Case IPR2016-01622
`Patent 6,850,414
`Attorney Docket No. 160831-002USIPR
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`KINGSTON TECHNOLOGY COMPANY, INC.,
`
`Petitioner
`
`v.
`
`POLARIS INNOVATIONS LTD.,
`
`Patent Owner
`____________
`
`Case IPR2016-01622
`
`Patent 6,850,414 B2
`Priority July 2, 2002
`Issued February 1, 2005
`Title: ELECTRONIC PRINTED CIRCUIT BOARD HAVING A PLURALITY
`OF IDENTICALLY DESIGNED, HOUSING-ENCAPSULATED
`SEMICONDUCTOR MEMORIES
`____________
`
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`PATENT OWNER’S MOTION TO AMEND
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`
`Patent 6,850,414
`Attorney Docket No. 160831-002USIPR
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`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
`Priority July 2, 2002
`Issued February 1, 2005
`Title: ELECTRONIC PRINTED CIRCUIT BOARD HAVING A PLURALITY
`OF IDENTICALLY DESIGNED, HOUSING-ENCAPSULATED
`SEMICONDUCTOR MEMORIES
`____________
`
`
`PATENT OWNER’S MOTION TO AMEND
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED ........... 1
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`II.
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`CLAIM LISTING ........................................................................................... 2
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`III. DISCUSSION ................................................................................................. 2
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`IV. SUPPORT FOR THE SUBSTITUTE CLAIM ............................................... 4
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`V.
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`CONCLUSION. .............................................................................................. 5
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` i
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`Statutes
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`TABLE OF AUTHORITIES
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`Page(s)
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`35 U.S.C. § 314 ......................................................................................................... 1
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`35 U.S.C. § 316(a)(9) ................................................................................................ 4
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`Regulations
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`37 C.F.R. § 42.121 .................................................................................................... 1
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`37 C.F.R. § 42.121(a) ................................................................................................ 1
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`37 C.F.R. § 42.121(b) ............................................................................................ 2, 4
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` ii
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`EXHIBIT LIST
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`Exhibit 2001
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`Cara Garretson. “More DRAM vendors involved in Justice
`Department probe.” IDG News Service July 21, 2002.
`Computer World, Inc. November 21, 2016.
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`Exhibit 2002
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`Exhibit 2003
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`“Error Correction Code in SoC FPGA-Based Memory
`Systems.” Altera Corporation April 2012.
`“133 MHz PC SDRAM 64-Bit Non-ECC/Parity 144 Pin
`UNBUFFERED SO-DIMM SPECIFICATION.” Intel, Revision
`1.0C. August 2000
`“PC SDRAM Serial Presence Detect (SPD) Specification.”
`Intel, Revision 1.2B. November 1999.
`Exhibit 2005 Declaration of Nathan Nobu Lowenstein in support of Motion
`for Admission Pro Hac Vice
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`Exhibit 2004
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` iii
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`I.
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
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`Patent Owner hereby respectfully moves to amend U.S. Patent No.
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`6,850,414 B2 (Ex. 1001) (the “’414 Patent”) under 37 C.F.R. § 42.121, by
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`cancelling all challenged claims that have been instituted for review and proposing
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`one substitute claim for challenged claim 8 which incorporates both the limitations
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`of claim 8 and the limitations of non-instituted claim 4, which the Board has
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`already determined has not been shown to have a reasonable likelihood of being
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`unpatentable by Petitioner in this case. Paper 7; Paper 16.
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`Specifically, Petitioner challenged claims 1–8 of the ’414 Patent. Pet. at 1.
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`In its Institution Decision in this case, this Board instituted review under 35 U.S.C.
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`§ 314 for challenged claims 1 and 5–8, but not for challenged claims 2–4. Paper 7
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`at 17, 18, 21, 22. In its Decision Denying Petitioner’s Request for Rehearing, this
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`Board adhered to its determination to deny institution of an inter partes review of
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`claim 4. Paper 16 at 3–7. As discussed in detail below, the substitute claim is the
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`same as challenged claim 8 in every respect, except that it simply adds the
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`limitations of claim 4, which the Board has already repeatedly determined has not
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`been shown by Petitioner in this case to have a reasonable likelihood of being
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`unpatentable. Paper 7 at 17, 18, 21, 22; Paper 16 at 3–7.
