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` Paper No. 10
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`Filed on behalf of Petitioner by:
`Barry K. Shelton
`SHELTON COBURN LLP
`311 RR 620 S, Suite 205
`Austin, TX 78734
`Tel: (512) 263-2165
`Fax: (512) 263-2166
`bshelton@sheltoncoburn.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
`HP INC.,
`Petitioner
`v.
`JAMES B. GOODMAN,
`Patent Owner
`____________
`
`Case No. IPR 2017-01994
`Patent No. 6,243,315
` ____________
` PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITION
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`
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`Petitioner’s Reply to Patent Owner’s Response to Petition
`IPR 2017-01994
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`TABLE OF CONTENTS
`INTRODUCTION .......................................................................................... 1
`I.
`CLAIM CONSTRUCTION ........................................................................... 2
`II.
`III. GROUND 1: CLAIMS 1 AND 5 ARE OBVIOUS OVER SCHAEFER IN
`VIEW OF QURESHI ..................................................................................... 6
`Schaefer and Qureshi Disclose a “Control Device” ............................. 7
`A.
`B.
`Schaefer and Qureshi Disclose a “Memory Access Enable Control
`Device” ................................................................................................. 8
`C. A POSITA Would Have Combined Schaefer and Qureshi To Render
`the Claims Obvious .............................................................................. 8
`IV. GROUND 2: CLAIMS 10 AND 16 ARE OBVIOUS OVER SCHAEFER IN
`VIEW OF QURESHI AND MAZUR ........................................................... 10
`CONCLUSION .............................................................................................. 11
`
`V.
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`i
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`Petitioner’s Reply to Patent Owner’s Response to Petition
`IPR 2017-01994
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`I.
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`INTRODUCTION
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`From the beginning of this proceeding, Patent Owner has made minimal
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`efforts to save the challenged claims. The Patent Owner filed a Preliminary
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`Response and a Response to the Petition1 but did not provide an expert declaration
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`or offer any other evidence. The Patent Owner did not cross-examine Petitioner’s
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`expert. Nor did Patent Owner object to any evidence proffered by Petitioner or
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`deny that the Schaefer, Qureshi or Mazur references were prior art to U.S. Patent
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`No. 6,243,315. Therefore, Petitioner’s expert testimony and other evidence stands
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`unrebutted. In response, Patent Owner has offered only attorney argument already
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`deemed unpersuasive by the Board.
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`Patent Owner disputes only three issues: 1) whether “selectively electrically
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`isolating said memory devices from respective address lines and respective control
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`lines” requires electrically isolating all address and control lines; 2) whether the
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`combination of Schaefer and Qureshi meets the “memory access enable control
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`device” element; and 3) whether Petitioner has provided evidence for combining
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`1 Patent Owner filed a “Patent Owner’s Response to the Decision on the Petition”
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`(Paper No. 8) on June 1, 2018, and later that day filed another version (Paper No.
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`9) with minor corrections of exhibit numbers. Paper No. 9 is referenced herein as
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`“Resp.”
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`1
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`Petitioner’s Reply to Patent Owner’s Response to Petition
`IPR 2017-01994
`Mazur with Schaefer and Qureshi to render claims 10 and 16 obvious. The Board
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`already rejected Patent Owner’s position on all three issues in the institution
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`decision. Patent Owner has waived any other disputes not raised in its Response to
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`the Petition.
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`Accordingly, the Board should cancel challenged claims 1, 5, 10 and 16 of
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`the ’315 Patent because the claims are obvious under 35 U.S.C. § 103(a) as
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`described in the Petition.
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`II. CLAIM CONSTRUCTION
`Patent Owner urges the Board to adopt the agreed claim constructions from
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`the district court litigation between the parties. Resp. at 12. Patent Owner argues
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`that “it would be reasonable for the aforementioned claim constructions to be
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`applied herein because the claim construction for each term mentioned above is
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`obviously as broad as possible, thereby complying with In re Translogic
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`Technology Inc.” Id. Patent Owner does not articulate why any of the district court
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`constructions represent the broadest reasonable interpretation (“BRI”) of the terms.
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`Petitioner maintains that claim construction is not necessary for the Board to
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`determine that the challenged claims are rendered obvious.
