Paper 35
`Trials@uspto.gov
`571-272-7822 Entered: February 5, 2018
`
`
`
`
`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 IPR2016-01622
`Patent 6,850,414 B2
`____________
`
`
`
`
`Before SALLY C. MEDLEY, JEAN R. HOMERE,
`and KEN B. BARRETT, Administrative Patent Judges.
`
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`Trials@uspto.gov
`571-272-7822 Entered: February 5, 2018
`
`
`
`
`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 IPR2016-01622
`Patent 6,850,414 B2
`____________
`
`
`
`
`Before SALLY C. MEDLEY, JEAN R. HOMERE,
`and KEN B. BARRETT, Administrative Patent Judges.
`
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`
`
`Kingston Technology Company, Inc. (“Petitioner”) filed a Petition
`
`requesting inter partes review of claims 1–8 of U.S. Patent No. 6,850,414
`
`B2 (“the ’414 patent,” Ex. 1001). Paper 2 (“Pet.”). Polaris Innovations Ltd.
`
`(“Patent Owner”)1 filed a Preliminary Response to the Petition. Paper 6
`
`(“Prelim. Resp.”). The Board instituted inter partes review (Paper 7, “Inst.
`
`Dec.”) of claims 1 and 5–8 on the ground of obviousness under 35 U.S.C.
`
`§ 103(a) over Simpson2. The Board did not institute a review as to
`
`dependent claim 4. Petitioner filed a Request for Rehearing of The Board’s
`
`Institution Decision on Claim 4 (Paper 11), which was denied (Paper 16).
`
`
`
`Patent Owner filed a Motion to Amend seeking to cancel the instituted
`
`challenged claims and proposing to substitute a newly-presented claim 9 for
`
`dependent claim 8. Paper 18 (“MTA”). Patent Owner did not file a
`
`Response to the Petition. Subsequently, Petitioner filed an Opposition to
`
`Patent Owner’s Motion to Amend (Paper 20, “MTA Opp.”), and Patent
`
`Owner filed a Reply to Petitioner’s Opposition to Motion to Amend
`
`(Paper 23, “MTA Reply”).
`
`
`
`On October 4, 2017, the Federal Circuit issued an en banc decision in
`
`Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) addressing the
`
`burden of proof that the Board applies when considering the patentability of
`
`
`
`1 Patent Owner identifies Polaris Innovations Ltd., Wi-LAN Inc., and
`Quarterhill Inc. as real parties-in-interest. Paper 4, 1; Paper 19, 1.
`2 UK Patent Application GB 2 289 573 A, published Nov. 22, 1995
`(Ex. 1002).
`
`2
`
`
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`IPR2016-01622
`Patent 6,850,414 B2
`
`
`substitute claims presented in a motion to amend filed under 35 U.S.C.
`
`§ 316(d).
`
`
`
`Pursuant to our authorization (Paper 25), Petitioner filed a Surreply to
`
`Patent Owner’s Motion to Amend (Paper 28, “MTA Surreply”). Thereafter
`
`and pursuant to our authorization (Paper 29), Patent Owner filed a Brief
`
`Addressing Impact of Aqua Products v. Matal (Paper 30).
`
`
`
`An oral hearing was held on November 14, 2017, and a transcript of
`
`the hearing is included in the record. Paper 34 (“Tr.”).
`
`
`
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`
`After consideration of the parties’ arguments and evidence, and for the
`
`reasons discussed below, we determine that Petitioner has shown by a
`
`preponderance of the evidence that claims 1 and 5–8 of the ’414 patent are
`
`unpatentable. Based on the entirety of record before us, we also determine
`
`that a preponderance of the evidence establishes that substitute claim 9
`
`presented in the Motion to Amend is unpatentable over the prior art of
`
`record.
`
`B. Related Proceedings
`
`
`
`According to the parties, the ’414 patent is involved in Polaris
`
`Innovations Ltd. v. Kingston Tech. Co., Inc., Case No. 8:16-cv-300 (C.D.
`
`Cal.). Pet. 1; Paper 4, 1.