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`Patent Owner has satisfied 37 C.F.R. § 42.121(a) for this motion. Paper 17.
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` 1
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`II.
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`CLAIM LISTING
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`The following is a complete listing of the proposed claim cancellations and
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`amendments with a correlation of the substitute claim to the original claim. See
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`C.F.R. § 42.121(b).
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`Claim 1. (Instituted/To be canceled)
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`Claims 2–4. (Not instituted/Unchanged)
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`Claims 5–8. (Instituted/To be canceled)
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`Claim 9 (Proposed substitute for original Claim 8, with correlation to
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`original claim): The printed circuit board according to claim 1, wherein: said
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`printed circuit board has a width of 5.25 inches and has a height of 1 to 1.2 inches
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`perpendicular to said contact strip.
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`A separate Claim Listing is also included in Appendix A of this Motion.
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`III.
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`DISCUSSION
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`The ’414 Patent focuses on reducing the height of particular types of prior
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`art memory modules by recognizing and utilizing unique features relating to the
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`placements of the error correction chip and various passive elements on the Printed
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`Circuit Board. The ’414 Patent’s novel recognition and utilization of those
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`features permitted the PCB height to be reduced to 1.0–1.2 inches, resulting in a
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`combination of layout and height that is absent in the prior art. In instituting trial
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`for only challenged claims 1 and 5–8, and not for challenged claims 2–4, and
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` 2
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`denying Petitioner’s request for rehearing of that decision limited to claim 4
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`specifically, the Board agreed with Patent Owner and expressly determined that
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`Petitioner in this case has not met its burden to show a reasonable likelihood that
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`challenged claim 4, which depends from challenged claim 1, is unpatentable over
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`the prior art. Paper 7 at 17 (“we are not persuaded that Petitioner has established a
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`reasonable likelihood that it would prevail in showing that claim 4 would have
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`been obvious over” the purported prior art in Ground 1); see also id. at 18, 21
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`(same for all other proposed Grounds).
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`Claim 4, in addition to the requirements of claim 1 from which it depends,
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`requires only that “said printed circuit board has a height of 1 to 1.2 inches
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`perpendicular to said contact strip.” The Board’s Institution Decision makes clear,
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`and the Board institution of review of claim 1 confirms, that the Board’s denial of
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`inter partes review of claim 4 is based upon claim 4’s addition, to the limitations
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`recited in claim 1 from which it depends, of its additional recital that “said printed
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`circuit board has a height of 1 to 1.2 inches perpendicular to said contact strip.”
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`By this motion, Patent Owner moves to amend the ’414 Patent to substitute
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`for challenged claim 8 a claim that is identical except for the addition of the
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`limitation recited in non-instituted claim 4. No newly-drafted limitations never
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`before evaluated by the PTO or this Board are being added. Every limitation of the
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`substitute claim already appears in claim 4 or claim 8, and as just discussed, the
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` 3
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`limitation that already appears in claim 4 has already been found to not have been
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`shown by Petitioner in this case to be disclosed or suggested by the prior art.
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`The proposed amendment responds to the grounds for unpatentability
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`involved in this review, as it would cancel all instituted claims and substitute for
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`one of them a claim that merely adds the limitations recited in a challenged claim
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`for which institution has already been denied and rehearing on that decision has
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`also been denied. The proposed amendment does not seek to enlarge the scope of
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`the claims of the patent or introduce new subject matter, for the same reasons.
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`The proposed amendment proposes a reasonable number of substitute
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`claims, as it proposes only one substitute for several claims requested to be
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`canceled under 35 U.S.C. § 316(a)(9).
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`IV.
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`SUPPORT FOR THE SUBSTITUTE CLAIM
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`Proposed substitute claim 9 is identical to challenged claim 8 except that it
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`incorporates the existing limitations of non-instituted claim 4. It is thus supported
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`by the original claims and earlier disclosures. For avoidance of doubt, support for
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`all the limitations of substitute claim 9 as recited in the claim may be found in the
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`specification of the ’414 Patent at FIGS. 2-3; 1:8-20; 1:21-31; 2:54-3:3; 3:28-46,
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`4:7-18; 4:53-55; and 6:19-56. 37 C.F.R. § 42.121(b).
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` 4
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`V.
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`CONCLUSION.
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`For the foregoing reasons, Patent Owner respectfully requests that its Motion
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`To Amend be granted.
