cree,
`IPR2015-00744, Paper 8 (PTAB Sept. 9, 2015) ...................................... 5, 24, 64
`
`Luminara Worldwide v. Shenzhen Liowin Elecs. Co.,
`IPR2015-01183, Paper 8 (PTAB Nov. 5, 2015) ................................................64
`
`Mentor Graphics v. Synopsis,
`IPR2014-00287, Paper 17 (PTAB Aug. 1, 2014) ..............................................20
`
`OpenTV, Inc. v. Cisco Systems, Inc.,
`IPR2013-00330, Paper 9 (PTAB Nov. 29, 2013) ..............................................61
`
`Samsung Display Corp. v. Gold Charm,
`IPR2015-01452, Paper 12 (PTAB Nov. 13, 2015) ............................................17
`
`Samsung Electronics Co., Ltd. v. Cellular Communications Equipment, LLC,
`IPR2015-01927, Paper 8 (PTAB Mar. 15, 2016) ...............................................21
`
`Sony Computer Entertainment of America v. Grobler,
`IPR2013-00076, Paper 12 (PTAB Jul. 22, 2013) ...............................................21
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`IPR2012-00041, Paper 16 (PTAB Feb. 22, 2013) .............................................17
`
`Target Corp. v. Destination Maternity Corp.,
`IPR2013-00531, Paper 10 (PTAB Feb. 14, 2014) .............................................23
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`Toyota Motor Corp. v. American Vehicular Sciences,
`IPR2013-00424, Paper 16 (PTAB Jan. 14, 2014) .................................... 2, 21, 67
`
`Travelocity.com, L.P. v. Cronos Technologies, LLC.,
`CBM2014-00082, Paper 10 (PTAB Sept. 15, 2014) ..........................................21
`
`STATUTES
`
`35 U.S.C. § 311(b) .................................................................................... 23, 24, 25
`
`35 U.S.C. § 314(a). ...............................................................................................33
`
`REGULATIONS
`
`37 C.F.R. § 42.100(b) ....................................................................................... 1, 11
`
`37 C.F.R. § 42.104(b)(3) ................................................................................ passim
`
`37 C.F.R. § 42.104(b)(4) ....................................................................... 6, 24, 35, 64
`
`MPEP § 2111 ........................................................................................................16
`
`MPEP § 2111.01 .................................................................................................... 7
`
`MPEP § 2143(I)(A)(1) ..........................................................................................60
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`Exhibit List
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`2001
`
`JEDEC Online Dictionary Definition of “CKE”
`
`2002
`
`Excerpt from Kingston’s Claim Constructions
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`I.
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`INTRODUCTION1
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`The Petition founders on the most basic tasks of the IPR process. With only
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`two claims at issue, Petitioner contends that eight separate limitations require
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`construction—but then fails to provide the Board with those constructions.
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`Though such constructions must be “in light of the specification,” 37 C.F.R.
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`§ 42.100(b), Petitioner, in the deficient discussion it does provide, fails to cite
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`anything in the specification. In the end, the Board is never informed by Petitioner
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`what any of the eight limitations in question means.
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`Instead, Petitioner provides the Board with a conclusory recitation that each
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`limitation is met because one of the cited references includes some structure or
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`signal that Patent Owner cited in its preliminary infringement contentions, in
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`relation to accused products, in the district court litigation. Pet. at 11. (“While
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`Petitioner disagrees with Patent Owner’s assertions, Petitioner submits that the
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`breadth of these claims, under the broadest reasonable interpretation for purposes
`
`
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`1 Patent owner presents in this Petition reasons that are more than sufficient
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`to deny institution. If, however, the Board determines that institution would be
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`appropriate, Patent Owner reserves the right to raise additional arguments, and
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`additional supporting evidence and law in support of existing arguments.
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`of IPR, must at least encompass the same functionalities identified by Patent
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`Owner”). This conclusory approach is the entire basis for the Petition’s argument
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`that various limitations are met by the prior art.
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`The Petition does not provide any support for the proposition that
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`infringement contentions (“preliminary” ones, at that) are a legally satisfactory
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`foundation for claim construction. For good reason. They are not.
`
`The Board has repeatedly recognized
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`that preliminary
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`infringement
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`contentions are not useful in construing claims. See, e.g., InfoBionic, Inc. v.
