Paper: 33
`Trials@uspto.gov
`571-272-7822 Entered: February 9, 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 IPR2016-01623
`Patent 7,315,454 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 9, 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 IPR2016-01623
`Patent 7,315,454 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
`
`
`
`IPR2016-01623
`Patent 7,315,454 B2
`
`
`INTRODUCTION
`I.
`A. Background and Summary
`Kingston Technology Company, Inc. (“Petitioner”) filed a Petition
`
`requesting inter partes review of claims 1–7 of U.S. Patent No. 7,315,454
`B2 (“the ’454 patent,” Ex. 1001). Paper 2 (“Pet.”). The Board instituted
`inter partes review of claims 1–5 and 7. Paper 7 (“Inst. Dec.”), 32. Polaris
`Innovations Ltd. (“Patent Owner”)1 filed a Response to the Petition.
`Paper 16 (“PO Resp.”). Petitioner filed a Reply. Paper 21 (Pet. Reply). The
`parties filed papers addressing Patent Owner’s identification of allegedly
`improper arguments and evidence in Petitioner’s Reply. Papers 23, 24. An
`oral hearing was held on November 14, 2017, and a transcript of the hearing
`is included in the record. Paper 32 (“Tr.”).
`
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`For the reasons discussed below, we determine that Petitioner has not shown
`by a preponderance of the evidence that claims 1–5 and 7 of the ’414 patent
`are unpatentable.
`
`B. Related Proceedings
`According to the parties, the ’454 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.
`
`
`1 Patent Owner identifies Polaris Innovations Ltd., Wi-LAN Inc., and
`Quarterhill Inc. as real parties-in-interest. Paper 4, 1; Paper 20, 1.
`2
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`
`C. The ’454 Patent
`The ’454 patent, titled “Semiconductor Memory Module,” issued
`January 1, 2008, from U.S. Patent Application No. 11/439,443. Ex. 1001,
`[54], [45], [21].
`
`The ’454 patent generally relates to a semiconductor memory module
`including an electronic printed circuit board with a contact strip and a
`plurality of semiconductor memory chips of identical type. Id. at Abstract.
`“The semiconductor memory chips are rectangular in shape and are
`arranged, in at least two rows with the adjacent chips being oriented
`perpendicular to one another, such that the area used on the PC [printed
`circuit] board is optimized.” Id.
`
`According to the ’454 patent, semiconductor memory chips of a
`conventional memory module are arranged symmetrically with respect to the
`center of the semiconductor memory module. See id. at 1:42–45. Figure 1A
`is reproduced below.
`
`Figure 1A shows a front side of a conventional memory module. Id. at
`4:14–16. As shown in Figure 1A, printed circuit board 2 has two rows of
`square-shaped semiconductor memory chips 3 arranged symmetrically
`around register component 5. Id. at 4:41–5:12. According to the ’454
`
`
`
`3
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`patent, “[t]he problem arises that the electronic printed circuit boards for
`semiconductor memory modules . . . have a standard size . . . [such that]
`rectangular memory chips with a large storage capacity, e.g.,
`DDR3-DRAM[2] memory chips, can no longer be arranged in two rows,
`lying one above another.” Id. at 1:62–67. The ’454 patent also states:
`Moreover, when arranging the memory chips, care must be taken
`to ensure that an arrangement is found which exhibits the
`occurrence of signal propagation times that are as uniform as
`possible to all of the semiconductor memory chips in conjunction
`with conductor track lengths that are, to the greatest extent
`possible, identical in length. Meanwhile, the conductor track
`lengths are also desired to be as short as possible to keep the
`signal propagation times as short as possible.
`Id. at 2:1–9.
`
`To address these concerns, the ’454 patent discloses a memory
`module in which “successive semiconductor memory chips in a row are in
`each case rotated by 90º relative to one another.” Id. at 2:56–58. Figure 2 is
`reproduced below.
`
`
`2 “DDR” refers to Double Data Rate, and “DRAM” refers to Dynamic
`Random Access Memory. Ex. 1014 ¶ 3.
`4
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`Figure 2 shows an embodiment of the memory module according to the ’454
`patent. Id. at 4:17–19. “In each of the two rows, the semiconductor memory
`chips 3 of identical type are mounted next to one another . . . wherein the
`semiconductor memory chips 3 of the two adjacent rows are respectively
`arranged in an opposite position.” Id. at 5:29–34. Such an arrangement
`“maximiz[es] the utilization of the space available on the electronic printed
`circuit board 2.” Id. at 5:67–6:2. Additionally, the arrangement allows for
`conductor track3 lengths that are identical and that are comparatively short
`between the semiconductor memory chips. Id. at 7:36–39, Fig. 5; see also
`id. at 7:11–14 (explaining that Figure 5 includes a schematic illustration of a
`configuration of the line bus of the Figure 2 embodiment).