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`There are at least two reasons why the Board should not apply the claim
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`constructions from the district court case. First, Patent Owner has not shown that
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`the Board needs to construe any claim term. The mere suggestion by Patent Owner
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`2
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`Petitioner’s Reply to Patent Owner’s Response to Petition
`IPR 2017-01994
`that a term should be construed is not enough. Vivid Techs., Inc. v. Am. Sci. &
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`Eng., Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need to be
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`construed that are in controversy, and only to the extent necessary to resolve that
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`controversy.”). Second, even if the Board adopted the parties’ agreed construction
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`of “selectively electrically isolating said memory devices from respective address
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`lines and respective control lines” from the district court case, the challenged
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`claims are still obvious. The parties construed that term as “inhibiting signals on
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`respective address and respective control lines from the memory devices such that
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`signals on those lines do not arrive at the memory devices.” Resp. at 11, Ex. 2001
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`at 2. Importantly, this construction does not contain the word “all.” Thus, the
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`construction advanced by Patent Owner here is narrower than the agreed district
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`court construction, even though the BRI standard is broader than the claim
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`construction applied in district court. See, e.g., In re Am. Acad. of Sci. Tech Ctr.,
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`367 F.3d 1359, 1369 (Fed. Cir. 2004). The Patent Owner’s flawed reasoning
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`underscores why the Board should not adopt the claim constructions from the
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`district court case.
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`If the Board determines that this term requires construction, it should reject
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`Patent Owner’s improperly narrow construction. As the Board observed in the
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`institution decision, “we do not understand claim 1 to require electrically isolating
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`memory devices from all address and control lines. Indeed, such a reading would
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`3
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`Petitioner’s Reply to Patent Owner’s Response to Petition
`IPR 2017-01994
`be inconsistent with the preferred embodiments, which do not appear to isolate the
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`memory devices from all address and control lines.” Paper No. 6 at 13 (emphasis
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`in original). The plain language of claim 1 does not require that all address lines
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`and control lines be electrically isolated. See Phillips v. AWH Corp., 415 F.3d
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`1303, 1312 (Fed. Cir. 2003) (“[T]he Supreme Court made clear that the claims are
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`‘of primary importance, in the effort to ascertain precisely what it is that is
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`patented.”). Fig. 1 of the ’315 Patent, reproduced below, maps to claim 1 and
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`shows the “respective address lines and respective control lines” of claim 1 as
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`“address buss 17” and “control buss 22,” respectively. Fig. 1 further illustrates that
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`two additional “control lines”—RAS (row address select) and WE (write enable)—
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`are not included in the control lines that make up “control buss 22.” The
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`specification’s description of Fig. 1 supports this interpretation. See Ex. 1001 at
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`5:41-6:3. Because Fig. 1 unmistakably identifies “RAS” and “WE” as “control
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`lines,” when “Address & Control Center 15” electrically isolates “control buss 22”
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`there are at least two other control lines that are not electrically isolated. Hence,
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`Patent Owner’s position that all address lines and control lines must be electrically
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`isolated by the “control device” of claim 1 is inconsistent with the disclosure.
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`Claims “must be read in view of the specification, of which they are a part,” and
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`Patent Owner’s interpretation is inconsistent with the ’315 specification. Phillips,
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`415 F.3d at 1315 (internal quotations omitted).
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`4
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`Petitioner’s Reply to Patent Owner’s Response to Petition
`IPR 2017-01994
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`Patent Owner does not fare any better with the embodiment depicted in Fig.
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`4, reproduced below, which maps to independent claim 10. As in Fig. 1, at least
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`two control lines—RAS and WE—are not part of “control buss 122,” confirming
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`that “selectively electrically isolating said memory devices from respective address
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`lines and respective control lines” does not require electrically isolating all address
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`lines and control lines. The specification’s description of Fig. 4 supports this
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`interpretation. See Ex. 1001 at 9:7-26.
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`5
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`Petitioner’s Reply to Patent Owner’s Response to Petition
`IPR 2017-01994
`
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`III. GROUND 1: CLAIMS 1 AND 5 ARE OBVIOUS OVER SCHAEFER
`IN VIEW OF QURESHI
`Ground 1 of the Petition is supported by the expert declaration of Dr.
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`Bagherzadeh, an expert with forty years of experience in the field of memory
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`systems. See Ex. 1002 ¶¶ 14-19, Appx. A. Patent Owner has not disputed that Dr.