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`Braemer Mfg., LLC, IPR2015-01704, Paper 11 at 6 (PTAB Feb. 16, 2016)
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`(denying institution) (“We also do not find persuasive Petitioner’s argument, based
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`on extrinsic evidence, that Patent Owner’s position in related litigations should
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`influence our determination of the proper construction in this forum.”); Toyota
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`Motor Corp. v. American Vehicular Sciences, IPR2013-00424, Paper 16 at 23
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`(PTAB Jan. 14, 2014) (“We are not persuaded by [Petitioner’s] reliance on
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`extrinsic evidence from [Patent Owner’s] infringement contentions…”). Section
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`II.B, infra, collects eight more cases in which various Board panels have reached
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`the same conclusion.
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`Precedent aside, Petitioner’s position also fails as a matter of logic.
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`Petitioner says it “disagrees” with Patent Owner’s position in litigation on the
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`meaning of each of the eight limitations. Yet it simultaneously says each of these
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`positions is not merely correct, but necessarily so, under BRI. E.g., Pet. at 11.
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`Petitioner does not tell the Board why or how it disagrees with Patent Owner’s
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`preliminary litigation positions under Phillips. Nor does Petitioner explain why or
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`how a different result would, or even could, be obtained under BRI. Claims
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`certainly are sometimes construed differently in court and before the Board. But
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`how, and in what ways, for these limitations? Petitioner only offers a conclusion,
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`and no reasoning.
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`There is still another problem. “It is well-settled that claims may not be
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`construed by reference to the accused device.” Neomagic Corp. v. Trident
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`Microsystems Inc., 287 F.3d 1065, 1074 (Fed. Cir. 2002). Infringement
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`contentions are a limitation-by-limitation assessment based on preliminary
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`information of how accused products are practicing the claimed methods. By
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`relying on these allegations to the exclusion of intrinsic evidence, Petitioner is
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`conducting claim construction by reference to the accused device. The Board’s
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`reviewing Court does not countenance doing so. See id. Neither does the Board.
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`See E.I. Du Pont v. Monsanto, IPR2014-00332, Paper 16 at 6-7 (PTAB Jul. 11,
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`2014) (denying institution) (noting “that construing a claim by reference to an
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`accused device is inappropriate”).
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`Even if we were to assume that conclusory references to preliminary
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`
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`infringement contentions by physical products in a different forum under different
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`standards could satisfy Petitioner’s burdens in IPR, Petitioner still failed to apply
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`these contentions in conformity with basic legal principles, on the contentions’
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`own terms. The preliminary infringement contentions provide a cohesive
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`description of how, it is contended, the accused devices actually practice the
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`limitations of the claimed methods. Petitioner, however, does not treat the
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`infringement contentions as a cohesive description of a process. Petitioner instead
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`plucks isolated elements from these contentions, one by one, and then scans the
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`prior art for mention of various structures and signals with similar names to those
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`of the actual structures and signals said to appear in the actual products. That is
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`not nearly enough. The accused products, to infringe, must be shown to not only
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`have structures and signals corresponding to those recited in the claims, but to
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`meet the recited steps of the claimed methods.
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`Petitioner ignores this requirement. Even if Petitioner’s reference to these
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`elements with similar monikers were sufficient to demonstrate that these elements
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`were the same in the accused products and the cited references, which they are not,
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`Petitioner never demonstrates that the references disclose those structures and
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`signals actually performing the recited steps of the method claims. A description
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`of such structures in the references, even if it were an admission of their existence
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`in the prior art, would not show the use of those structures in the manner described
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`and claimed. See, e.g., Kingbright v. Cree, IPR2015-00744, Paper 8 at 9 (PTAB
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`Sept. 9, 2015) (denying institution) (“[W]e agree with Patent Owner that the
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`portion of the Specification relied upon … at most, constitutes an admission of
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`the existence of certain Lumogen® dyes rather than an admission of the use of
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`those dyes in the manner described.”).