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`Date: May 16, 2017
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`Respectfully submitted,
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`____/ Kenneth J. Weatherwax /_________
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`Kenneth J. Weatherwax, Reg. No. 54,528
`Lowenstein & Weatherwax LLP
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` 5
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`Case IPR2016-01622
`Patent 6,850,414
`Attorney Docket No. 160831-002USIPR
`
`
`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
`____________
`
`PATENT OWNER’S MOTION TO AMEND
`APPENDIX A – CLAIM LISTING
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`Case CBM2014-00090
`Patent 5,805,702
`Attorney Docket No. 140401-001USCBM
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`Claim Listing Pursuant to 37 C.F.R. § 1.121(b)
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`1.
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`(Instituted/Proposed to be cancelled) [[An electronic printed circuit board
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`configuration, comprising:
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`an electronic printed circuit board having a contact strip for insertion into
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`another electronic unit; and
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`a memory module having at least nine identically designed integrated
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`semiconductor memories;
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`each one of said semiconductor memories being encapsulated in a rectangular
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`housing having a shorter dimension and a longer dimension;
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`said housing of each one of said semiconductor memories being identically
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`designed and being individually connected to said printed circuit board;
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`one of said semiconductor memories being connected as an error correction
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`chip;
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`said longer dimension of said housing of said error correction chip being
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`oriented perpendicular to said contact strip; and
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`said longer dimension of said housing of each one of said semiconductor
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`memories, other than said error correction chip, being oriented parallel with
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`said contact strip.]]
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`2.
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`(Not Instituted) The printed circuit board according to claim 1, wherein:
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` 1
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`Case CBM2014-00090
`Patent 5,805,702
`Attorney Docket No. 140401-001USCBM
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`said housing of said error correction chip extends a greater distance away from
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`said contact strip than said housing of each one of said semiconductor
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`memories, other than said error correction chip.
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`3.
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`(Not Instituted) The printed circuit board according to claim 1, wherein:
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`said contact strip has a contact with a length;
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`said printed circuit board has a height extending perpendicular to said contact
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`strip; and
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`said height of said printed circuit board is equal to a sum of said longer
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`dimension of said housing of said error correction chip, said length of said
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`contact of said contact strip and a safety clearance between said error
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`correction chip and said contact strip of less than 2 mm.
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`4.
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`(Not Instituted) The printed circuit board according to claim 1, wherein:
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`said printed circuit board has a height of 1 to 1.2 inches perpendicular to said
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`contact strip.
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`5.
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`(Instituted/Cancelled) [[The printed circuit board according to claim 1,
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`wherein:
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`said housing of each one of said semiconductor memories is a TSOP housing.]]
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`6.
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`(Instituted/Cancelled) [[The printed circuit board according to claim 1,
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`wherein:
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`said at least nine semiconductor memories define exactly nine semiconductor
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` 2
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`Case CBM2014-00090
`Patent 5,805,702
`Attorney Docket No. 140401-001USCBM
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`memories.]]
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`7.
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`(Instituted/Cancelled) [[The printed circuit board according to claim 1,
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`wherein:
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`said printed circuit board is configured according to a specification selected
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`from a group consisting of a raw card A of a PC 133 SDRAM registered
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`DIMM design specification and a raw card F of the PC 133 SDRAM
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`registered DIMM design specification.]]
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`8.
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`(Instituted/Cancelled) [[The printed circuit board according to claim 1,
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`wherein:
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`said printed circuit board has a width of 5.25 inches.]]
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`9.
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`(Substitute for Claim 8, with correlation to original claim) The printed
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`circuit board according to claim 1, wherein:
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`said printed circuit board has a width of 5.25 inches and has a height of 1 to 1.2
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`inches perpendicular to said contact strip.
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` 3
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`Case IPR2016-01622
`Patent 6,850,414
`Attorney Docket No. 160831-002USIPR
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the following documents were served
`by electronic service, by agreement between the parties, on the date signed below:
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`PATENT OWNER’S MOTION TO AMEND
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`The names and address of the parties being served are as follows:
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`IPR37307-0007IP1@fr.com (David Hoffman)
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`IPR@sjclawpc.com (Martha Hopkins)
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`Respectfully submitted,
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` / Parham Hendifar /
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`Date: May 16, 2017
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