Paper: 42
`Trials@uspto.gov
`571-272-7822 Entered: June 11, 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.
`
`
`
`
`ORDER
`Granting Petitioner’s Request for Rehearing and
`Denying Petitioner’s Motion to Limit the Petition
`37 C.F.R. § 42.71(a),(d)
`
`
`Trials@uspto.gov
`571-272-7822 Entered: June 11, 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.
`
`
`
`
`ORDER
`Granting Petitioner’s Request for Rehearing and
`Denying Petitioner’s Motion to Limit the Petition
`37 C.F.R. § 42.71(a),(d)
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`
`I.
`
`INTRODUCTION AND SUMMARY OF THE DECISION
`
`
`
`Kingston Technology Company, Inc. (“Petitioner”) “requests
`
`rehearing [of the Final Written Decision (Paper 35, “Final Dec.”)] to address
`
`the effects of the Supreme Court’s decision on SAS Inst., Inc. v. Iancu, 584
`
`U.S. ___ (U.S. Apr. 24, 2018) on this trial, prior to the matter going to any
`
`appeal.” Paper 40 (“Petitioner’s Request” or “Pet. Req. Reh’g”), 1. No
`
`challenge of claims 2–4 was instituted in the original Institution Decision
`
`(Paper 7, “Inst. Dec.”). The Final Written Decision did not include an
`
`explicit conclusion as to the patentability of those claims, but did include an
`
`analysis of proposed substitute claim 9, which includes the subject matter of
`
`claim 4. As part of its submission, Petitioner includes a motion requesting
`
`“that the Board limit the petition to exclude review of claims 2 and 3.” Id.
`
`at 1. Petitioner requests that the Final Written Decision be modified to
`
`include a decision with respect to the patentability of claim 4 and of claims 2
`
`and 3 “to the extent [the Petition is] not limited.” Id. at 1–2.
`
`
`
`After considering Petitioner’s Request and the response of Patent
`
`Owner Polaris Innovations Ltd. (Paper 41, “PO Resp. Req. Reh’g”), we:
`
`1) grant Petitioner’s request for rehearing, 2) modify the institution decision
`
`to institute on all of the challenged claims and all of the grounds presented in
`
`the Petition, 3) deny Petitioner’s motion to limit the Petition, and 4) modify
`
`the Final Written Decision to include our determination that Petitioner has
`
`demonstrated by a preponderance of the evidence that claim 4 is
`
`unpatentable and that Petitioner has not demonstrated by a preponderance of
`
`the evidence that claims 2 and 3 are unpatentable.
`
`2
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`
`II. PROCEDURAL POSTURE
`
`
`
`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.
`
`Patent Owner filed a Preliminary Response to the Petition. Paper 6. The
`
`Board instituted inter partes review of claims 1 and 5–8 on the ground of
`
`obviousness under 35 U.S.C. § 103(a) over Simpson. Paper 7, 23. The
`
`Board did not institute a review as to dependent claims 2–4 and did not
`
`institute on all grounds. Id. at 6, 23. Specifically, the instituted review did
`
`not include Petitioner’s obviousness challenge of claims 1–8 based on the
`
`combination of Simpson and the Intel Specification, or Petitioner’s
`
`obviousness challenge of claims 1–8 based on the Intel Specification.
`
`Petitioner filed a Request for Rehearing of The Board’s Institution Decision
`
`on Claim 4 (Paper 11), which was denied (Paper 16).
`
`
`
`Petitioner filed another 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 rehearing of that decision
`
`was denied. IPR2017-00974, Papers 9, 11.
`
`
`
`In the present proceeding and subsequent to the institution decision,
`
`Patent Owner filed a Motion to Amend (“MTA,” Paper 18) seeking to cancel
`
`the instituted challenged claims and proposing to substitute a newly-
`
`presented claim 9 for dependent claim 8. Patent Owner characterized the
`
`proposed substitute claim 9 as “the same as challenged claim 8 in every
`
`respect, except that it simply adds the limitations of claim 4 . . . .” MTA 1.