`
`D. Illustrative Claim
`Of the challenged claims of the ’454 patent, claim 1 is an independent
`
`claim. The remaining challenged and instituted claims depend directly from
`claim 1. Claim 1, reproduced below with emphasis added, is illustrative:
`1. A semiconductor memory module, comprising:
`
`an electronic printed circuit board including a contact strip
`that extends at a first edge of the printed circuit board along a
`first lateral direction and a plurality of electrical contacts
`disposed along the first lateral direction between two second
`edges that extend in a second lateral direction that is
`perpendicular to the first lateral direction; and
`
`a plurality of
`semiconductor memory chips of
`substantially identical type mounted on at least one external area
`of the printed circuit board and having a rectangular form with a
`shorter dimension and a longer dimension in a direction
`
`3 According to Patent Owner’s expert, Dr. Bernstein, “[e]ach component on
`a memory module is connected via wires known interchangeably as ‘traces,’
`‘conductor tracks,’ ‘line tracks,’ or even simply ‘wires.’” Ex. 2012 ¶ 38.
`5
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`
`perpendicular to the shorter dimension, the memory chips being
`arranged in at least two rows, each row extending, in the first
`lateral direction, between a center of the printed circuit board and
`a respective second edge,
`
`wherein the memory chips in each row are arranged in an
`alternating sequence of opposite orientations with the longer
`dimension of each memory chip being parallel with the shorter
`dimension of adjacent memory chips in the same row, and
`
`wherein memory chips aligned in the second lateral
`direction and lying in respective adjacent rows have opposite
`orientations.
`Ex. 1001, 8:53–9:9.
`
`E. Applied References
`
`Reference
`DE 101 42 361 A1, filed Aug. 30, 2001, published Apr. 24,
`2003 (“Kiehl”4)
`John P. Bridge, CERAMIC TILE SETTING, TAB Books (1992)
`(“Bridge”5)
`US 6,751,113 B2, filed Mar. 7, 2002, issued June 15, 2004
`(“Bhakta”)
`
`Exhibit No.
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Petitioner also relies on the declarations of Dr. Vivek Subramanian
`
`dated Aug. 15, 2016 (Ex. 1003) and Aug. 17, 2017 (Ex. 1022) in support of
`its arguments. Patent Owner relies on the declaration of Dr. Joseph
`Bernstein dated May 16, 2017 (Ex. 2012) in support of its arguments.
`
`
`4 Exhibit 1005 is a German-language publication. All references to Kiehl in
`this decision are to the English translation (Ex. 1014) of the publication.
`5 Exhibit 1006 includes, in addition to the cover and copyright pages, only
`page 60 of Bridge. Exhibit 2001 is, according to Patent Owner, a complete
`copy of the book. Paper 6 (Prelim. Resp.) 12.
`6
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`
`F. Instituted Grounds of Unpatentability
`We instituted inter partes review of the challenged claims on the
`
`following grounds:
`Reference(s)
`Kiehl
`Kiehl and Bridge
`Kiehl, Bridge, and Bhakta
`
`Claim(s)
`1–3, 5, and 7
`1–3, 5, and 7
`4 and 7
`
`Basis
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`II. ANALYSIS
`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
`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).
`
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`
`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 ’454 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. 1003 ¶ 17.
`Patent Owner’s expert, Dr. Joseph Bernstein, agrees “substantially” with this
`definition, opining that the experience level would be “approximately two
`years of industry experience.” Ex. 2012 ¶ 26.6 We discern no material
`difference between the two experts’ definitions. Dr. Subramanian’s
`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). 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
`
`
`6 We have considered and do not find persuasive Petitioner’s argument that
`Dr. Bernstein applied, in his analysis, an unduly narrow definition of the
`person of ordinary skill in the art because he asked for clarification as to
`how the deposing attorney was using the phrase “all the prior art.” Pet.
`Reply 24–26.
`
`8
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`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).
`Aligned
`Claim 1 recites “wherein memory chips aligned in the second lateral
`
`direction and lying in respective adjacent rows have opposite orientations.”
`Ex. 1001, 9:7–9 (emphasis added). In the Institution Decision, we
`determined that a preliminary construction of “aligned” was necessary due
`to Patent Owner’s arguments concerning claim 1. Inst. Dec. 7. We
`explained that we understood Patent Owner to argue that “‘aligned’ should
`be construed to require a chip in the upper row to be centered with a chip in
`the lower row.” Id. We were not persuaded that the term required such
`precision, and we preliminarily construed “aligned” as “encompass[ing] two
`components that overlap, but are not centered.” Id. at 7–8. In its Response,
`Patent Owner “submits that ‘aligned in the second lateral direction’ should
`mean ‘arranged in a manner lying one above another in the second lateral
`direction (i.e., the y direction).’” PO Resp. 32 (italicizing omitted); see also
`Pet. Reply 13–16 (addressing the meaning of the “aligned”).
