PUBLIC VERSION
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`In the Matter of
`
`CERTAIN STATIC RANDOM ACCESS
`MEMORIES AND PRODUCTS CONTAINING
`SAME
`
`Inv. No. 337-TA-792
`
`REMAND INITIAL DETERMINATION ON VALIDITY AND UNENFORCEABILITY
`
`Chief Administrative Law Judge Charles E. Bullock
`
`(February 25, 2013)
`
`Appearances:
`
`For Complainant Ci/press Semiconductor Corporation
`
`Arturo J. Gonzalez, Esq.; and Teresa Summers, Esq. of Morrison & Foerster LLP from San
`Francisco, CA
`
`L. Scott Oliver, Esq. of Morrison & Foerster LLP from Palo Alto, CA
`
`For Respondents GS] Technologv. Inc.. Avnet. Inc.. and Cisco Svstems, Inc.
`
`Mark D. Fowler, Esq.; Alan A. Limbach, Esq.; Andrew P. Valentine, Esq.; Timothy Lohse, Esq.
`Michael G. Schwartz, Esq.; and Eric R. Fuehrer, Esq. of DLA Piper LLP from East Palo Alto,
`CA
`
`Gerald T. Sekimura, Esq.; and Saori Kaji, Esq. of DLA Piper LLP from San Francisco, CA
`
`Patent Owner Monterey Research, LLC
`Ex. 2001, 0001
`
`

`

`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`TABLE OF CONTENTS
`
`BACKGROUND ............................................................................................ ..
`
`..l
`
`RELEVANT LAW ......................................................................................... ..
`A.
`Validity ..............................................
`1.
`Anticipation (35 U.S.C. § 102)..........
`2.
`Obviousness (35 U.S.C. § 1()3)..........
`Unenforceability ................................ ........
`1.
`Inequitable Conduct ................................................................ ..
`
`B.
`
`THE ’134 PATENT ........................................................................................ ..
`A.
`Validity ....................
`......
`............................................................. ..
`1.
`U.S. Patent N0. 5,386,385 to Stephens ................................... ..
`a)
`Claim l .....................................
`..
`b)
`Claims 2, 12, 13, 14, and 15 .......................................
`U.S. Patent No. 5,268,865 to Takasugi ................................... ..
`a)
`Claim 1.....................................
`..
`b)
`Claims 2, 12, 13, 14, and 15 .......................................
`[
`] ......... ..
`Claim 1..........................................................
`a)
`Claims 2, 12, 13, and 14
`b)
`Conclusion .......................................................................................... ..
`
`2.
`
`3.
`
`--------- -~
`
`B.
`
`THE ’937 PATENT ........................................................................................ ..
`A.
`Validity .......................................
`.........
`1.
`Anticipation Under 35 U.S.C. § 102..............
`a)
`U.S. Patent No. 5,973,989 to Pawlowski.......
`(i)
`Claim 1..............
`.......................... ..
`(ii)
`Claims 2, 6, and 13 ......................................... ..
`b) U.S.PatentNo.5,717,653toSuzuki
`Obviousness Under 35 U.S.C. § 103 ...................................... ..
`a)
`Pawlowski in Combination with Kumanoya or Sakaue
`b)
`Suzuki in Combination with Kumanoya or Sakaue ......
`Conclusion .............................................................................. ..
`
`3.
`
`2.
`
`20
`20
`21
`
`THE ’477 PATENT ........................................................................................ ..
`21
`21
`A.
`Validity .......................................
`21
`1.
`Anticipation Under § 102(e) ................
`21
`a)
`U.S. Patent No. 5,933,385 to Jiang.............
`22
`b)
`U.S. Patent No. 7,069,406 to Hronik
`24
`Obviousness Under § 103
`2.
`26
`Unenforceability .....................
`26
`1.
`Inequitable Conduct.........
`27
`a)
`Materiality......... .......................................................... ..
`30
`b)
`Intent to Deceive .................................................................... ..
`
`B.
`
`i
`
`Patent Owner Monterey Research, LLC
`Ex. 2001, 0002
`
`