`
`
`
`Petitioner filed a petition seeking inter partes review of claim 4 of the
`
`’414 patent in Patent Trial and Appeal Board Case IPR2017-00974
`
`(Paper 2). In that case, the Board exercised its discretion under
`
`35 U.S.C. §§ 314(a) and 325(d) to not institute an inter partes review.
`
`IPR2017-00974, Paper 8. Petitioner’s request for reconsideration of that
`
`decision was denied. IPR2017-00974, Papers 9, 11.
`
`3
`
`
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`IPR2016-01622
`Patent 6,850,414 B2
`
`
`C. The ’414 Patent
`
`
`
`The ’414 patent, titled “Electronic Printed Circuit Board Having a
`
`Plurality of Identically Designed, Housing-Encapsulated Semiconductor
`
`Memories,” issued February 1, 2005, from U.S. Patent Application
`
`No. 10/187,763. Ex. 1001 at [54], [45], [21].
`
`
`
`The ’414 patent generally relates to an electronic printed circuit board
`
`having a memory module comprised of identically designed semiconductor
`
`memories configured on the printed circuit board. Id. at Abstract. “Printed
`
`circuit boards of this type are inserted into motherboards of personal
`
`computers or network computers and serve as the main memory.” Id.
`
`at 1:21–23. Figures 1A and 1B are reproduced below.
`
`Figure 1A shows the front side of a conventional printed circuit board and
`
`Figure 1B shows the rear side of a conventional printed circuit board. Id. at
`
`5:6–10. According to the ’414 patent, in a conventional arrangement,
`
`
`
`4
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`
`semiconductor memories 4 are arranged on the front and rear sides of the
`
`printed circuit board in the same orientation as error correction chip 5. Id.
`
`at 1:62–67. “In the case of this conventional arrangement . . . there is no
`
`more leeway for a further reduction of the circuit board height (the height of
`
`the printed circuit board perpendicular to the contact strip).” Id. at 2:37–41.
`
`In network computers, however, “the printed circuit boards are inserted into
`
`compartment-type elements having a small height, for which reason the
`
`printed circuit boards themselves should also have only a small height.” Id.
`
`at 1:23–27.
`
`
`
`To address this problem, the ’414 patent discloses an electronic
`
`printed circuit board in which the error correction chip remains oriented
`
`perpendicular to the contact strip but the other semiconductor memories are
`
`oriented parallel to the contact strip, such that it is “possible to reduce the
`
`height of the printed circuit board while enabling the rectangular housing to
`
`keep the same physical form.” Id. at Abstract. Figure 3 is reproduced
`
`below.
`
`
`
`5
`
`
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`IPR2016-01622
`Patent 6,850,414 B2
`
`
`Figure 3 shows the rear side of a printed circuit board according to an
`
`embodiment of the ’414 patent. Id. at 5:13–14. In this arrangement,
`
`housings 5a of semiconductor memories 4a are arranged horizontally on
`
`printed circuit board 1, and only housing 5b of error correction chip 4b is
`
`arranged vertically. Id. at 6:19–28. Housing 5b is “brought up to [] contact
`
`strip 2 as close as possible” because “there is no need for any resistors 8
`
`[between housing 5b and contact strip 2], as in the case of all of the other
`
`identically designed semiconductor memories 4a that are configured
`
`horizontally.” Id. at 6:28–35. “As a result, the height of printed circuit
`
`board 1 can be reduced from a value of H1 to a smaller value H2” (id. at
`
`6:41–42), as shown in Figure 2, which is reproduced below.
`
`
`
`Figure 2 shows the front side of a printed circuit board according to an
`
`embodiment of the ’414 patent. Id. at 5:11–12.
