UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner
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`v.
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`POLARIS INNOVATIONS LTD.,
`Patent Owner.
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`Case IPR2016-01622
`Patent 6,850,414
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`PETITIONER’S SURREPLY TO PATENT OWNER’S MOTION TO
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`AMEND
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner
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`v.
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`POLARIS INNOVATIONS LTD.,
`Patent Owner.
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`Case IPR2016-01622
`Patent 6,850,414
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`PETITIONER’S SURREPLY TO PATENT OWNER’S MOTION TO
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`AMEND
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`Case IPR2016-01622
`Attorney Docket: 37307-0007IP1
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`Pursuant to the Board’s order of October 10, 2017, Petitioner submits this
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`response to Patent Owner’s Motion to Amend Reply (hereinafter “MTA Reply”) in
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`view of Aqua Products, Inc. v. Matal, No. 2015-1177, 2017 WL 4399000 (Fed.
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`Cir. October 4, 2017). For the reasons set forth hereinafter, Petitioner asserts that
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`proposed substitute claim 9 is unpatentable.
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`I.
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`“INDIVIDUALLY CONNECTED” DOES NOT EXCLUDE A
`CONNECTION SOCKET
`The Board has already rejected Patent Owner’s individually connected
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`argument, and it should do so again. As it did in its Preliminary Response, see
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`PPOR at 31-32, PO asserts that Simpson fails to disclose the “housing of each one
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`of said semiconductor memories . . . being individually connected to said printed
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`circuit board,” as recited in canceled claim 1, because Simpson’s ECC chip is
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`connected to the PCB via a socket. MTA Reply at 10-11. As the Board has already
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`noted, this argument relies on a construction of “connected” that the Board
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`declined to adopt. Inst. Dec. at 13. The Board correctly acknowledged that “[t]he
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`’414 patent does not explicitly define ‘connected’” or support a construction that
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`would exclude connection by a connector such as a socket. Id. at 8.
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`PO now suggests that the word “individually” modifies the term
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`“connected” such that the combination (“individually connected”) requires
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`memory chips to be “directly connected to a printed circuit board.” MTA Reply
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`1
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`at 10. PO’s only support for this construction comes from a portion of the
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`Case IPR2016-01622
`Attorney Docket: 37307-0007IP1
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`deposition of Dr. Subramanian that involved a confusing hypothetical arrangement
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`of stacked memory chips, which are not at issue in the ’414 patent. Id. (citing Ex.
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`2012 at 234:6-237:22); see also Ex. 2012 at 222:10-242:25. From this PO asserts
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`because an upper chip housing in the hypothetical stacked chip arrangement
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`(shown in Ex. 2013) “has no physical connection to the printed circuit board, it
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`would therefore not be individually connected” to a PCB and that thus a chip in a
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`socket would not be individually connected. This line of reasoning is severely
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`flawed. Unlike a chip stack, a socket is explicitly a means for connecting
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`individual chips to a PCB. Whether a chip is plugged into a PCB socket or
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`soldered onto PCB contact pads, the chip is still individually connected to the PCB,
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`both mechanically and electrically.
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`Finally, even if the phrase “individually connected” were found to require a
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`direct physical connection between a chip housing and a PCB, Simpson teaches
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`such connections. See Simpson Fig. 1 chips 12a-12h (which are described on page
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`10 as being “electrically and mechanically connected to the substrate. The
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`preferred way is to use a soldering process to connect terminals of each device to
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`the electrically conducting interconnections of the substrate.”). Moreover, any
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`contention by PO that such connections do not also apply to Simpson’s ECC chip
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`16a (shown in Fig. 1 as connected via a socket) is also misplaced. Simpson
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`2
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`explicitly states that “[t]he quantity, position and type [of memory chips and
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`Case IPR2016-01622
`Attorney Docket: 37307-0007IP1
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`sockets] are dependent upon the design preferences of the module designer.” Id.
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`at 14:10-12 (emphasis added); see also Ex. 2012 at 261:5-262:18 (Dr.
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`Subramanian explaining the flexibility of Simpson’s design and rationale for
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`replacing sockets with solder).
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`II.
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`PETITIONER HAS PROVIDED AMPLE EVIDENCE THAT
`SIMPSON IN VIEW OF THE INTEL SPECIFICATION RENDER
`OBVIOUS SUBSTITUTE CLAIM 9
`In the Opposition, Petitioner provided ample uncontested evidence that it
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`was both possible and within the skill of a POSITA to design a memory module
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`that incorporates both the standard PCB size (e.g., 5.25” by 1.2”) of the Intel
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`Specification and Simpson’s chip arrangement. See e.g., Opposition at 4-11; Ex.