`

`VI.
`
`2.
`
`3.
`
`THE ’805 PATENT ................................................................................................... ..32
`A.
`Validity .......................................................................................................... ..32
`1.
`Ishida IEDM ....................................................................................... ..32
`a)
`Claim 1................
`........32
`b)
`Claims 2, 4, 5 and 6 .............
`........37
`U.S. Patent No. 6,667,649 to Osada ....
`........38
`a)
`Claim 1..............................
`........38
`b)
`Claims 2, 4, 5 and 6 ..........
`........39
`U.S. Patent N0. 6,445,041 to Ishida..........
`........39
`a)
`Claim 1........................................
`........39
`(i)
`“A memory cell comprising” .....
`(ii)
`“substantially oblong active areas” ............................ ..40
`(iii)
`“each of the inner active regions of the series comprises
`a pair of source/drain regions for a respective p­
`transistor, and each of the outer active regions of the
`series comprises a pair of source/drain regions for a
`respective n-channel transistor” ................................. ..40
`Conclusion ................................................................. ..44
`(iv)
`Claims 2, 4, 5 and 6 ........................................................................... ..44
`
`...................... ..
`...................... ..
`
`b)
`
`VII.
`
`CONCLUSIONS OF LAW ....................................................................................... ..45
`
`VIII. REMAND INITIAL DETERMINATION ................................................................ ..45
`
`ii
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`Patent Owner Monterey Research, LLC
`Ex. 2001, 0003
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`

`

`LIST OF ABBREVIATIONS
`
`The following abbreviations may be used in this Initial Determination
`
`CDX
`CPX
`
`CX
`
`CIB
`
`CRB
`
`Dep.
`JX
`PHB
`
`RDX
`RPX
`RX
`RIB
`RRB
`Tr.
`
`Complainant’s demonstrative exhibit
`C0mplainant’s physical exhibit
`
`Complainant’s exhibit
`
`Complainanfis initial post-hearing brief
`
`Complainant’s reply post-hearing brief
`
`Deposition
`Joint Exhibit
`
`Pre-hearing brief
`
`Respondents’ demonstrative exhibit
`Respondents’ physical exhibit
`
`Respondents’ exhibit
`
`Respondents’ initial post-hearing brief
`
`Respondents’ reply post-hearing brief
`Transcript
`
`iii
`
`Patent Owner Monterey Research, LLC
`Ex. 2001, 0004
`
`

`

`PUBLIC VERSION
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`In the Matter of
`
`CERTAIN STATIC RANDOM ACCESS
`MEMORIES ANDPRODUCTS CONTAINING
`SAME
`
`I“ N°' 337'TA'792
`
`REMAND INITIAL DETERMINATION ON VALIDITY AND UNENFORCEABILITY
`
`Chief Administrative Law Judge Charles E. Bullock
`
`(February 25, 2012)
`
`Pursuant to the Notice of Investigation, this is the Remand Initial Detennination in the
`
`matter of Certain Static Random Access Memories and Products Containing Same, Investigation
`
`No. 337-TA-792.
`
`For the reasons stated herein, the undersigned has detennined that U.S. Patent Nos.
`
`6,534,805, 6,651,134, 7,142,477, and 6,262,937 are valid. The undersigned has further
`
`determined that U.S. Patent No. 7,142,477 is enforceable.
`
`Patent Owner Monterey Research, LLC
`Ex. 2001, 0005
`
`