`
`D. Illustrative Claim
`
`
`
`Claim 1 of the ’414 patent is an independent claim. Claims 2–8 all
`
`depend directly from Claim 1. Claim 1, reproduced below, is illustrative:
`
`1. An electronic printed circuit board configuration,
`comprising:
`
`an electronic printed circuit board having a contact strip
`for insertion into another electronic unit; and
`
`6
`
`
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`IPR2016-01622
`Patent 6,850,414 B2
`
`
`a memory module having at least nine identically designed
`
`integrated semiconductor memories;
`
`each one of said semiconductor memories being
`encapsulated in a rectangular housing having a shorter dimension
`and a longer dimension;
`
`said housing of each one of said semiconductor memories
`being identically designed and being individually connected to
`said printed circuit board;
`
`one of said semiconductor memories being connected as
`an error correction chip;
`
`said longer dimension of said housing of said error
`correction chip being oriented perpendicular to said contact strip;
`and
`said longer dimension of said housing of each one of said
`
`semiconductor memories, other than said error correction chip,
`being oriented parallel with said contact strip.
`
`Ex. 1001, 7:24–8:3.
`
`II. ANALYSIS OF THE INSTITUTED CHALLENGE
`
`A. Principles of Law
`
`
`
`Petitioner bears the burden of proving unpatentability of the claims
`
`challenged in the Petition, and that burden never shifts to Patent Owner.
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`
`(Fed. Cir. 2015). To prevail, Petitioner must establish the facts supporting
`
`its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e);
`
`37 C.F.R. § 42.1(d).
`
`
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter 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. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`7
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`
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`IPR2016-01622
`Patent 6,850,414 B2
`
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art; (3)
`
`the level of skill in the art; and (4) any objective evidence of
`
`non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`B. The Level of Ordinary Skill in the Art
`
`
`
`Petitioner’s expert, Dr. Vivek Subramanian, opines that “a person of
`
`ordinary skill in the art as of the time of the ’414 Patent would have a
`
`Bachelor’s degree in Electrical Engineering and at least 2 years’ experience
`
`working in the field of semiconductor memory design.” Ex. 1006 ¶ 17; see
`
`Pet. 5–6 (citing the same). This definition is consistent with the level of
`
`ordinary skill reflected in the prior art references of record. See Okajima v.
`
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may
`
`reflect an appropriate level of skill in the art). Patent Owner does not
`
`dispute Petitioner’s definition. We adopt Dr. Subramanian’s definition of
`
`the person of ordinary skill in the art.
`
`C. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo
`
`Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under the
`
`broadest reasonable construction standard, claim terms are given their
`
`ordinary and customary meaning, as would be understood by one of ordinary
`
`skill in the art in the context of the entire patent disclosure. In re Translogic
`
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`8
`
`
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`IPR2016-01622
`Patent 6,850,414 B2
`
`
`1. Individually Connected
`
`
`
`Claim 1 recites “said housing of each one of said semiconductor
`
`memories . . . being individually connected to said printed circuit board” and
`
`“one of said semiconductor memories being connected as an error correction
`
`chip.” Ex. 1001, 7:33–37 (emphasis added).
`
`
`
`In the Institution Decision, we addressed the construction of the claim
`
`term “connected” due to the parties’ arguments concerning the Simpson
`
`reference. Inst. Dec. 7–8. Patent Owner argued in its Preliminary Response
`
`that Simpson does not teach “‘connecting’ an error correction chip to the
`
`PCB [printed circuit board] as claimed,” because the Simpson chip identified
`
`by Petitioner as an error correction chip is mounted in a socket rather than
`
`soldered directly to the printed circuit board. Prelim. Resp. 31. Petitioner
`
`argued that “a socket is a type of connection.” Pet. 22–23 (citing Ex. 1006
`
`¶ 60). We agreed with Petitioner, noting that the ’414 patent does not
`
`explicitly define “connected” and Patent Owner identified nothing in the
`
`Specification to support a construction of that term to exclude connections
`
`via a socket. Inst. Dec. 8. Accordingly, we determined, for purposes of the
`
`Institution Decision, “the broadest reasonable interpretation of ‘connected’
`
`encompasses being connected to the printed circuit board via a socket.” Id.
`
`
`
`Patent Owner, in its reply to Petitioner’s opposition to the Motion to
`
`Amend, impliedly argues that the modifier “individually” means the
`
`memory housings must be directly connected to the printed circuit board.