`
`Patent Owner did not file a Response to the Petition. Subsequently,
`
`3
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`Petitioner filed an Opposition to Patent Owner’s Motion to Amend
`
`(Paper 20), and Patent Owner filed a Reply to Petitioner’s Opposition to
`
`Motion to Amend (Paper 23). Petitioner filed a Surreply to Patent Owner’s
`
`Motion to Amend (Paper 28). Thereafter Patent Owner filed a Brief
`
`Addressing Impact of Aqua Products v. Matal1 (Paper 30). An oral hearing
`
`was held on November 14, 2017. See Paper 34 (Hearing Transcript).
`
`
`
`On February 5, 2018, the Board issued a Final Written Decision.
`
`Paper 35. In that Decision, we determined that Petitioner had demonstrated
`
`by a preponderance of the evidence that claims 1 and 5–8 of the ’414 patent
`
`are unpatentable under 35 U.S.C. § 103(a) as obvious over Simpson.
`
`Additionally, we determined, based on a preponderance of the evidence in
`
`the entire trial record, that proposed substitute claim 9 is unpatentable, under
`
`35 U.S.C. § 103(a), as obvious over Simpson and the Intel Specification.
`
`Patent Owner filed, on March 7, 2018, a request for rehearing of the Final
`
`Written Decision (Paper 36), which was denied on April 12, 2018
`
`(Paper 37).
`
`
`
`On April 24, 2018, the Supreme Court held that a decision to institute
`
`under 35 U.S.C. § 314 may not institute on less than all claims challenged in
`
`the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S.
`
`Apr. 24, 2018).
`
`
`
`On May 8, 2018, Petitioner sent to the Board and Patent Owner an
`
`email stating, in pertinent part: “Pursuant to the guidance provided by the
`
`Chief Judge in his recent webinar on SAS, Petitioner requests a conference
`
`call to ask permission to file an out of time request for reconsideration
`
`
`
`1 Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).
`
`4
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`seeking institution and a FWD on non-instituted claim 4 in [this] IPR.”
`
`Ex. 3002. Later that same day, Patent Owner replied: “Patent Owner is
`
`prepared to explain why Petitioner’s proposed request should not be
`
`authorized pursuant to the guidance provided on SAS.” Id. On May 11,
`
`2018, Judges Barrett and Homere participated in a conference call with the
`
`parties to discuss the parties’ positions regarding Petitioner’s request. A
`
`transcript of that call has been filed as Exhibit 1026.
`
`
`
`On May 21, 2018, we granted Petitioner’s request to excuse the
`
`lateness of the filing of a request for rehearing, authorized Petitioner to file a
`
`request for rehearing, authorized Patent Owner to file an opposition thereto,
`
`and authorized the parties to file a Joint Motion to Limit the Petition by
`
`removing specific claims and grounds upon which we did not institute
`
`review in the original Decision on Institution. Paper 39, 8.
`
`III. ANALYSIS OF PETITIONER’S REQUEST FOR REHEARING
`
`
`
`A party requesting rehearing bears the burden of showing that the
`
`decision should be modified. 37 C.F.R. § 42.71(d). Petitioner argues that
`
`we should modify the Final Written Decision, in light of the Supreme
`
`Court’s decision in SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S.
`
`Apr. 24, 2018), to address all of the claims challenged in the Petition. Pet.
`
`Req. Reh’g 1–2. SAS issued after the Final Written Decision in this case but
`
`before the expiration of the time for the parties to appeal that decision.
`
`Petitioner argues that addressing the previously non-instituted claims now,
`
`rather than upon a remand from an appeal, will be the more efficient result
`
`and will conserve time and resources. See Req. Reh’g 5; Ex. 1026
`
`(Conference Call Transcript), 4:13–5:2, 21:18–22:22.
`
`5
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
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`
`
`Patent Owner argues, inter alia, that the Board has been divested of
`
`jurisdiction to grant Petitioner’s request, that Petitioner “forfeited” or waived
`
`any argument against partial institution by not raising it earlier, and that
`
`Petitioner’s Request fails to identify anything we misapprehended or
`
`overlooked. PO Resp. Req. Reh’g 1–4. We have considered all of Patent
`
`Owner’s arguments, including but not limited to these, and do not find them
`
`persuasive.
`
`
`
`As to jurisdiction, Patent Owner impliedly argues that the expiration
`
`of the time to file a request for rehearing without prior authorization renders
`
`the judgment final and divests the Board of jurisdiction over the proceeding.