`

`I.
`
`BACKGROUND
`
`On October 25, 2012, the undersigned issued an initial detennination finding no violation
`
`of section 337 on the basis of noninfringement and the failure of Complainant to establish the
`
`existence of a domestic industry that practices the asserted patents. On December 21, 2012, the
`
`Commission determined to review the final initial determination in its entirety and remanded the
`
`Investigation for the undersigned to “(1) consider the parties’ invalidity and unenforceability
`
`arguments and make appropriate findings and (2) issue a final initial remand determination
`
`(“RID”) on these issues.” See Comm’n Order: Remand of Investigation, Inv. No. 337-TA-792,
`
`at 3 (Dec. 21, 2012); see also Comm’n Notice, Inv. N0. 337-TA-792, at 2 (Dec. 21, 2012).
`
`II.
`
`RELEVANT LAW
`
`A.
`
`Validity
`
`A patent is presumed valid. 35 U.S.C. § 282; Microsoft Corp. v. i4i Ltd. P’ship,
`
`131 S. Ct. 2238, 2242 (2011). A respondent who has raised patent invalidity as an affirmative
`
`defense has the burden of overcoming this presumption by clear and convincing evidence.
`
`Microsofi, 131 S. Ct. at 2242. Since the claims of a patent measure the invention at issue, the
`
`claims must be interpreted and given the same meaning for purposes of both validity and
`
`infringement analyses. Amazon.com, Inc. v. Barnesandnoble. com, Inc., 239 F.3d 1343, 1351
`
`(Fed. Cir. 2001). As with an infringement analysis, an analysis of invalidity involves two steps:
`
`determining the scope of the claim and comparing the properly construed claim with the prior art
`
`to determine whether the claimed invention is anticipated and/or rendered obvious.
`
`1.
`
`Anticipation (35 U.S.C. § 102)
`
`A patent may be found invalid as anticipated under 35 U.S.C. § 102(a) if “the invention
`
`was known or used by others in this country, or patented or described in a printed publication in
`
`this country, or patented or described in a printed publication in a foreign country, before the
`
`Patent Owner Monterey Research, LLC
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`

`

`invention thereof by the applicant for patent.” 35 U.S.C. § 102(a). A patent may be found
`
`invalid as anticipated under 35 U.S.C. § l02(b) if “the invention was patented or described in a
`
`printed publication in this or a foreign country or in public use or on sale in this country, more
`
`than one year prior to the date of the application for patent in the United States.” 35 U.S.C.
`
`§ l02(b). Under 35 U.S.C. §102(e), a patent is invalid as anticipated if “the invention was
`
`described in a patent granted on an application for patent by another filed in the United States
`
`before the invention thereof by the applicant for patent.” 35 U.S.C. § lO2(e). Anticipation is a
`
`question of fact that must be established by clear and convincing evidence. Tessera, Inc. v. Int’!
`
`Trade Comm ’n, 646 F.3d 1357, 1366 (Fed. Cir. 2011) (citing Sanofi-Synthelabo v. Apotex Inc.,
`
`550 F.3d 1075, 1082 (Fed. Cir. 2008)).
`
`Under 35 U.S.C. § 102, a claim is anticipated and therefore invalid when “the four
`
`corners of a single, prior an document describe every element of the claimed invention, either
`
`expressly or inherently, such that a person of ordinary skill in the art could practice the invention
`
`without undue experimentation.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d
`
`1272, 1282 (Fed. Cir. 2000), cert. denied, 532 U.S. 904 (2001). A finding of inherent
`
`anticipation “is appropriate only when the reference discloses prior art that must necessarily
`
`include the unstated limitation.” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed.
`
`Cir. 2010) (emphasis original). To be considered anticipatory, the prior art reference must be
`
`enabling and describe the applicant’s claimed invention sufficiently to have placed it in
`
`possession of a person of ordinary skill in the field of the invention. HelzfixLtd. v. Blok-Lok,
`
`Ltd., 208 F.3d 1339, 1346 (Fed. Cir. 2000).
`
`2.
`
`Obviousness (35 U.S.C. § 103)
`
`_ 2 _
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`Patent Owner Monterey Research, LLC
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`

