Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 16
`Entered: April 6, 2017
`
`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
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 16
`Entered: April 6, 2017
`
`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
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`
`I. INTRODUCTION
`Pursuant to 37 C.F.R. § 42.71(d), Kingston Technology Company,
`Inc. (“Petitioner”) requests rehearing of the Decision (Paper 7, “Dec.”)
`denying institution of an inter partes review of claim 4 of U.S. Patent No.
`6,850,414 B2 (Ex. 1001, “the ’414 patent”). Paper 11 (“Req. Reh’g”).
`For the reasons set forth below, Petitioner’s Request for Rehearing is
`denied.
`
`II. STANDARD OF REVIEW
`A party requesting rehearing bears the burden of showing that the
`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
`specifically all matters we misapprehended or overlooked, and the place
`where each matter was addressed previously in a motion, an opposition, or a
`reply. Id. When rehearing a decision on a petition, we review the decision
`for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion
`may be indicated if a decision is based on an erroneous interpretation of law,
`if a factual finding is not supported by substantial evidence, or if the
`decision represents an unreasonable judgment in weighing relevant factors.
`See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir.
`2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re
`Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). With this in mind, we
`address the arguments presented by Petitioner.
`
`III. ANALYSIS
`Claim 4 recites, “said printed circuit board has a height of 1 to 1.2
`inches perpendicular to said contact strip.” Ex. 1001, 8:20–21. In our
`Decision on Institution, we determined, inter alia, that “Petitioner has not
`
`2
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`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.’” Dec. 17.
`In its Request for Rehearing, Petitioner argues the following: (1) the
`Petition did not argue that Simpson required modification (Req. Reh’g 2–4);
`(2) the Petition explains why one of ordinary skill in the art would have
`combined Simpson and the Intel Specification (id. at 4–6); (3) the Petition
`explains how one of ordinary skill in the art would have combined Simpson
`and the Intel Specification (id. at 6–8); and (4) the limitation recited in claim
`4 is not entitled to patentable weight (id. at 8–9). We address each argument
`in turn.
`
`A. Whether Simpson Teaches Claim 4
`Petitioner argues that “claim 4 requires no changes to the Simpson
`design to be rendered obvious.” Req. Reh’g 2; see also id. (“The chip
`design of Simpson remains unchanged.”). According to Petitioner,
`“Simpson places no restriction on height at all – either of the circuit board or
`of the chips. The invention of Simpson could be implemented at any size
`circuit board with any size of chips and sockets that would be desirable to
`one of ordinary skill in the art.” Id. at 3. Thus, “it is not a question of
`changing Simpson, but rather that ‘Simpson could easily be constructed with
`a height in the range of 1 to 1.2 inches,’ which is a height that ‘had been
`standardized for some time’ when the ’414 Patent was filed.” Id. (quoting
`Ex. 1006 (“Subramanian Decl.”) ¶ 291).
`
`
`1 The quoted language appears in paragraph 95 of the Subramanian
`Declaration. We understand “29” to be a typographical error.
`
`3
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`
`Although Petitioner objects to our use of the word “modified” in the
`Decision on Institution, we are not persuaded that it mischaracterizes
`Petitioner’s argument. Petitioner identified nothing in Simpson that teaches
`explicitly “a height of 1 to 1.2 inches perpendicular to said contact strip,” as
`recited in claim 4. Instead, in the claim-by-claim analysis, the Petition refers
`to “limit[ing]” Simpson (Pet. 36) and “apply[ing]” standardized dimensions
`and tolerances to Simpson (Pet. 37). Earlier in the analysis, the Petition
`states, “one of ordinary skill in the art at the priority date of the ’414 Patent
`would have been motivated to modify Simpson based on the design
`dimensions of the Intel Specification.” Id. at 14 (emphasis added); see also
`id. at 15 (“One of ordinary skill in the art would recognize that modifying
`Simpson to comply with the physical constraints supplied by the Intel
`Specification would be a way to modernize Simpson to work with current
`motherboards and contemporary technology.” (emphasis added)). Dr.
`Subramanian testifies that Simpson would “incorporate the constraints” and
`“would be constrained and adapted to comply with the design
`specifications—specifically the physical dimensions—described in the Intel
`Specification” (Ex. 1006 ¶ 38). Dr. Subramanian further testifies that “[o]ne
`of ordinary skill in the art would have been motivated to modify Simpson
`based on the design dimensions of the Intel Specification and would have
`had a reasonable expectation of success when doing so.” Ex. 1006 ¶ 38
`(emphasis added). As a result, we are not persuaded that we
`misapprehended Petitioner’s argument when we characterized it as
`proposing a modification of Simpson.
