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