`
`Id. at 2 (citing 37 C.F.R. § 42.71(d)(2)). Patent Owner, in its analysis, fails
`
`to acknowledge that 37 C.F.R. § 90.3 establishes the deadline for the filing
`
`of an appeal, not the rule regarding the timing of a request for
`
`reconsideration. That deadline was reset by Patent Owner’s request for
`
`rehearing (Paper 36) to sixty-three days from the denial of that request
`
`(Paper 37) on April 12, 2018. As of this time, we understand that neither
`
`party has filed a notice of appeal. See Ex. 1026 (Conference Call
`
`Transcript), 8:19–22 (Patent Owner’s counsel stating: “It’s already been an
`
`appealable decision in this case, but the deadline is ticking set by the
`
`director. And, frankly, a notice of appeal could already have been filed.”).
`
`We have jurisdiction to reconsider our Final Written Decision in light of
`
`SAS.
`
`
`
`We do not find Patent Owner’s waiver argument to be persuasive, and
`
`we decline to reject the Request for Reconsideration based on an alleged
`
`waiver or forfeiture. As for Patent Owner’s argument that the Request fails
`
`to identify anything we misapprehended or overlooked, we deem
`
`6
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`Petitioner’s SAS–based argument to constitute an adequate allegation that we
`
`erred by limiting the scope of the instituted trial.
`
`
`
`In light of SAS and in consideration of expediency and of the
`
`conservation of resources, we grant Petitioner’s Request for Rehearing.
`
`Accordingly, we now reconsider our issuance of a Final Written Decision
`
`addressing the patentability of less than all the claims challenged in the
`
`Petition.
`
`IV. MODIFICATION OF THE INSTITUTION DECISION
`
`
`
`As mentioned, the Board, in the original Institution Decision, did not
`
`institute a review as to dependent claims 2–4 and did not institute on all
`
`grounds. On April 24, 2018, the Supreme Court, held that a decision to
`
`institute under 35 U.S.C. § 314 may not institute on less than all claims
`
`challenged in the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at
`
`*10 (U.S. Apr. 24, 2018). In our Decision on Institution, we determined that
`
`Petitioner demonstrated a reasonable likelihood that it would establish that at
`
`least one of the challenged claims of the ’414 patent is unpatentable.
`
`Paper 7, 23. We modify our institution decision to institute on all of the
`
`challenged claims and all of the grounds presented in the Petition. See
`
`Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018),
`
`available at https://www.uspto.gov/patents-application-process/patent-trial-
`
`and-appeal-board/trials/guidance-impact-sas-aia-trial.
`
`V.
`
`
`
` ANALYSIS OF PETITIONER’S MOTION TO LIMIT THE PETITION
`
`In our Order of May 21, 2018, we noted that “Petitioner primarily is
`
`requesting the institution of and a final written decision regarding originally
`
`non-instituted claim 4,” and we asked the parties to indicate clearly their
`
`7
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`respective position with regard to originally non-instituted claims 2 and 3.
`
`Paper 39, 7. We also suggested that the parties consider, for example, filing
`
`a request for partial adverse judgment concerning some of the originally
`
`non-instituted claims or filing a Joint Motion to Limit the Petition by
`
`removing specific claims and grounds upon which we did not institute
`
`review in the original Decision on Institution. Id. No such joint motion was
`
`filed, and Petitioner represents that Patent Owner indicated that it opposes
`
`removing claims 2 and 3 from the Petition and of “exclude[ing] review of
`
`claims 2 and 3.” Pet. Req. Reh’g 1; see PO Resp. Req. Reh’g (Patent Owner
`
`arguing that Petitioner’s “unilateral” motion is unauthorized).
`
`
`
`Petitioner’s motion is little more than a prayer for relief. See Pet. Req.
`
`Reh’g 1 (“Patent Owner opposes [removing claims 2 and 3 from the
`
`Petition]. Thus, Kingston moves (at least on its own) that the Board limit
`
`the petition to exclude review of claims 2 and 3.”). Petitioner offers no
`
`persuasive argument as to why we should now allow Petitioner—in the face
`
`of opposition from Patent Owner—to withdraw claims 2 and 3 from
`
`consideration and thereby to avoid a Final Written Decision on Petitioner’s
`
`patentability challenges to those claims.