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`The Petition’s claim construction woes are not over. Its Grounds also
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`founder on the claim limitations that it does not address. In litigation, Petitioner
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`insists that the key limitations “initialization circuit” and “enable circuit” are
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`means-plus-function limitations. Petitioner ignores that position here, but fails to
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`explain why, or even notify the Board of its inconsistent litigation position. At a
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`minimum, Petitioner should have either explained why it does not believe these are
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`means-plus-function limitations or identified the corresponding structures in the
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`specification. It has an obligation to do one of these, under the express terms of 37
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`C.F.R. § 42.104(b)(3). By doing neither, Petitioner defaulted on its obligation to
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`explain how the claims are to be construed under its own arguments. The Board
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`has rejected over a dozen petitions for failing to identify corresponding structures
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`for so-called “means-plus-function” terms, and should do so here.
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`The Petition commits at least one more basic error. It persistently, and
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`
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`unusually blatantly, fails to “specify where each element of the claim is found in
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`the prior art patents.” 37 C.F.R. § 42.104(b)(4). Sure enough, there is good reason
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`to be so vague. Petitioner’s two cited references do not disclose the claimed
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`method described by the ’589 Patent, or even the most elementary structures
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`necessary to perform it. As just two of many examples, the Petition fails to
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`identify clearly and consistently anything in either Merritt or Nagai that correspond
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`to either the “initialization circuit” or the “enable circuit” recited in the challenged
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`Claims. For all these reasons, Petitioner has failed to demonstrate a reasonable
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`likelihood of prevailing on the merits.
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`The Petition should be denied.
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`II. THE PETITION’S “CLAIM CONSTRUCTIONS” UNLAWFULLY
`REST ON PRELIMINARY INFRINGEMENT CONTENTIONS.
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`Petitioner’s arguments here rest overwhelmingly upon claim construction.
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`Petitioner proposes construing nearly every limitation in both claims-at-issue.
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`Below is a reproduction of the two challenged Claims (Claims 11 and 12), with
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`highlighting showing the portions Petitioner proposes to construe, which comprise
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`a remarkably large fraction of the language of the claims:
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`See Pet. at 12, 16, 17, 21, 26. Ironically, however, while the Petition overflows
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`with terms it says need to be construed, it is devoid of proper claim construction.
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`A focal point of claim construction is, of course, the patent specification.
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`See, e.g., MPEP § 2111.01 (“[T]he best source for determining the meaning of a
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`claim term is the specification—the greatest clarity is obtained when the
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`specification serves as a glossary for the claim terms.”). Remarkably, Petitioner
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`cites nothing in the specification or its prosecution in support of any of its claim
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`construction positions. Instead, Petitioner relies exclusively on Patent Owner’s
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`district court preliminary
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`infringement contentions (“PICs”)—with which
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`Petitioner insists that it disagrees:
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`Petitioner submits, for purposes of this IPR only, that the broadest
`reasonable interpretation should govern the meaning of the claim
`terms. Moreover, Patent Owner has asserted in district court that the
`meaning of certain claim terms is broad enough to encompass certain
`functionalities. See generally Ex. 1008. While Petitioner disagrees
`with Patent Owner’s assertions, Petitioner submits that the breadth of
`these claims, under the broadest reasonable interpretation for purposes
`of IPR, must at least encompass the same functionalities identified by
`Patent Owner (as described in greater detail below).
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`Pet. at 11.2 Petitioner’s promise at the very end of this sentence—namely, that the
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`Petition will show in detail how and why the claims must encompass the
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`“functionalities” that Patent Owner’s contentions identified in the accused
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`products—is not kept.
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`Petitioner, thus, tells the Board that the very interpretations that Petitioner
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`finds meritless and unsupported in litigation are now, here, entirely appropriate
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`claim construction because “BRI” now applies. This approach makes no sense.
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`One cannot reach such a conclusion without ascertaining how and why the change
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`in legal standards between the district court and the Board caused a 180-degree
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`shift in the merits of Patent Owner’s purported claim construction positions, from
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`2 All emphases are added unless otherwise stated.
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`meritless to necessarily correct. Petitioner never explains its conclusion.
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`Petitioner does not say, for any of these limitations, why Petitioner disagrees with
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`Patent Owner’s litigation position. Nor does Petitioner ever explain to the Board
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`how BRI resolves any of these issues.
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`For every term Petitioner says must be construed, but does not construe, in
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`the Petition, Petitioner reiterates its sweeping disagreement with Patent Owner’s
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`PICs, and simultaneously asserts that, under the BRI standard, Patent Owner’s
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`position must nonetheless be correct. Again and again, the Petition returns to this
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`assertion:
`
`Petitioner disagrees that the preamble should have this construction
`under the narrower claim construction standard in district court.