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`Bagherzadeh is a person of ordinary skill in the art (“POSITA”) and therefore
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`qualified to provide expert testimony on the ’315 Patent and the prior art references
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`in issue. Patent Owner neither proffered its own expert testimony nor cross-
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`examined Dr. Bagherzadeh. Furthermore, Patent Owner did not offer any evidence
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`or object to Petitioner’s evidence supporting Ground 1, relying instead on attorney
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`6
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`Petitioner’s Reply to Patent Owner’s Response to Petition
`IPR 2017-01994
`argument. Therefore, Petitioner’s evidence of obviousness stands unrebutted while
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`Patent Owner has not adduced any evidence for the Board to consider.
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`Schaefer and Qureshi Disclose a “Control Device”
`A.
`Patent Owner disputes that the combination of Schaefer and Qureshi
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`discloses the “control device” element of claim 1 of the ’315 Patent, in particular
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`its requirement “for selectively electrically isolating said memory devices from
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`respective address lines and respective control lines.” As discussed supra, Patent
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`Owner urges a construction for this term that is at odds with both the plain
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`language of the claim and the embodiments in the specification. Patent Owner’s
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`only basis for disputing that this combination discloses the “control device” of
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`claim 1 is that the Clock Enable (CKE) signal in Schaefer is always active, even
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`when the SDRAM in Schaefer is in power down mode (corresponding to “low
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`power mode” in the claims). CKE may be a control signal, but as the ’315 Patent
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`teaches, not all control lines need be electrically isolated in low power mode.
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`Because the “control device” of independent claims 1 and 10 is not required to
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`electrically isolate all address lines and control lines, it is irrelevant that CKE in
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`Schaefer’s DRAM is not electrically isolated, just as the RAS and WE control lines
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`are not electrically isolated in the ’315 Patent, as Patent Owner admits. Therefore,
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`Petitioner has demonstrated by a preponderance of the evidence that the
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`7
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`Petitioner’s Reply to Patent Owner’s Response to Petition
`IPR 2017-01994
`combination of Schaefer and Qureshi discloses the “control device” required by the
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`challenged claims.
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`B.
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`Schaefer and Qureshi Disclose a “Memory Access Enable Control
`Device”
`Patent Owner disputes that the combination of Schaefer and Qureshi
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`discloses the “memory access enable control device” element of claim 1 of the
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`’315 Patent, because “Qureshi teaches to initiate the low power mode prior to the
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`JTAG testing without any determination as to whether the memory devices are
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`being accessed at that time.” Resp. at 16. In the next sentence Patent Owner admits
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`that “[p]rior to the JTAG testing, an operation is initiated to enter the self refresh
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`mode, the Memory Controller Unit waits until the current memory access
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`operation has been completed.” Id. This is consistent with Petitioner’s contention
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`that the memory controller in Schaefer is the “memory access enable control
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`device” of claims 1 and 10, not the JTAG controller in Qureshi. Pet. at 41, 43; Ex.
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`1002 at ¶¶ 62-63. Thus, Petitioner has demonstrated by a preponderance of the
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`evidence that the combination of Schaefer and Qureshi discloses the “memory
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`access enable control device” required by the challenged claims.
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`C. A POSITA Would Have Combined Schaefer and Qureshi To
`Render the Claims Obvious
`Although Patent Owner admitted in its Preliminary Response that “[t]here is
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`no dispute that Schaefer and Qureshi can be combined,” Patent Owner now
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`8
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`Petitioner’s Reply to Patent Owner’s Response to Petition
`IPR 2017-01994
`contends that “[t]he assertion made by Petitioner for combining Qureshi and
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`Schaefer is patently illogical.” Prelim. Resp. at 4; Resp. at 17. Moreover, Patent
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`Owner contends “[i]t is not logical to conclude that Qureshi is suggesting that it
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`should be combined with Schaefer to reduce power consumption.” Id. Patent
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`Owner’s suggestion that the motivation to combine references must be contained in
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`the references themselves is an incorrect statement of law. Outdry Techs. Corp. v.
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`Geox S.p.A., 859 F.3d 1364, 1370-71 (Fed. Cir. 2017) (“Any motivation to
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`combine references, whether articulated in the references themselves or supported
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`by evidence of the knowledge of a skilled artisan, is sufficient to combine those
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`references to arrive at the claims process.”). The proper analysis should consider “a
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`range of real-world facts” to determine whether there was an apparent reason to
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`combine, including market forces, design incentives, interrelated teachings of
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`multiple patents, a need or problem known in the field, and background knowledge
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`and common sense of the person of ordinary skill. Arctic Cat Inc. v. Bombardier
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`Recreational Prods., Inc., 876 F.3d 1350, 1359 (Fed. Cir. 2017).