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`1022; Ex. 1011; Ex. 1012; Ex. 1013; Ex. 1014. Petitioner also explained at length
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`various uncontested reasons that a POSITA would be motivated to produce such a
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`design. See e.g., Id. at 11-14; Ex. 1022; Ex. 1017. Thus, PO chose to attack
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`Simpson’s age and Simpson’s purpose; both of which are irrelevant to
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`patentability. See MTA Reply at 11. According to the PO, Simpson, which was
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`published in 1995, is “ancient” in relation to the ’414 patent. However, the mere
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`age of a prior art reference has no bearing on patentability. In re Wright, 569 F.2d
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`1124 (CCPA 1977) (“The mere age of the references is not persuasive of the
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`unobviousness of the combination of their teachings.”). The fact that Simpson was
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`3
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`motivated to solve a different problem than the ’414 patent also does not diminish
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`Case IPR2016-01622
`Attorney Docket: 37307-0007IP1
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`Simpson’s explicit disclosure that reads on the limitations of substitute claim 9.
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`KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 404 (2007); In re
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`Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006); Cross Med. Prods., Inc. v. Medtronic
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`Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005); State Contracting &
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`Eng’ g Corp. v. Condotte America, Inc., 346 F.3d 1057, 1068 (Fed. Cir. 2003).
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`Instead, PO’s arguments reveal a fundamental misunderstanding of the law
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`of obviousness. PO consistently argues that the cited references must be directed to
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`solving the same problem as the ’414 patent and that the teachings of secondary
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`references must be bodily incorporated into the physical apparatus of the primary
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`reference. See e.g., PPOR at 2, 6, 12, 14, 15, 19, 39; Ex. 2012 at 164, 166-167,
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`173-178, 187-192, 224, 264; MTA Reply at 12.
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`However, in KSR the Supreme Court rejected the idea that prior art
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`references need to address the same “problem that the patentee was trying to solve”
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`and rejected a strict adherence to the teaching-suggestion-motivation (TSM) test.
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`KSR, 550 U.S. at 420, 421. Instead, obviousness under §103 is supported by a
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`“combination of familiar elements . . . when it does no more than yield predictable
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`results.” Id. at 416.
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`Moreover, obviousness does “not require a ‘specific hint or suggestion in a
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`particular reference,’ only a reasoned explanation that avoids conclusory
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`generalizations.” Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324,
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`Case IPR2016-01622
`Attorney Docket: 37307-0007IP1
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`1329 (Fed. Cir. 2009) (citations omitted). Nor does obviousness require bodily
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`incorporation of the teachings of one prior art reference into an apparatus of
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`another prior art reference. Instead, “[t]he test for obviousness is not whether the
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`features of a secondary reference may be bodily incorporated into the structure of
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`the primary reference . . . Rather, the test is what the combined teachings of those
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`references would have suggested to those of ordinary skill in the art.” In re Keller,
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`642 F.2d 413, 425 (C.C.P.A. 1981). See also In re Sneed, 710 F.2d 1544, 1550
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`(Fed. Cir. 1983). Thus, PO’s conception of obviousness is at odds with the Courts’.
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`III. PATENT OWNER MISCHARACTERIZES PETITIONER’S
`PROPOSED COMBINATION OF BECHTOLSHEIM, TOKUNAGA,
`AND KARABATSOS
`PO’s entire argument for opposing Petitioner’s Bechtolsheim ground is the
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`idea that Bechtolsheim does not seek to solve the same problem as the ’414 patent.
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`MTA Reply at 12. But again this is irrelevant to the question of obviousness.
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`Instead, obviousness under §103 is supported by a showing that all the claimed
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`elements were known in the prior art and that a POSITA could have combined the
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`elements as claimed with no change in their respective functions, and the
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`combination would yield nothing more than predictable results. KSR, 550 U.S. at
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`416.
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`5
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`The entirety of substitute claim 9 is directed to the geometric attributes of a
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`Case IPR2016-01622
`Attorney Docket: 37307-0007IP1
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`memory module: a horizontal arrangement of memory chips with a vertical
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`arrangement of an error correction chip all laid out on a 5.25” by 1.2” standard
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`sized PCB. The claim makes no mention of conductor track lengths, specific types
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`of memory (e.g., DRAM vs. SDRAM vs. SIMM), resistor placement, or any other
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`factors that PO has attempted to import into the claims. See e.g., POPR at 2, 8, 12-
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`13. What is more, PO made absolutely no attempt to include such details, which it
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`claims to be so crucial to the ’414 patent, in its amendments to substitute claim 9.
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`Instead, PO simply added a height limitation for the PCB, which was a
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`standardized memory module height before the ’414 patent.