`However, given Patent Owner’s assertions and
`the broadest
`reasonable interpretation of this claim limitation in the IPR context,
`the preamble must be satisfied through the presence of a DRAM
`controller, that controls the switching-on operation of the DRAM and
`its circuit components.
`
`Pet. at 12, see also, e.g., id. at 16 (same, as to “supply voltage stable signal”); 21
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`(same, as to “enable signal,” “further command signals” and “unlatching”
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`elements); 26 (same, as to “preparation command signal for world line activation”
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`and “loading configuration register command signal” limitations).
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`Petitioner’s expert parrots this same rationale again and again, without any
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`
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`explanation of why Patent Owner’s contentions are supposedly incorrect under
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`district court standards, why they are supposedly correct under BRI standards, or
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`how these simultaneous assertions can be reconciled based on the differences
`
`between the prevailing standards applying before the two different tribunals:
`
`I have reviewed the infringement contentions advanced by Patent
`Owner for the ‘589 Patent against the Petitioner. See Ex. 1008.
`While I do not agree with Patent Owner’s infringement contentions,
`it is my opinion that under “the broadest reasonable construction” for
`purposes of this IPR only, the claims of the ’589 patent must include
`the functionalities identified as allegedly infringing by the Patent
`Owner in district court.
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`Ex. 1004 [Subramanian Decl.] ¶ 23. Like the Petitioner, Petitioner’s expert
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`provides no reasons why this “must” be the case.
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`
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`Furthermore, the above quotes highlight yet another flaw in Petitioner’s
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`claim constructions. They are not actually claim constructions. Petitioner never
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`says what the claim terms mean. Instead, Petitioner merely presents the Board
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`with its conclusion, bereft of supporting explanation, that certain functionalities
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`must fall within the ambit of the term.
`
`
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`Petitioner does not cite any law in support of its novel approach to “claim
`
`construction,” in which patent specifications are ignored and intensely disputed
`
`
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`10
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`infringement contentions are
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`Case IPR2017-00238
`Patent 6,157,589
`Attorney Docket No. 160831-006USIPR
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`treated as dispositive under BRI.
`
` This
`
`is
`
`understandable. For all law is to the contrary. The Petition’s approach founders
`
`on these multiple fatal flaws, among others, as listed below.
`
`
`
`First, Petitioner fails to shoulder its burden to set forth in the Petition how
`
`the challenged claim is to be construed pursuant to 37 C.F.R. § 42.104(b)(3).
`
`Petitioner does not even offer constructions of what the claims mean, but merely
`
`conclusory assurances that certain elements must fall within the ambit of the claim.
`
`Petitioner fails to discuss the specification at all in any of its “constructions.” It
`
`thus defaults on its burden under 37 C.F.R. § 42.100(b) to provide the “broadest
`
`reasonable construction in light of the specification of the patent in which it
`
`appears.”
`
`
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`Second, Petitioner never explains why the positions it disagrees with in
`
`litigation under Phillips must be taken by this Board as “necessarily” correct under
`
`BRI. In the abstract, of course, different results could possibly result under the two
`
`standards. But not necessarily. It was incumbent on Petitioner to identify just how
`
`it disagrees with Patent Owner’s preliminary litigation position, and why the
`
`opposite result should apply here.
`
`Third, such infringement contentions are not an appropriate basis for claim
`
`construction. The Board has consistently found that infringement contentions are
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`
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`11
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`Case IPR2017-00238
`Patent 6,157,589
`Attorney Docket No. 160831-006USIPR
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`
`irrelevant to construing claims in IPR. It is also well-settled that claim
`
`construction must be undertaken without reference
`
`to accused products.
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`Consequently, the entire foundation for all of Petitioner’s constructions is improper
`
`as a matter of law.
`
`Fourth, even if one were to assume, counterfactually, that basing claim
`
`constructions on infringement contentions and accused products were legally
`
`sound, the Petition would still fail. Merely matching a structure or signal in the
`
`infringement contentions to a similarly-named structure or signal in prior art
`
`simply is not sufficient to show a likelihood that the structures or signals in the
`
`prior art practice the claimed methods.
`
`Fifth, Petitioner fails to offer any constructions for two key limitations—
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`“initialization circuit” and “enable circuit”—that Petitioner insists in litigation are
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`means-plus-function limitations. Petitioner offers no explanation why these
`
`limitations should not then be treated as means-plus-function limitations here.