`

`Under 35 U.S.C. § 103, a patent may be found invalid for obviousness if “the differences
`
`between the subject matter sought to be patented and the prior art are such that the subject matter
`
`as a whole would have been obvious at the time the invention was made to a person having
`
`ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § l03(a). Because
`
`obviousness is determined at the time of invention, rather than the date of application or
`
`litigation, “[t]he great challenge of the obviousness judgment is proceeding without any hint of
`
`hindsight.” Star Scientific, Inc. v. R.J. Reynolds Tobacco C0., 655 F.3d 1364, 1375 (Fed. Cir.
`
`2011) (“Star II”).
`
`When a patent is challenged as obvious, the critical inquiry in determining the differences
`
`between the claimed invention and the prior art is whether there is a reason to combine the prior
`
`art references. KSR Int ’l C0. v. Teleflex, Inc., 550 U.S. 398, 417-418 (2007).
`
`In KSR, the
`
`Supreme Court rejected the Federal Circuit’s rigid application of the teaching-suggestion­
`
`motivation test. KSR, 550 U.S. at 415. The Court stated that “it can be important to identify a
`
`reason that would have prompted a person of ordinary skill in the relevant field to combine the
`
`elements in the way the claimed new invention does.” Id. at 418. The Court described a more
`
`flexible analysis:
`
`Often, it will be necessary for a COLU1to look to interrelated
`teachings of multiple patents; the effects of demands known to the
`design community or present in the marketplace; and the
`background knowledge possessed by a person having ordinary skill
`in the art, all in order to determine whether there was an apparent
`reason to combine the known elements in the fashion claimed by
`the patent at issue. . . . As our precedents make clear, however, the
`analysis need not seek out precise teachings directed to the specific
`subject matter of the challenged claim, for a court can take account
`of the inferences and creative steps that a person of ordinary skill
`in the art would employ.
`
`-3­
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`Patent Owner Monterey Research, LLC
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`Id. The Federal Circuit has since held that when a patent is challenged as obvious, based on a
`
`combination of several prior art references, “the burden falls on the patent challenger to show by
`
`clear and convincing evidence that a person of ordinary skill in the art would have had reason to
`
`attempt to make the composition or device, or carry out the claimed process, and would have had
`
`a reasonable expectation of success in doing so.” PharmaStem Therapeutics, Inc. v. ViaCell,
`
`Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007) (citations omitted). The reason to attempt “need not
`
`always be written references but may be found within the knowledge and creativity of ordinarily
`
`skilled artisans.” Ortho-McNeil Pharrn., Inc. v. Mylan Lab., Inc., 520 F.3d 1358, 1365 (Fed. Cir.
`
`2008).
`
`Obviousness is a determination of law based on underlying determinations of fact. Star
`
`II, 655 F.3d at 1374. The factual determinations behind a finding of obviousness include: (1) the
`
`scope and content of the prior alt, (2) the level and content of the prior art, (3) the differences
`
`between the claimed invention and the prior art, and (4) secondary considerations of non­
`
`obviousness. KSR, 550 U.S. at 399 (citing Graham v. John Deere C0., 383 U.S. 1, 17 (1966)).
`
`These factual determinations are referred to collectively as the “Graham factors.” Secondary
`
`considerations of non-obviousness include commercial success, long felt but unresolved need,
`
`and the failure of others. Id. When present, secondary considerations “give light to the
`
`circumstances surrounding the origin of the subject matter sought to be patented,” but they are
`
`not dispositive on the issue of obviousness. Geo. M. Martin C0. v. Alliance Mach. Sys. Int ’l.,
`
`618 F.3d 1294, 1304-06 (Fed. Cir. 2010). A court must consider all of the evidence from the
`
`Graham factors before reaching a decision on obviousness. For evidence of secondary
`
`considerations to be given substantial weight in the obviousness determination, its proponent
`
`must establish a nexus between the evidence and the merits of the claimed invention. W Union
`
`-4­
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`Patent Owner Monterey Research, LLC
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`

`

`C0. v. MoneyGram Payment Sys. Inc., 626 F.3d 1361, 1372-73 (Fed. Cir. 2010) (citing In re
`
`GPAC Ina, 57 F.3d 1573, 1580 (Fed. Cir. 1995)).
`
`B.
`
`Unenforceability
`
`1.
`
`Inequitable Conduct
`
`A patent is unenforceable on grounds of inequitable conduct if the patentee withheld
`
`material information from the PTO with intent to mislead or deceive the PTO into allowing the
`
`claims. LaBounty Mfr. Inc. v. U.S. Int’! Trade Comm ’n, 958 F.2d 1066, 1070 (Fed. Cir. 1992).
`
`“The accused infringer must prove by clear and convincing evidence that the applicant knew of
`
`the reference, knew that it was material, and made a deliberate decision to withhold it.”
`
`Therasense v. Becton, Dickinson and Co., 649 F.3d 1276, 1290 (Fed. Cir. 2011). The Federal
`
`Circuit has emphasized that:
`
`[t]he need to strictly enforce the burden of proof and elevated
`standard of proof in the inequitable conduct context is paramotmt
`because the penalty to inequitable conduct is so severe . . . fi]ust as
`it is inequitable to permit a patentee who obtained his patent
`through deliberate misrepresentations or omissions of material
`information to enforce the patent against others, it is also
`inequitable to strike down an entire patent where the patentee only
`committed minor missteps or acted with minimal culpability or in
`good faith. As a result, courts must ensure than an accused
`infringer asserting inequitable conduct has met his burden on
`materiality and deceptive intent with clear and convincing
`evidence before exercising its discretion on whether to render a
`patent unenforceable.
`
`Star Scientific, Inc., v. R.J. Reynolds Tobacco C0., 537 F.3d 1357, 1366 (Fed. Cir. 2008).
`
`Intent and materiality are separate requirements for a finding of inequitable conduct and
`
`“a court must weigh the evidence of intent to deceive independent of its analysis of materiality.”
`
`Therasense, 649 F.3d at 1290. A strong showing for one requirement C2lIl1'101Icompensate for
`
`deficiencies in the other requirement. Id. (“A district court should not use a ‘sliding scale,’
`
`_ 5 ­
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`