`
`MTA Reply 10. Specifically, Patent Owner argues that being connected
`
`through “an intermediary with receptacles” is not “directly connected” and
`
`thus Simpson lacks the recited “individually connected” semiconductor
`
`memory housings in that “Simpson’s alleged memory chips are connected to
`
`9
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`IPR2016-01622
`Patent 6,850,414 B2
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`sockets, that are in turn connected to its printed circuit board.” Id. at 10–11
`
`(citations omitted). Patent Owner asserts that its proposed construction of
`
`“individually” as meaning “directly” is supported by a purported admission
`
`of Petitioner’s expert, Dr. Subramanian, during cross examination. Id.
`
`(citing Ex. 2012 (Subramanian Dep. Tr.), 234:6–237:22; Ex. 2013
`
`(deposition exhibit)). We have reviewed the cited pages of the deposition
`
`transcript and agree with Petitioner that that portion of the deposition
`
`involves a “confusing hypothetical arrangement” (MTA Surreply 1–2).
`
`Patent Owner does not explain adequately or persuasively how this
`
`ambiguous extrinsic evidence supports its argument that the claim phrase
`
`“individually connected” should be construed as limited to direct
`
`connections.
`
`
`
`Having considered the parties’ arguments and the complete record, we
`
`again determine that the broadest reasonable interpretation of “connected”
`
`encompasses being connected to the printed circuit board via a socket, and
`
`further determine that the claim term “individually” does not require the
`
`subject components to be directly connected.
`
`2. Error Correction Chip
`
`
`
`In the Institution Decision, we indicated that we were persuaded that
`
`the ’414 patent uses, in independent claim 1, the term “error correction”
`
`broadly enough to encompass parity, and we preliminarily construed “error
`
`correction chip” as “a chip that is able to perform at least error checking on
`
`data stored in other semiconductor memories.” Inst. Dec. 8–9 (quoting
`
`Ex. 1001, 7:1–9). Although Patent Owner did not propose in the
`
`Preliminary Response an explicit construction for the term, we determined
`
`that a preliminary construction in the Institution Decision was necessary due
`
`10
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`IPR2016-01622
`Patent 6,850,414 B2
`
`
`to Patent Owner’s arguments concerning claim 1. Id. at 7. After issuance of
`
`the Institution Decision, Patent Owner did not address further the meaning
`
`of the term, and it appears that it no longer is in dispute. We adopt that
`
`earlier construction in this Final Decision.
`
`D. The Instituted Challenge: The Alleged Obviousness of
`Claims 1 and 5–8 over Simpson
`
`
`
`As mentioned above, we instituted an inter partes review of
`
`Petitioner’s challenge to claims 1 and 5–8 as being obvious over Simpson.
`
`Inst. Dec. 23; see Pet. 10–27. In the Petition, Petitioner relied upon the
`
`Declaration of Vivek Subramanian, Ph.D. (Ex. 1006). See, e.g., Pet. 9–10.
`
`Patent Owner did not file a response to the petition after the decision on
`
`institution, but did file a Motion to Amend. In that motion, which we deny
`
`for the reasons discussed below, Patent Owner requests the cancellation of
`
`the instituted claims 1 and 5–8 and proposes the entry of a substitute claim.
`
`MTA 1. By not filing a response to the Petition, and requesting cancellation
`
`of claims 1 and 5–8 not based on any apparent contingency, Patent Owner
`
`has waived any argument that the challenged claims for which we instituted
`
`review—claims 1 and 5–8 of the ’414 patent—would not have been obvious
`
`over Simpson. See, e.g., Paper 8, 3 (Scheduling Order stating: “The patent
`
`owner is cautioned that any arguments for patentability not raised and fully
`
`briefed in the response will be deemed waived.”). Nonetheless, we review
`
`anew Petitioner’s arguments and the evidence concerning the obviousness
`
`challenge to claims 1 and 5–8 and we consider Patent Owner’s arguments
`
`(see MTA Reply 10–11), made in the context of the Motion to Amend,
`
`concerning limitations of at least claim 1 that necessarily are incorporated in
`
`11
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`
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`IPR2016-01622
`Patent 6,850,414 B2
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`proposed substitute claim 9 by virtue of its dependency from independent
`
`claim 1.