`
`
`
`
`
`We deny Petitioner’s motion to limit the Petition.
`
`VI. MODIFICATION OF THE FINAL WRITTEN DECISION
`
`A. Claims 2 and 3
`
`Claims 2 and 3 each depend directly from independent claim 1, which
`
`recites “[a]n electronic printed circuit board configuration.” Ex. 1001, 7:24,
`
`8:4–19. Dependent claim 2 pertains to the position of the error correction
`
`chip relative to a semiconductor memory on the circuit board. Id. at 8:4–8.
`
`Dependent claim 3 pertains to the height of the circuit board as a function of
`
`8
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`the dimensions of the error correction chip and the circuit board’s contact
`
`strip. Id. at 8:10–19.
`
`
`
`The Petition challenges dependent claims 2 and 3 on three
`
`obviousness grounds—1) over Simpson alone, 2) over Simpson and the Intel
`
`Specification, and 3) over the Intel Specification alone. Pet. 8–9. Patent
`
`Owner filed a Preliminary Response presenting arguments specifically
`
`directed to claims 2 and 3. See, e.g., Prelim. Resp. 34–38.
`
`
`
`In the original Institution Decision, we considered the arguments by
`
`both parties concerning claims 2 and 3, and we determined that Petitioner
`
`had not met its burden as to those claims. Regarding Petitioner’s challenge
`
`of claims 2 and 3 as being obvious over Simpson, we determined that
`
`“Petitioner has not explained sufficiently why a person of ordinary skill in
`
`the art would have modified Simpson . . . [and] on the record before us, we
`
`are not persuaded that Petitioner has provided an articulated reasoning with
`
`some rational underpinning to support the legal conclusion of obviousness.”
`
`Inst. Dec. 16; see id. (noting that Petitioner, for claim 3, relied on the same
`
`proposed modification as for claim 2). For similar reasons—and specifically
`
`due to a lack of adequate articulated reasoning to combine or modify the
`
`references—we determined that Petitioner had not established a reasonable
`
`likelihood of prevailing on the other two asserted grounds. See id. at 17–18,
`
`20–22.
`
`
`
`Petitioner Kingston now affirmatively states that “Kingston disclaims
`
`any challenge to claims 2 and 3 and therefore presents no briefing on them
`
`here.” Pet. Req. Reh’g 1; cf. PO Resp. Req. Reh’g 10 (arguing that we must
`
`find claims 2 and 3 not unpatentable based on this disclaimer).
`
`9
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`
`
`In light of Petitioner’s disclaimer of any challenge to claims 2 and 3
`
`and for the reasons set forth in the Institution Decision, we determine that
`
`Petitioner has not shown by a preponderance of the evidence that dependent
`
`claims 2 and 3 are unpatentable. We modify the Final Written Decision
`
`accordingly.
`
`B. Claim 4
`
`
`
`Claim 4 depends directly from independent claim 12 and pertains to
`
`the height of the circuit board of claim 1. Specifically, claim 4 recites: “The
`
`printed circuit board according to claim 1, wherein: said printed circuit
`
`board has a height of 1 to 1.2 inches perpendicular to said contact strip.”
`
`Ex. 1001, 8:20–21.
`
`
`
`As discussed in the Final Written Decision, a trial was not originally
`
`instituted as to claim 4 primarily because we determined Petitioner had not
`
`provided in the Petition an adequate articulation of a reason to combine or
`
`modify the references. Final Written Decision 16–19. Nonetheless, claim 4
`
`and its subject matter have been discussed repeatedly throughout the trial.
`
`After the original Institution Decision and at a relatively early stage of this
`
`proceeding, Patent Owner moved to amend by proposing substitute claim 9.
`
`MTA (Paper 18) 2. As characterized by Patent Owner, that proposed
`
`substitute claim 9 is “the same as challenged [dependent] claim 8 in every
`
`respect, except that it simply adds the limitations of claim 4 . . . .” MTA 1.
`
`Proposed substitute claim 9 is the combination of the limitations of
`
`
`
`2 A trial was instituted as to the Petitioner’s challenge of independent
`claim 1 and Patent Owner opted to not file a Patent Owner Response to the
`Petition. Final Written Decision 11. We have determined that Petitioner
`had proven the unpatentability of independent claim 1. Id. at 11–14, 27.