`

`where a weak showing of intent may be found sufficient based on a strong showing of
`
`materiality, and vice versa.”).
`
`Information that is withheld or misrepresented to the PTO is considered material if it
`
`satisfies a “but for” test:
`
`When an applicant fails to disclose prior art to the PTO, that prior alt is but-for
`material if the PTO would not have allowed a claim had it been aware of the
`undisclosed prior art. Hence, in assessing the materiality of a withheld reference,
`the court must determine whether the PTO would have allowed the claim if it had
`been aware of the undisclosed reference. In making this patentability
`determination, the court should apply the preponderance of the evidence standard
`and give claims their broadest reasonable construction.
`
`Id. at 1291-92. Previously, the definition of materiality had been tied to PTO Rule 56, found at
`
`37 C.F.R. § 1.56, however, in Therasense, the Federal Circuit expressly disavowed that practice.
`
`Id. at 1293-94.
`
`Although but-for materiality is required for a finding of inequitable conduct, there is an
`
`exception for cases of affinnative egregious misconduct. Id. at 1292. When a patentee has
`
`engaged in affirmative egregious misconduct—including but not limited to filing false
`
`affidavits——suchconduct is considered per se material. Id. “Because neither mere nondisclosure
`
`of prior art references to the PTO nor failure to mention prior art references in an affidavit
`
`constitutes affinnative egregious misconduct, claims of inequitable conduct that are based on
`
`such omissions require proof of but-for materiality.” Id. at 1292-93.
`
`An inequitable conduct claim requires proof that the patentee acted with the specific
`
`intent to deceive the PTO. Star Scientific, 537 F.3d at 1366. A finding that a patentee was
`
`negligent or grossly negligent regarding an omission or misrepresentation to the PTO does not
`
`satisfy the intent requirement. Therasense, 649 F.3d at 1290. Specific intent to deceive can be
`
`inferred from indirect or circumstantial evidence; it camiot, however, be inferred from the
`
`- 6 _
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`Patent Owner Monterey Research, LLC
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`

`materiality of the omitted or misrepresented reference. Id. at 1290; see also Larson Mfg. C0. 0f
`
`S.D., Inc. v. Aluminart Prods. Ltd, 559 F.3d 1317, 1340 (Fed. Cir. 2009). Additionally, the
`
`absence of a good faith explanation for withholding a material reference does not, by itself,
`
`prove intent to deceive. Star Scientific, 537 F.3d at 1368. To satisfy the clear and convincing
`
`evidence standard the specific intent to deceive must be “the single most reasonable inference
`
`able to be drawn from the evidence.” Therasense, 649 F.3d at 1290 (citing Star Scientific, 537
`
`F.3d at 1366). When there are multiple reasonable inferences that can be drawn as reasons for
`
`withholding a reference, deceptive intent cannot be found. Id. at 1290-91.
`
`III.
`
`THE ’134 PATENT
`
`A.
`
`Validity
`
`Respondents contend that the asserted claims of the ’134 patent are invalid. (RIB at 46.)
`
`Specifically, Respondents contend that U.S. Patent No. 5,386,385 to Stephens, Jr. (“Stephens”)
`
`and U.S. Patent No. 5,268,865 to Takasugi (“Takasugi”) each anticipate claims 1-2 and 12-15,
`
`while a [
`
`] anticipates claims 1­
`
`2 and 12-14. (Id.) Cypress argues that Respondents have failed to carry their burden of
`
`establishing invalidity by clear and convincing evidence since each and every one of the
`
`references cited by Respondents is silent with respect to at least two claim elements —[1]
`
`whether address generation is non-interruptible; and [2] whether the address and/or control buses
`
`are freed up during address generation. (CIB at 40.)
`
`1.
`
`U.S. Patent No. 5,386,385 to Stephens
`
`a)
`
`Claim 1
`
`Respondents contend that the testimony of their expert, Mr. Murphy, establishes the
`
`presence of each limitation of claim 1 in Stephens. (RIB at 47 (citing RX-354C at Q/A 346­
`
`357; RDX-73; RDX-74; RX-476).) Respondents claim that Cypress’s only basis for
`
`_ 7 _
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`