`
`1. Simpson (Ex. 1002)
`
`
`
`Simpson describes a memory module with memory devices and with
`
`sockets on one or both faces of the module for coupling additional memory
`
`modules. Ex. 1002, [57]. Figures 1 and 3 of Simpson are reproduced below.
`
`
`
`
`
`Figures 1 and 3 depict a front view and a rear view, respectively, of a
`
`memory module according to Simpson. Id. at 12:19–26. As shown in
`
`Figure 1 (in which lowercase letters are used in element numbers), a printed
`
`circuit board includes memory devices 12A–12H oriented horizontally to
`
`connector terminal strip 10 and parity memory device 16A mounted in
`
`12
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`
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`IPR2016-01622
`Patent 6,850,414 B2
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`socket 14A oriented vertically to connector terminal strip 10. Id. at 9:18–
`
`10:17. “The memory devices 12A–12H are electrically and mechanically
`
`connected to the substrate 4.” Id. at 10:1–2. “In addition to the memory
`
`devices 12A–12H, the sockets 14A–14J to take additional devices are also
`
`attached to the substrate 4.” Id. at 10:5–7.
`
`2. Independent Claim 1
`
`
`
`With respect to claim 1, Petitioner asserts, and we agree, that
`
`Simpson’s printed circuit board with connector terminal strip 10 teaches the
`
`claim’s recited “electronic printed circuit board having a contact strip.” See
`
`Pet. 16–18; Ex. 1006 ¶¶ 42–46.
`
`
`
`Petitioner relies upon Simpson’s memory devices 12A–12H and 16A
`
`as teaching the recited “at least nine identically designed integrated
`
`semiconductor memories,” and relies upon Figure 1 as teaching that memory
`
`devices 12A–12H and 16A are “encapsulated in a rectangular housing,” each
`
`of which is “identically designed” and “individually connected to said
`
`printed circuit board.” Pet. 18–22; Ex. 1006 ¶¶ 47–61. In this regard,
`
`Petitioner, relying on the testimony of Dr. Subramanian, persuasively asserts
`
`that “[t]hose of ordinary skill in the art would understand that the memory
`
`device 16A is identical to each of memory devices 12A-12H,” and,
`
`alternatively, that it would have been obvious to one of ordinary skill in the
`
`art to use identically designed memory and error correction chips. Pet. 19
`
`(citing Ex. 1006 ¶ 48; Ex. 1002, 10:22-28, 12:10–14); id. at 25–26 (citing
`
`Ex. 1006 ¶¶ 63–64). As discussed above, we have declined to adopt a
`
`construction of “individually connected” that would exclude an indirect
`
`connection. Petitioner notes that “Simpson further discloses that the
`
`‘memory devices 12A-12H are electrically and mechanically connected to
`
`13
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`IPR2016-01622
`Patent 6,850,414 B2
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`the substrate 4.’” Pet. 22 (quoting Ex. 1002, 10:1-5). Regarding Simpson’s
`
`disclosure of the use of sockets on the circuit board, we also are persuaded
`
`by Petitioner’s contention that “[o]ne of ordinary skill in the art would
`
`understand that connection of a memory chip via a socket is a type of
`
`connection.” Pet. 22 (citing Ex. 1006 ¶ 60).
`
`
`
`Petitioner asserts, and we agree, that Simpson’s parity memory device
`
`16A is “an error correction chip,” and that Figure 1 teaches memory device
`
`16A “being oriented perpendicular to said contact strip.” Pet. 23–27;
`
`Ex. 1006 ¶¶ 62–66.
`
`
`
`Lastly, Petitioner notes that Simpson’s Figure 1 depicts memory
`
`devices 12A–12H “being oriented parallel with said contact strip.” Pet. 27;
`
`Ex. 1006 ¶¶ 67–69.
`
`
`
`We are persuaded by Petitioner’s showing, and adopt it as our own,
`
`that Simpson renders obvious independent claim 1.