`
`10
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`independent claim 1, which define the printed circuit board configuration,
`
`with the addition of the circuit board width of dependent claim 8 and the
`
`addition of the circuit board height of dependent claim 4. Thus, claim 4 is
`
`broader than proposed substitute claim 9 in that claim 4 recites a height
`
`limitation but not a width limitation. By proposing the substitute claim,
`
`Patent Owner placed at issue the patentability of the subject matter of
`
`claim 4. The arguments in the Motion to Amend clearly reflect Patent
`
`Owner’s belief that the inclusion of the subject of claim 4 (the height
`
`limitation) in the proposed substitute claim is that which rendered the
`
`proposed substitute claim patentable. See MTA 3–4. The Motion to Amend
`
`refers to claim 4 explicitly or its height limitation at least a dozen times. See
`
`MTA 1–4. Thus, there can be no question that Patent Owner was on notice
`
`at least as early as its filing of the Motion to Amend that the subject matter
`
`of claim 4 would be an issue for trial.
`
`
`
`Patent Owner was given many opportunities to address the
`
`patentability of the subject matter of the proposed substitute claim 9,
`
`including the opportunity to respond to Petitioner’s challenges, which
`
`necessarily involved addressing the subject matter of claim 4. For example,
`
`Patent Owner filed a reply to Petitioner’s opposition to the motion to amend,
`
`where Petitioner specifically addressed claim 4 and its subject matter. See
`
`Paper 20, 1–14 (Petitioner’s Opposition); id. at 9 (“Therefore, substitute
`
`claim 9 (and indeed original claim 4) of the ’414 Patent are not patentable
`
`under 35 § U.S.C. 103.”); Paper 23, 3 (Patent Owner’s Response to
`
`Petitioner’s Opposition, arguing incorrectly that the limitation of claim 4 is
`
`“a limitation the Board has already repeatedly found was not in the
`
`references raised by Petitioner.”). Patent Owner opted to utilize much of its
`
`11
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`
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`IPR2016-01622
`Patent 6,850,414 B2
`
`opportunities by making procedural arguments, although it did make some
`
`substantive arguments primarily directed to limitations of the underlying
`
`independent claim 1. See, e.g., Paper 23, 9 (arguing that Petitioner failed to
`
`show the unpatentability of claim 4 earlier and should not be allowed to
`
`challenge the subject matter of claim 4 after the Decision on Institution); id.
`
`at 10–12 (arguing, inter alia, the “individually connected” limitation of
`
`claim 1). In addition to briefing, Patent Owner had the opportunity to
`
`address the subject matter of claim 4 at the oral argument. See, e.g., Paper
`
`34 (hearing transcript), 86:19–87:2 (Counsel for Patent Owner: “But you
`
`could also say that [the proposed substitute claim is] identical to claim 4
`
`except that it adds an additional limitation that was already found in claim 8.
`
`In other words, it is like a narrowed claim 4, and claim 4 was already denied
`
`institution.”); id. at 87:22–88:9.
`
`
`
`We are not persuaded by Patent Owner’s argument that it never had
`
`the opportunity to respond to the institution of a trial on claim 4. PO Resp.
`
`Req. Reh’g 7. It was Patent Owner’s actions that placed the subject matter
`
`of claim 4 at issue in the trial after we initially denied a review of that claim.
`
`Thus, it is Patent Owner that, in some sense, instituted a review of the
`
`subject matter of claim 4. As discussed above, that review began at a
`
`relatively early stage of the trial and Patent Owner had several opportunities
`
`to respond to Petitioner’s arguments after placing the subject matter of
`
`claim 4 again before us for review.
`
`
`
`We agree with Petitioner that this case is atypical and that, on the
`
`record developed during trial, we may proceed to a final decision as to the
`
`patentability of claim 4 without the need for further briefing. Pet. Req.