`distinguishing Stephens from claim 1 is Stephens’s use of a programmable mode register,
`
`which Respondents argue, fails for two reasons. (RIB at 47; RRB at 19.) First, Respondents
`
`assert that a mode register is a programmable circuit by which one can set a burst length and
`
`that such a programmable circuit is encompassed by independent claim 1 because dependent
`
`claim 5 (which depends upon claim 2, which in tum depends upon claim 1) claims a circuit
`
`“wherein said programmable burst length is programmable.” (RIB at 47 (citing McAlexander,
`
`Tr. at 708:10-18, 7091207;JX-2 at 5:40-41).) Thus, according to Respondents, claim 1
`
`encompasses a circuit that includes a mode register that is programmable to set a burst length.
`
`(RIB at 47 (citing McAlexander, Tr. at 709:8-13).) Second, Respondents argue that the
`
`evidence establishes that once the mode register in Stephens is programmed and a burst
`
`operation begins, a predetermined number of internal addresses will be generated and the
`
`generation of the addresses is not interrupted.‘ (RIB at 48 (“In this regard, the counters 48-54
`
`disclosed in Stephens generate the internal address signals during a burst access and, although
`
`the burst length can be changed prior to beginning a burst operation by changing the value
`
`stored in the mode register, during a burst operation, the burst length is fixed and cannot be
`
`changed or stopped.”); RRB at 20.) In addition, Respondents maintain that Stephens discloses
`
`that address generation is non-interruptible. (RRB at 20 (citing RX-476 at 5:34-35, 8:44-46).)
`
`Cypress asserts that Stephens fails to anticipate the claim elements “logic circuit
`
`configured to generate a predetermined number of said internal address signals” and “said
`
`generation of said predetermined number of said intemal address signals is non-interruptible.”
`
`(CIB at 42-43; CRB at 16-17.) Cypress argues that Stephens’s method of address generation is
`
`1Respondents claim that Mr. McAlexander —in his direct testimony —acknowledges that Stephens teaches “that
`the intemal counter generates intemal addresses until the burst length is reached" (CX-428C at Q/A 61), and that
`the burst length only may be changed “prior” to the burst command. (RIB at 48 (citing CX-428C at Q/A 57, 61).)
`_ 8 _
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`not predetermined due to its use of a mode register and the fact that the value in the mode
`
`register may change at any time.2 (CIB at 43 (“In other words, the burst length can vary up to
`
`and including the very moment that a read or write command is given. That is not
`
`‘predetennined.’”); CRB at 16.) Cypress further argues that Stephens is silent as to whether
`
`address generation is non-interruptible.
`
`(CIB at 43; CRB at 16.) According to Cypress, none
`
`of the citations relied upon by Respondents to show that address generation in Stephens is non­
`
`interruptible addresses whether address generation may be interrupted. (CIB at 43.)
`
`The undersigned finds that Respondents have failed to show by clear and convincing
`
`evidence that Stephens anticipates claim 1 of the ’134 patent. Instead of clearly setting forth
`
`how each and every limitation of claim l is met by Stephens, Respondents appear to rely on the
`
`fact that certain limitations in claim 1 are “undisputed.” (See, e.g., RIB at 47-48 (“Although
`
`neither Complainant nor its expert, Mr. McAlexander, has contested the disclosure of the first
`
`limitation of claim 1 in Stephens . . .”; RRB at 19 (“Complainant does not dispute that Stephens
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`discloses the first claim limitation.”).) This reliance is inapposite. Cypress stated that
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`Stephens does not anticipate the ’134 patent “at least because it does not disclose an address
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`generation method that is non-interruptible or where the number of addresses to be generated is
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`predetermined with a fixed burst length.” (CIB at 42 (emphasis added).) Respondents seem to
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`misinterpret this statement as Cypress stating that only one element is absent, which is
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`incorrect. In fact, nowhere in the post-hearing briefing does Cypress ever state that any of the
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`limitations of claim l are present in the prior art. (See generally CIB at 42-44.) As Cypress
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`correctly notes, “it is not Cypress’s burden to dispute every claim element; rather, it is
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`2According to Cypress, “Respondents concede that the burst length may be changed by changing the value stored in
`the mode register such that the generation of the burst is not predetermined as required by the claims.” (CRB at 17.)
`Cypress claims that despite this concession, Respondents nevertheless contend that Stephens anticipates because
`during the burst operation, the burst length is fixed. (Id.) Cypress submits that “[w]hether the burst length is fixed
`during the burst operation is irrelevant to the ’134 Patent” for the patent discloses a burst that is “pre-determined.”
`(Id)
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`_ 9 _