`
`3. Dependent Claims 5–8
`
`
`
`Patent Owner, in its Preliminary Response to the Petition, did not
`
`present separate arguments for dependent claims 5–8 and Patent Owner did
`
`not submit a response to the Petition after institution. We have reviewed
`
`Petitioner’s explanations and supporting evidence regarding dependent
`
`claims 5–8, see Pet. 38–43, and we determine that Petitioner has shown by a
`
`preponderance of the evidence that dependent claims 5–8 are unpatentable
`
`under 35 U.S.C. § 103 over Simpson.
`
`III. MOTION TO AMEND
`
`A. Proposed Substitute Claim
`
`
`
`Patent Owner filed a Motion to Amend and moves to cancel all the
`
`instituted challenged claims—claims 1 and 5 through 8—and to substitute
`
`14
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`IPR2016-01622
`Patent 6,850,414 B2
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`new claim 9 for challenged claim 8. MTA 1, 2, Appendix. Proposed
`
`substitute claim 9 adds to claim 8 (which depends directly from independent
`
`claim 1) the printed circuit board height limitation of dependent claim 4
`
`(which also depends directly from independent claim 1). Proposed
`
`substitute claim 9 is reproduced below with underlining indicating text
`
`added to dependent claim 8.
`
`The printed circuit board according to claim 1, wherein:
`9.
`said printed circuit board has a width of 5.25 inches and
`
`has a height of 1 to 1.2 inches perpendicular to said contact strip.
`
`MTA, Appendix. As a dependent claim, proposed substitute claim 9
`
`necessarily includes all the limitations of independent claim 1 from which it
`
`depends.
`
`
`
`We note that this is not simply a case where Patent Owner seeks to
`
`rewrite dependent claim 4 in independent form. Because dependent claim 4
`
`and dependent claim 8—which together now form proposed substitute
`
`claim 9—both depend directly from independent claim 1, the Motion to
`
`Amend is the first time that the width and height limitations have appeared
`
`in the same claim. See Tr. 86:3–20.
`
`B. Motions to Amend in view of Aqua Products
`
`
`
`On October 4, 2017, the Federal Circuit issued an en banc decision in
`
`Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). In light of the
`
`Aqua Products decision, the Board will not place the burden of persuasion
`
`on a patent owner with respect to the patentability of substitute claims
`
`presented in a motion to amend. Aqua Products, 872 F.3d at 1327; see also
`
`“Guidance on Motions to Amend in view of Aqua Products” (Nov. 21,
`
`2017) (https://www.uspto.gov/sites/default/files/documents/guidance
`
`15
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`IPR2016-01622
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`_on_motions_to_amend_11_2017.pdf) (“Guidance”). A motion to amend
`
`still must meet the statutory requirements of 35 U.S.C. § 316(d) and the
`
`procedural requirements of 37 C.F.R. § 42.121. See Guidance.
`
`
`
`Because, for the reasons set forth below, we determine that the
`
`proposed substitute claim is not patentable, we do not need to determine
`
`whether the Motion to Amend meets the requirements of 35 U.S.C. § 316(d)
`
`and 37 C.F.R. § 42.121.
`
`C. The Alleged Untimeliness of Petitioner’s Arguments in Opposition to
`the Motion to Amend
`
`
`
`Patent Owner argues that Petitioner’s arguments in opposition to the
`
`Motion to Amend and proposed substitute claim 9 are untimely attacks on
`
`dependent claim 4, and urges that we proceed immediately to a
`
`determination that the proposed substitute claim 9 is patentable without
`
`further input from Petitioner after the decision declining to institute a review
`
`of dependent claim 4. See MTA Reply 1, 5, 9. In effect, Patent Owner
`
`contends that Petitioner should have made its case for unpatentability of the
`
`proposed amended claim 9 in the Petition and that Petitioner now should be
`
`foreclosed from opposing the Motion to Amend.