`
`After all, as just explained above, Petitioner insists that Patent Owner must be held
`
`to its current litigation positions as to claim limitations. Petitioner cannot have it
`
`both ways. And if Petitioner is held to its litigation position that these claim terms
`
`are means-plus-function, Petitioner has failed to meet its burden under the rules
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`
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`12
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`Case IPR2017-00238
`Patent 6,157,589
`Attorney Docket No. 160831-006USIPR
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`because it has miscarried its burden to identify corresponding structures under 37
`
`C.F.R. § 42.104(b)(3).
`
`For each of these reasons, as explained in further detail below, the Petition
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`should be denied.
`
`A.
`
`Petitioner Fails To Construe The Claims Or Even To Substantiate
`Its Positions Regarding What They Must Implicitly Cover “In
`Light Of The Specification,” As Is Its Burden.
`
`As explained above, Petitioner purports to “construe” the claims without
`
`ever either explaining how they should be interpreted or even referencing the
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`Patent’s specification to support its positions. This approach violates the rules
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`governing IPRs in numerous ways.
`
`The Petition must identify “for each claim challenged . . . [h]ow the
`
`challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). Claim
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`construction is rooted in the patent’s specification. In IPRs claims are to be
`
`construed per the “broadest reasonable construction in light of the specification of
`
`the patent in which it appears.” Id. § 42.100(b).
`
`First, the Petition never in fact identifies “how” the challenged claim is to be
`
`construed. The Petition merely asserts that certain elements identified in Patent
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`Owner’s PICs “satisfy” the claim term, without any explanation as to how this
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`13
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`Case IPR2017-00238
`Patent 6,157,589
`Attorney Docket No. 160831-006USIPR
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`must, or even may, be true in light of the invention as claimed or described in the
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`Patent.
`
`Limitation
`Claim 11 Preamble
`
`“supply voltage stable
`signal” (claim 11)
`
`“has been stabilized
`after the switching on
`operation” (claim 11)
`“further command
`signals” (claim 11)
`
`“enable signal”
`(claim 11)
`“effecting an
`unlatching of a control
`circuit” (claim 12)
`“preparation command
`signal for word line
`activation” (claim 12)
`
`“loading configuration
`register command
`signal” (claim 12)
`
`
`
`Petitioner’s IPR Interpretation
`“the preamble must be satisfied through the
`presence of a DRAM controller, that controls the
`switching-on operation of the DRAM and its circuit
`components.”
`Pet. at 12.
`“a ‘supply voltage stable signal’ within the meaning
`of this claim is satisfied where an ‘Active Low
`synchronous Reset Signal, /RESET,’ is generated.”
`Pet. at 16.
`Supposedly satisfied by holding RESET signal for
`200 microseconds.
`Pet. at 16-17.
`“the claimed ‘enable signal,’ ‘further command
`signals’ and ‘unlatching’ elements should be
`construed to be satisfied in this proceeding where
`Clock Enable signals and Mode Register Set signals
`are used in DRAM.
`Pet. at 21.
`See “further command signals” supra.
`Pet. at 21.
`See “further command signals” supra.
`Pet. at 21.
`
`“the claimed ‘preparation command signal for world
`line activation’ and loading configuration register
`command signal’ and elements must be satisfied
`where Mode Register Set signals are used in
`DRAM.”
`Pet. at 26.
`See “preparation command signal for word line
`activation” supra.
`Pet. at 26.
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`14
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`Case IPR2017-00238
`Patent 6,157,589
`Attorney Docket No. 160831-006USIPR
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`
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`Making conclusory statements regarding what fits within or “satisfies” a
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`claim term, without construing the term, is not claim construction. Nor does it
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`comply with § 42.104(b)(3).
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`Similarly, the courts and the Board have recognized the necessity of
`
`conducting claim construction “in light of the specification.” Claims “‘should
`
`always be read in light of the specification and teachings in the underlying
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`patent,’” and “[e]ven under the broadest reasonable interpretation, the Board’s
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`construction ‘cannot be divorced from the specification and the record evidence.’”
`
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
`
`(citations omitted). In PPC Broadband, Inc. v. Corning Optical Communications,
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`the Federal Circuit
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