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`Patent Owner Monterey Research, LLC
`Ex. 2001, 0014
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`Respondents’ burden to show by clear and convincing evidencethat each and every claim
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`element is disclosed in the prior art reference.” (CRB at 15 (emphasis original); see also
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`Linear Tech. Corp. v. Int ‘ZTrade Comm ’n, 566 F.3d 1049, 1066 (Fed. Cir. 2009) (internal
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`citations omitted) (“The burden is on the party asserting invalidity to prove it with facts
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`supported by clear and convincing evidence.”).) Moreover, much of Respondents’ “proof”
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`consists of conclusory statements with string cites to their expert’s testimony.
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`(See, e.g., RIB at
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`47 (“The testimony of Respondents’ expert, Mr. Murphy, establishes the presence of each
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`limitation of claim 1 in Stephens. RX-354C, Q346-357 (Mr. Murphy’s direct testimony);
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`RDX-73 (Mr. Murphy’s claim chart); RDX-74 (supporting demonstrative)”); 48 (“The timing
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`and control circuit 28, column address buffer 44, adder 45, latch 56 and counters 48-54 of
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`Stephens anticipate the second limitation of claim 1 (“a logic circuit ...”). RX-354C, Q354­
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`357; RX-476 at Figs. 2 and 9, Table 1, col. 5:6-35, col. 6:21-7:33, col. 8:36-52.”).) This is,
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`quite simply, nothing more than an improper attempt to circumvent the page limitations for
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`post-hearing briefs. Merely citing the testimony and demonstrative exhibits of a party’s expert
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`or portions of a prior art patent without any explanation not only fails to constitute “a
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`discussion” of the issue in the post-hearing brief as required by the Ground Rules, but is
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`insufiicient to prove that a patent is invalid by clear and convincing evidence.
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`Furthennore, Stephens is silent about whether the internal address generation is non­
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`interruptible. (See generally RX-476; see also CIB at 43.) Respondents’ expert, Mr. Murphy,
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`concedes that Stephens is indeed silent as to whether address generation is non-interruptible.
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`(RX-354C at Q/A 357 (“since the Stephens patent is silent about whether or not the internal
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`address generation is non—interruptible”).) While Mr. Murphy states that this silence
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`demonstrates the internal address generation in Stephens “can be either interruptible or non­
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`-10­
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`Patent Owner Monterey Research, LLC
`Ex. 2001, 0015
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`interruptible,” Mr. Murphy has absolutely no evidentiary support for such a statement. (RX­
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`354C at Q/A 357.) In addition, the portions of Stephens cited by Respondents do not address
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`whether address generation may be interrupted; rather, these citations “merely state that the
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`burst outputs are on sequential clock cycles and that the internal counter generates internal
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`addresses until the burst length is reached.” (CX-428C at Q/A 61 (intemal citations omitted).)
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`Thus, the Lmdersignedfinds that Respondents have failed to carry their burden showing that
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`Stephens discloses the “non-interruptible” limitation of claim 1 of the ’l34 patent.
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`Accordingly, claim 1 is not invalid as anticipated under §§ 102(a) or 102(b).
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`b)
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`Claims 2, 12, 13, 14, and 15
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`Claims 2, 12, 13, 14, and 15 depend from claim 1. Because the undersigned has
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`determined that claim 1 is not anticipated by Stephens, the undersigned also finds that claims 2,
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`12, 13, 14, and 15 are not anticipated by Stephens. See Trintec Indus., Inc. v. Top-U.S.A. C0rp.,
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`295 F.3d 1292, 1296 (Fed. Cir. 2002) (“Because claim 3 is not inherently anticipated,