`
`
`
`Patent Owner’s position apparently is premised on several
`
`misconceptions based on the denial of institution as to Petitioner’s
`
`challenges to claim 4. For example, Patent Owner implies that we
`
`conclusively ruled on the merits of the patentability of claim 4 at the
`
`institution stage in this case and that we found that the height limitation of
`
`claim 4 was not disclosed in the prior art. See MTA Reply 1 (“the Board has
`
`already rejected [Petitioner’s] positions on the merits at least three times”);
`
`id. at 3 (emphasis omitted, “Claim 9 simply adds to the limitations of
`
`16
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`
`instituted Claim 8 the limitation of Claim 4—the exact same limitation that
`
`the Board has found, three times, not disclosed by Petitioner’s references
`
`and arguments.”); id. at 3 (“Patent Owner’s Motion adds a substitute claim,
`
`Claim 9, that has a limitation the Board has already repeatedly found was
`
`not in the references raised by Petitioner. Patent Owner is entitled to rely on
`
`those prior rulings for purposes of its Motion to Amend.”); MTA 3–4 (“the
`
`limitation that already appears in claim 4 has already been found to not have
`
`been shown by Petitioner in this case to be disclosed or suggested by the
`
`prior art.”).
`
`
`
`The decision on institution was made pursuant to 35 U.S.C. § 314,
`
`while our final written decision—including the consideration of the Motion
`
`to Amend—is made pursuant to a different statute, 35 U.S.C. § 318. Here,
`
`our analyses made in arriving at these two types of decisions are not the
`
`same. In our institution decision and as detailed below, we evaluated
`
`Petitioner’s articulation of a case of obviousness (see, e.g., Inst. Dec. 16–
`
`17), whereas we now must render a final written decision on the
`
`patentability of a proposed substitute claim not previously considered based
`
`on the entirety of the record, see 35 U.S.C. § 318(a) (“If an inter partes
`
`review is instituted and not dismissed under this chapter, the Patent Trial and
`
`Appeal Board shall issue a final written decision with respect to the
`
`patentability of any patent claim challenged by the petitioner and any new
`
`claim added under section 316(d).”); see also Aqua Prods., 872 F.3d at 1296
`
`(“The matter is remanded for the Board to issue a final decision under
`
`§ 318(a) assessing the patentability of the proposed substitute claims without
`
`placing the burden of persuasion on the patent owner.”).
`
`17
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`
`
`
`Contrary to Patent Owner’s implied arguments, we have neither
`
`determined affirmatively that dependent claim 4 is patentable nor found the
`
`height limitation missing from the prior art. Petitioner challenged, in the
`
`Petition, claims 1–8 of the ’414 patent. As to dependent claim 4 (reciting
`
`the height limitation), we did not institute on the ground of obviousness over
`
`Simpson, stating “Petitioner has not explained sufficiently how or why a
`
`person of ordinary skill in the art would have modified Simpson to achieve a
`
`height of ‘1 to 1.2 inches perpendicular to said contact strip.’” Inst. Dec. 17
`
`(quoting Ex. 1001, 8:19–20 (’414 patent, claim 4)). Similarly, we did not
`
`institute a review on the ground of Simpson in combination with the Intel
`
`Specification3 because “Petitioner continues to rely solely on its argument
`
`that the limitations would have been an ‘obvious design choice’ without
`
`explaining persuasively how and/or why a person of ordinary skill in the art
`
`would have made the proposed modifications to Simpson in view of the
`
`teachings of the Intel Specification.” Id. at 18; see also id. at 20–21, 22
`
`(declining to institute as to other grounds based on inadequate reasoning).
`
`We denied Petitioner’s request for reconsideration, in pertinent part, because
`
`Petitioner had not addressed whether one of ordinary skill would have been
`
`able to fit two rows of chips on a circuit board having a height of only 1 to
`
`1.2 inches. Paper 16, 6. Petitioner filed another petition challenging
`
`claim 4, and that second petition was the subject of a discretionary denial in
`
`light of the first petition. IPR2017-00974, Papers 2, 8. Petitioner’s request
`
`for reconsideration of that decision was denied. IPR2017-00974, Papers 9,
`
`
`
`3 PC SDRAM UNBUFFERED DIMM SPECIFICATION, Rev. 1.0, Feb. 1998 (the
`“Intel Specification”) (Ex. 1003).