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`The Board should reject Patent Owner’s unsupported argument and find that
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`a POSITA would have been motivated to combine the Schaefer and Qureshi
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`references to render claims 1 and 5 obvious.
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`9
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`Petitioner’s Reply to Patent Owner’s Response to Petition
`IPR 2017-01994
`IV. GROUND 2: CLAIMS 10 AND 16 ARE OBVIOUS OVER SCHAEFER
`IN VIEW OF QURESHI AND MAZUR
`Patent Owner’s only responses to Ground 2 are that “Petitioner has failed to
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`provide any technical argument for combining Mazur with the combination of
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`Schaefer and Qureshi” (Resp. at 6) and further that “Petitioner has cited a portion
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`of Ex 1006, and Ex. 1002, but has not provided any insight as to how the
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`references can be combined to suggest claim 10. Hence, the proposed combination
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`of three patents is only speculation, and without merit.” Resp. at 22.
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`Patent Owner made a similar argument in its Preliminary Response, which
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`the Board found unpersuasive. See Prelim. Resp. at 4-5, Paper No. 6 at 15. The
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`rationale for combining Mazur with Schaefer and Qureshi is explained in the
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`Petition at 19-23, supported by Dr. Bagherzadeh’s declaration, Ex. 1002 at ¶¶ 68-
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`73. Moreover, even Patent Owner recognizes “[i]t is known in the prior art to use
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`backup batteries and the like as an electrical power source in the event of a failure
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`of the power source being used initially.” Resp. at 5. Therefore, Petitioner’s ground
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`for obviousness of claims 10 and 16 stands unrebutted by Patent Owner.
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`Because Petitioner has presented detailed reasons why a POSITA would
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`have combined the Schaefer, Qureshi and Mazur references to render obvious
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`claims 10 and 16, which stand unrebutted by Patent Owner, the Board should
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`cancel these claims.
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`10
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`Petitioner’s Reply to Patent Owner’s Response to Petition
`IPR 2017-01994
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`V. CONCLUSION
`For the foregoing reasons, Petitioner requests the cancellation of claims 1, 5,
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`10 and 16 of U.S. Patent No. 6,243,315.
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`Dated: August 24, 2018
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`Respectfully submitted,
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`By:
`
`/Barry K. Shelton/
`Barry K. Shelton, Reg. No. 43,113
`Shelton Coburn LLP
`311 RR 620 S, Suite 205
`Austin, TX 78734
`Tel: 512-263-2165
`Fax: 512-263-2166
`
`Anthony Baca, Reg. No. 33,472
`HP Inc.
`11307 Chinden Blvd., MS 314
`Boise, ID 83714
`Tel: 208-333-6333
`Fax: 208-396-3958
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`11
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`Petitioner’s Reply to Patent Owner’s Response to Petition
`IPR 2017-01994
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`CERTIFICATION OF WORD COUNT
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`The undersigned certifies pursuant to 37 C.F.R. §42.24 that the foregoing
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`Petitioner’s Reply to Patent Owner’s Response to Petition, excluding any table of
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`contents, certificates of service or word count, or appendix of exhibits, contains
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`2,155 words according to the word-processing program used to prepare this
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`document (Microsoft Word 2016).
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`Dated: August 24, 2018
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`Respectfully submitted,
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`By:
` /Barry K. Shelton/
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`Barry K. Shelton, Reg. No. 43,113
`
`Shelton Coburn LLP
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`311 RR 620 S, Suite 205
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`Austin, TX 78734
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`Tel: (512) 263-2165
`Fax: (913) 263-2166
`bshelton@sheltoncoburn.com
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`Petitioner’s Reply to Patent Owner’s Response to Petition
`IPR 2017-01994
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4)
`The undersigned certifies that a complete copy of this Petitioner’s Reply to
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`Patent Owner’s Response to Petition was served upon the attorney of record for the
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`patent in this proceeding via electronic mail:
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`David Fink
`Fink & Johnson
`7519 Apache Plume
`Houston, TX 77071
`Tel: 713 729-4991
`Fax: 713 729-4951
`Email:texascowboy6@gmail.com
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`Dated: August 24, 2018
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`/Barry K. Shelton/
`Barry K. Shelton
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