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`dependent claims 4 and 5 also are not anticipated.”); see also Hartness Int’l, Inc. v. Simplimatic
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`Eng’g Ca., 819 F.2d 1100, 1108 (Fed. Cir. 1987).
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`2.
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`U.S. Patent No. 5,268,865 to Takasugi
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`a)
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`Claim 1
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`Respondents submit that the testimony of their expert, Mr. Murphy, establishes the
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`presence of each limitation of claim 1 in Takasugi.3 (RIB at 51 (citing RX-354C at Q/A 324­
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`338; RDX-75; RDX-76; RDX-77).) Respondents dispute Cypress’s expert’s contention that
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`Takasugi does not disclose a device configured to generate a “predetermined” nmnber of
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`internal addresses where the generation of such addresses is “non-intermptible.” (Id)
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`3There appears to be no dispute that Takasugi is prior art to the ’134 patent under 35 U.S.C. §§ 102(a) and l02(b) as
`the Takasugi patent issued on December 7, 1993, more than one year before the February 14, 2000 filing date of the
`’l34 patent. (RIB at 51 (citing RX-354C at Q/A 327; McAlexander, Tr. at 701125-702217;RX-475; JX-2).)
`_ 1 1 _
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`Patent Owner Monterey Research, LLC
`Ex. 2001, 0016
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`Respondents argue that contrary to Mr. McAlexander’s assertion (i.e., if the CAS signal goes
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`high, then address generation is interrupted), Figure 7 of Takasugi shows that when the CAS
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`signal goes high, address generation continues. (RIB at 52 (citing RDX-77); RRB at 22.)
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`Respondents claim that “[t]his is confirmed by Mr. Murphy’s testimony.” (RIB at 52 (citing
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`RX-354C at Q/A 338).) Respondents also object to Cypress’s argtunent that because the CAS
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`signal can be changed at any time, the bursts sent from the party may be altered in length or
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`halted mid-operation, arguing that this is nothing more than unsubstantiated attomey argument.
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`(RRB at 22.)
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`Cypress submits that Takasugi does not anticipate the ’134 patent at least because it
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`does not disclose address generation where the burst length is predetermined, non-interruptible,
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`and fixed. (CIB at 44; CRB at 17.) Specifically, Cypress argues that Takasugi is not
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`anticipating prior art “because address generation in the Takasugi Patent is controlled by the
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`/CAS signal.” (CIB at 44.) Cypress claims that when CAS is set to zero, burst addresses are
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`generated by incrementing an internal counter and when CAS is changed to one, address
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`generation is interrupted and stops. (CIB at 44 (arguing that contrary to Respondents’
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`assertion, a rising CASdoes not allow address generation to continue uninterrupted); CRB at
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`17-18 (“That is, when /CAS is changed from zero to one, address generation is interrupted and
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`necessarily either changes in length or stops.”).) Because CASand its associated address
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`generation can be changed at any time, the bursts sent from the part may, Cypress argues, be
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`altered in length or completely halted mid-operation and thus, the length of the burst is neither
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`“predetermined” nor “non-interruptible.” (CIB at 44-45; CRB at 17-18.)
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`The tmdersigned finds Respondents’ arguments tmpersuasive. First, Respondents’
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`“discussion” of how Takasugi anticipates claim 1 of the ‘I34 patent suffers from the same
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`-12­
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`Patent Owner Monterey Research, LLC
`Ex. 2001, 0017
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`flaws as their arguments pertaining to Stephens, namely that instead of clearly setting forth
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`how each and every limitation of claim 1 is met by Takasugi, Respondents rely on Cypr