`
`4
`
`
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`IPR2016-01622
`Patent 6,850,414 B2
`
`
`B. Whether Petitioner’s Reason to Combine Simpson
`and the Intel Specification was Adequate
`Petitioner argues that the Petition “set forth several reasons why a
`person of ordinary skill in the art would be motivated to use the invention of
`Simpson on a circuit board that is between 1 inch and 1.2 inches as
`described in the Intel Specification.” Req. Reh’g 4. Specifically, Petitioner
`points to its argument that “modifying Simpson to comply with the physical
`constraints supplied by the Intel Specification would be a way to modernize
`Simpson to work with current motherboards and contemporary technology”
`(id. at 5 (citing Pet. 15)), and that by “mid-2001, the dimensions of printed
`circuit boards had been standardized for some time” (id. (citing Pet. 36)).
`Petitioner also argues that the Petition “explains how one of ordinary
`skill would have been able to use the dimensions from the Intel Specification
`with the chip design of Simpson.” Req. Reh’g 6. Specifically, Petitioner
`points to its argument that “any person of ordinary skill in the art would
`know to take the design of Simpson and apply the standardized dimensions
`and tolerances described in the Intel Specification.” Id. at 6–7 (citing Pet.
`36–37). Petitioner concludes that
`one of ordinary need merely use the images and dimensions of
`the Intel Specification while building the memory module of
`Simpson to satisfy the requirements of claim 4. Only routine
`knowledge and the disclosure of prior art is required to apply
`Simpson to a standard sized printed circuit board (as claimed).
`Id. at 7.
`Petitioner’s argument is unavailing. Simpson teaches a printed circuit
`board with a height sufficient to accommodate the components mounted
`thereon—i.e., two rows of horizontally-oriented memory chips 12A–H.
`
`5
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`Petitioner relies upon both rows of memory chips as teaching “at least nine
`identically designed integrated semiconductor memories,” as recited in claim
`1. Pet. 18–19. The Intel Specification, by contrast, teaches a single row of
`vertically-oriented memory chips. Ex. 1003, 7. The Petition and Dr.
`Subramanian propose modifying the height of Simpson’s printed circuit
`board, but do not address whether a height in the range of 1 to 1.2 inches
`would be sufficient to accommodate two rows of horizontally-oriented
`memory chips, as taught by Simpson. Neither the Petition nor Dr.
`Subramanian addresses, for example, the dimensions of the components
`taught by Simpson, whether two rows of memory chips would fit on a
`printed circuit board that has a height of only 1 to 1.2 inches, or—if the
`memory chips taught by Simpson would not fit—what a person of ordinary
`skill in the art would have known about the dimensions of similar memory
`chips as of the critical date that would have made it obvious to fit two rows
`of them on a printed circuit board having a height of only 1 to 1.2 inches.
`In its Rehearing Request, Petitioner does not identify where in the
`Petition these issues were addressed. As a result, we are not persuaded that
`we misapprehended or overlooked any arguments and evidence when we
`concluded that “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.’” Dec. 17.
`
`C. Whether Claim 4 is Entitled to Patentable Weight
`Petitioner argues that the circuit board height recited in claim 4 is a
`design choice that is not entitled to independent patentable weight. Req.
`Reh’g 8–9 (citing In re Rose, 220 F.2d 459 (C.C.P.A. 1955); In re Applied
`Materials, Inc., 692 F.3d 1289 (Fed. Cir. 2012)). Although the Petition uses
`
`6
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`the phrase “design choice” twice in the analysis for claim 4 (Pet. 36), it does
`not include any argument that the limitation recited in claim 4 is not entitled
`to patentable weight. Moreover, the Petition cites neither In re Rose nor In
`re Applied Materials, Inc. As a result, we could not have overlooked or
`misapprehended this argument because it was not made in the Petition.
`
`IV. ORDER
`For the reasons given, it is:
`ORDERED that Petitioner’s Request for Rehearing (Paper 11) is
`denied.
`
`7
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`For PETITIONER:
`
`David Hoffman
`FISH & RICHARDSON P.C.
`IPR37307-0007IP1@fr.com
`hoffman@fr.com
`
`Martha Hopkins
`LAW OFFICES OF S.J. CHRISTINE YANG
`IPR@sjclawpc.com
`mhopkins@sjclawpc.com
`
`For PATENT OWNER:
`
`Kenneth Weatherwax
`Nathan Lowenstein
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`lowenstein@lowensteinweatherwax.com
`
`
`
`
`
`8
`
`
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