`
`18
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`
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`IPR2016-01622
`Patent 6,850,414 B2
`
`
`11. In denying that request for reconsideration, we confirmed “[i]n neither
`
`decision [denying institution as to claim 4] did the Board determine
`
`affirmatively that claim 4 is patentable over the prior art asserted in the
`
`respective petitions.” IPR2017-00974, Paper 9, 5. Accordingly, Patent
`
`Owner’s reliance on those prior decisions is misplaced.
`
`
`
`Patent Owner also argues that its desired outcome in this case is
`
`required by an unrelated Board decision, Amerigen Pharms. Ltd. v. Shire
`
`LLC, Case IPR2015-02009, Paper 38 (PTAB Mar. 31, 2017)
`
`(non-precedential) (Ex. 2011). MTA Reply 1, 6–8. In the Amerigen case,
`
`the panel granted a motion to amend after considering and finding
`
`unpersuasive the petitioner’s arguments in opposition to the motion.
`
`Amerigen, slip op. 5–6. We fail to see how that fact-specific ruling supports
`
`Patent Owner’s arguments that we should not consider Petitioner’s
`
`arguments in this case. Additionally, Patent Owner acknowledges that a key
`
`consideration in the Amerigen panel’s decision was the fact that the
`
`substitute claim “included only limitations of non-instituted or
`
`non-challenged claims.” MTA Reply 7 (citing Ex. 2011, 4–5); see
`
`Amerigen, slip op. 5 (“the practical effect of [the proposed substitution]
`
`would be to leave no instituted claim remaining in the trial.”). In Amerigen,
`
`the panel stated that, “[e]ffectively, no claim [was] being amended, and
`
`claims [were] only being cancelled . . . .” Amerigen, slip op. at 6 (quoting
`
`the patent owner’s argument; internal quotations omitted); id. at 6 (“With the
`
`cancellation of claims 18–25, and the entry of substitute claim 26, there
`
`would be no claim remaining subject to inter partes review in this
`
`proceeding.”). That fact pattern is not present in the case before us.
`
`19
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`
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`IPR2016-01622
`Patent 6,850,414 B2
`
`
`Amerigen does not, as Patent Owner implies, establish a procedural rule that
`
`precludes a petitioner from opposing a motion to amend.
`
`
`
`Lastly, we note that—after the denials of institution as to claim 4 and
`
`at which point it no longer was involved in this inter partes review—Patent
`
`Owner did not remain silent as to that claim. Notwithstanding that Patent
`
`Owner’s Motion to Amend reflects a willingness to cancel the instituted
`
`claims—a group which does not include claim 4—Patent Owner did not
`
`simply request to cancel the instituted claims and seek adverse judgment,
`
`which, if granted, would have ended this inter partes review and would have
`
`left claim 4 unaddressed ever again in this proceeding. Cf. Inst. Dec. 23;
`
`Tr. 88:7–8 (Patent Owner asserting: “Everyone agrees that had we not filed
`
`a motion to amend, you couldn’t revisit the claim 4 decision in this case.”).
`
`Rather, Patent Owner made a strategic decision to propose a substitute
`
`amended claim that includes the limitation of challenged and instituted
`
`dependent claim 8 along with the limitation of non-instituted dependent
`
`claim 4. Petitioner argues that Patent Owner added the limitation of claim 4
`
`back into the case in the form of proposed claim 9 in order for estoppel to
`
`attach to it, and thereby “materially harm[] the petitioners in District Court,”
`
`and maintains that it would be a due process violation to attach estoppel
`
`based on a decision at the institution stage.4 Tr. 74, 102; see also id. at 73–
`
`
`
`4 See Shaw Indus. Grp. Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293,
`1300 (Fed. Cir. 2016) (discussing estoppel and distinguishing between the
`pre-institution phase and the inter partes review, which “does not begin until
`it is instituted.”). We express no opinion as to whether and to what extent
`estoppel would or would not apply in the hypothetical situation presented
`here.
`
`20
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`IPR2016-01622
`Patent 6,850,414 B2
`
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`74 (Petitioner drawing a distinction between an institution decision under 35
`
`U.S.C. § 314 and a final written decision under § 318). Regardless as to the
`
`reasons underlying Patent Owner’s actions, it is because of those actions that
`
`
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