`
`Reh’g 2. We do not find persuasive Patent Owner’s argument that we
`
`12
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`IPR2016-01622
`Patent 6,850,414 B2
`
`should consider nothing in the record other than the argument and evidence
`
`submitted with the Petition. See PO Resp. Req. Reh’g 5–7; see also
`
`Ex. 1026 (Conference Call Transcript), 28:15–22 (proposing that all
`
`post-institution filings be expunged). The post-institution evidence and
`
`arguments pertaining to the subject matter of claim 4 came into the record as
`
`a direct result of Patent Owner reintroducing that subject matter into the
`
`trial, not as a unilateral attempt by Petitioner to shore up the Petition. We
`
`similarly do not find persuasive Patent Owner’s argument that we should
`
`limit our consideration to a single ground that is different than the ground
`
`upon which Petitioner demonstrated the unpatentability of the proposed
`
`amended claim 9. PO Resp. Req. Reh’g 8–10. We consider the entirety of
`
`the record in evaluating the patentability of claim 4.
`
`
`
`In the Final Written Decision, “we determine[d], based on a
`
`preponderance of the evidence in the entire trial record, that proposed
`
`substitute claim 9 is unpatentable, under 35 U.S.C. § 103(a), as obvious over
`
`Simpson and the Intel Specification.” Final Written Decision 27. In
`
`arriving at that determination, we necessarily analyzed the patentability of
`
`the subject matter of dependent claim 4, which, as mentioned, is broader in
`
`scope than that of proposed substitute claim 9. See id. at 11–14
`
`(patentability of the underlying independent claim 1); id. at 21–27
`
`(patentability of proposed substitute claim 9, including a specific analysis of
`
`the height limitation of claim 4 beginning on page 24). Although we did not
`
`identify explicitly claim 4 as unpatentable in the conclusion or order of the
`
`Final Written Decision, we, nonetheless, effectively ruled on the
`
`patentability of that claim. See Pet. Req. Reh’g 2.
`
`13
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`
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`IPR2016-01622
`Patent 6,850,414 B2
`
`
`
`We determine, for the reasons set forth in the Final Written Decision,
`
`that Petitioner has shown by a preponderance of the evidence that claim 4 is
`
`unpatentable as obvious over Simpson and the Intel Specification.3 We
`
`modify the Final Written Decision accordingly.
`
`VII. CONCLUSION
`
`
`
`We determine, on the facts of this case and because Petitioner seeks
`
`SAS-based action, that it is appropriate for us to reconsider our Final Written
`
`Decision and to modify that decision so as to explicitly address the
`
`patentability of all claims challenged in the patent. Therefore, with respect
`
`to claims 2–4 of the ’414 patent, we modify the conclusion in our Final
`
`Written Decision as follows: 1) Petitioner has not demonstrated by a
`
`preponderance of the evidence that claims 2 and 3 of the ’414 patent are
`
`unpatentable under any ground asserted in the Petition; and 2) Petitioner has
`
`demonstrated by a preponderance of the evidence that claim 4 of the ’414
`
`patent is unpatentable, under 35 U.S.C. § 103(a), as obvious over Simpson
`
`and the Intel Specification.
`
`VIII. ORDER
`
`For the foregoing reasons, it is
`
`ORDERED that Petitioner’s request for rehearing is granted;
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`FURTHER ORDERED that our institution decision is modified to
`
`
`
`
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`
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`include review of all challenged claims and all grounds presented in the
`
`Petition;
`
`
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`3 Because this determination is dispositive, we do not reach any other ground
`asserted against claim 4.
`
`14
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`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`
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`FURTHER ORDERED that Petitioner’s Motion to Limit the Petition
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`is denied;
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`
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`FURTHER ORDERED that claims 2 and 3 of the ’414 patent have
`
`not been proven to be unpatentable;
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`
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`FURTHER ORDERED that claim 4 of the ’414 patent is
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`unpatentable;
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`
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`FURTHER ORDERED that the Final Written Decision is modified to
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`include the analysis set forth above regarding the patentability of claims 2–4.
`
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`
`
`
`
`
`15
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`For PETITIONER:
`
`David Hoffman
`FISH & RICHARDSON P.C.
`hoffman@fr.com
`
`Martha Hopkins
`LAW OFFICES OF S. J. CHRISTINE YANG
`mhopkins@sjclawpc.com
`
`
`
`For PATENT OWNER:
`
`Kenneth Weatherwax
`Nathan Lowenstein
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`lowenstein@lowensteinweatherwax.com
`
`
`
`16
`
`
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