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`Petitioner’s proposed combination of Bechtolsheim, Tokunaga, and
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`Karabstsos disclose all of the claimed elements. Opposition at 17-23. Petitioner has
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`shown how these elements can be combined in an arrangement according to claim
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`9 with no change in the memory chip functions. Id. Petitioner presented
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`uncontested evidence of various sized memory chips from which a POSITA could
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`have choosen to readily achieve the claimed arrangements within a 5.25” by 1.2”
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`area. Id. at 4-11. And, Petitioner presented uncontested evidence of market
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`demands at the time that show why a POSITA would have been motivated to
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`reduce the size of memory modules. Id. at 11-14; KSR, 550 U.S. at 419 (“it often
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`6
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`may be the case that market demand, rather than scientific literature, will drive
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`Case IPR2016-01622
`Attorney Docket: 37307-0007IP1
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`design trends”).
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`IV. KIEHL PROVIDES EVIDENCE OF THE STATE OF THE ART AT
`THE TIME OF THE ’414 PATENT
`PO objects to Petitioner’s use of Kiehl (Exs. 1020, 1021) because Kiehl is
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`not prior art to the ’414 Patent. MTA Reply at 12. But, Petitioner never alleged that
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`Kiehl was prior art. Kiehl was, however, filed in Germany in the same year as the
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`German priority application of the ’414 patent and Kiehl’s disclosure is therefore
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`evidence of the state of the art at the time of the ’414 patent. Compare Ex. 1001
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`with Exs. 1020, 1021 (both were filed within two months of each other in 2001).
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`Moreover, Kiehl provides clear evidence that memory chips existed
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`contemporaneous to the ’414 patent that would have permitted an arrangement of
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`chips according to Simpson’s pattern on a 5.25” by 1.2” PCB. Ex. 1021 at [0002],
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`[0024], FIG. 1; Opposition at 7-8; Ex. 1022 at ¶¶20-22.
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`This is in direct contradiction to PO’s argument that it was not possible to
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`build a memory module having “two rows of memory chips and a height of 1.0-1.2
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`inches.” PPOR at 40. Moreover, the Board relied on this argument, at least in part,
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`in its decision that Petitioner had “not explained adequately how and/or why a
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`person of ordinary skill in the art would have” implemented Simpson’s design on a
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`1.2” high PCB. Inst. Dec. at 18. For this reason, Kiehl is indeed relevant to the
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`patentability of substitute claim 9 because it provides evidence directly
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`7
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`contradicting PO’s key argument. Furthermore, as Petitioner has noted, PO was
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`Case IPR2016-01622
`Attorney Docket: 37307-0007IP1
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`clearly aware of Kiehl and its disclosure of two rows of memory chips that fit
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`within a 1.2” height before PO filed its Motion to Amend. Opposition at 14-15
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`(quoting from PO’s description of Kiehl in Patent Owner’s Response to the
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`Petition in IPR2016-01623).
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`V. UNCONTESTED ARGUMENTS
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`Petitioner respectfully notes that PO has not contested the substance of
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`several of the arguments and accompanying evidence presented in Petitioner’s
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`Opposition. Specifically, PO did not contest the substance of Petitioner’s showing
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`that it was both within the skill level of a POSITA and physically possible to apply
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`Simpson’s chip arrangement, even with the use of sockets, on a 5.25” by 1.2” PCB.
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`Opposition at 4-11. PO did not contest the substance of Petitioner’s arguments and
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`evidence showing market demand to reduce memory module size. Id. at 11-14. PO
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`did not contest the substance of Petitioner’s proposed ground for invalidity of
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`claim 9 over Simpson in view of Karabatsos. Id. at 15-17. Finally, PO did not
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`contest the substance of Petitioner’s arguments that claim limitations directed to
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`arbitrary PCB height limitations are not entitled to independent patentable weight.
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`Id. at 23-25.
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`8
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`Date: October 13, 2017
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`Case IPR2016-01622
`Attorney Docket: 37307-0007IP1
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`Respectfully submitted,
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` /David Hoffman/
`David Hoffman, Reg. No. 54,174
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 512-226-8154
`T: 202-783-2331
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`Martha Hopkins, Reg. No. 46,277
`Law Office of S.J. Christine Young
`17220 Newhope Street
`Suites 101-102
`Fountain Valley, CA 92708
`T: 714-641-4022
`F: 714-641-2082
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`Counsel for Petitioner
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`9
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`Case IPR2016-01622
`Attorney Docket: 37307-0007IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on October
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`13, 2017, a complete and entire copy of this Petitioner’s Surreply to Patent
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`Owner’s Motion to Amend provided via email to the Petitioner by serving the
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`correspondence email address of record as follows:
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`Kenneth J. Weatherwax
`LOWENSTEIN & WEATHERWAX LLP
`1880 Century Park East, Suite 815
`Los Angeles, CA 90067
`PolarInnovs_IPRs@lowensteinweatherwax.com
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`/Edward G. Faeth/
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`Edward G. Faeth
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(202) 626-6420
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`10
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