`
`We determine that, in order to resolve the controversy before us, it is
`not necessary to further construe the term “aligned.” We also determine that
`no other claim terms require express construction.
`
`D. The Alleged Obviousness of
`Claims 1–3, 5, and 7 over Kiehl
`Petitioner alleges that claims 1–3, 5, and 7 of the ’454 patent would
`
`have been obvious over Kiehl alone or, alternatively, Kiehl in view of
`Bridge. See Pet. 11–30 (addressing claim 1). We first address the
`obviousness ground based on Kiehl alone. Patent Owner argues, inter alia,
`
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`that Kiehl fails to disclose the claimed requirement of memory chips in a
`given row alternating orientations, and that such an arrangement would not
`have been obvious. PO Resp. 11–30. For the reasons discussed below, we
`determine that Petitioner has not shown that the challenged claims would
`have been obvious over Kiehl.
`1. Kiehl (Ex. 1014)
`Kiehl is directed to providing a memory module that accommodates a
`
`plurality of DRAMs on a circuit board while preserving low height and short
`signal paths. Ex. 1014 ¶ 8. To address this problem, Kiehl discloses “a
`memory module, wherein memory chips (4-19) are arranged both
`horizontally (4, 5, 14, 15, 18, 19) and vertically (2, 3, 6 to 13, 16, 17) on a
`circuit board (1).” Id., Abstract. Figure 1 of Kiehl is reproduced below.
`
`
`
`Figure 1 shows an embodiment of the memory module of Kiehl. Id. ¶ 19.
`Memory chips 2, 3, 6 to 9, 10 to 13, 16, and 17 “lie in the conventional
`manner” while memory chips 4, 5, 14, 15, 18, and 19 are perpendicular to
`the memory chips of the “conventional” row. Id. ¶ 25. Also depicted in
`Figure 1 are PLL (phase-locked loop) 20 and register 21. Id. ¶¶ 17, 23.
`According to Kiehl, by positioning the memory chips in the lower row
`horizontally, the signal path from the memory chips in the upper row to the
`
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`connector edge at the bottom of the circuit board is kept short. See id. ¶¶ 11,
`12.
`
`2. Analysis—Kiehl Alone
`Relevant to the dispositive issues in this case are two recitations in
`
`claim 1 pertaining to the arrangement of the memory chips:
`
`wherein the memory chips in each row are arranged in an
`alternating sequence of opposite orientations with the longer
`dimension of each memory chip being parallel with the shorter
`dimension of adjacent memory chips in the same row, and
`
`wherein memory chips aligned in the second lateral
`direction and lying in respective adjacent rows have opposite
`orientations.
`Ex. 1001, 9:2–9. Petitioner refers to this arrangement—where adjacent
`chips, next to and below, have opposite orientations—as a “pinwheel”
`pattern. See, e.g., Pet. 27. Petitioner maintains that Kiehl discloses most of
`the subject matter of claim 1, and concedes that Kiehl does not explicitly
`teach memory chips in a given row “arranged in an alternating sequence of
`opposite orientations.” See id. at 24. As shown below, Petitioner provides
`an annotated version of Kiehl’s Figure 1 to illustrate its argument as to
`which chips constitute the recited memory chips in two rows.
`
`11
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`Pet. 23. Above is Petitioner’s annotated version Kiehl’s Figure 1 with a
`dashed box around the vertically oriented memory chips in a first row,
`another dashed box around the horizontally oriented memory chips in a
`second row, and a center line through PLL 20 and register 21. Petitioner
`identifies memory chips 2–19 as the recited memory chips of claim 1. Id. at
`21–22.
`
`Petitioner argues in the Petition that “it would have been obvious to a
`skilled artisan to rearrange the memory chips in Kiehl’s memory module
`into [the recited alternating] configuration because there are only a finite
`number [of] patterns in which rectangular chips can be arranged on a PCB
`[printed circuit board].” Id. (citing Manual of Patent Examining Procedure
`(MPEP) § 2143(I)(E);7 Ex. 1003 ¶ 56). According to Petitioner, there
`existed a design need and market pressure to rearrange memory chip layouts
`in order to accommodate more memory in a given circuit board area. Id.
`Thus, Petitioner’s theory is based on an “obvious to try” rationale. See KSR,
`550 U.S. at 421 (discussing “obvious to try,” and stating “[w]hen there is a
`design need or market pressure to solve a problem and there are a finite
`number of identified, predictable solutions, a person of ordinary skill has
`good reason to pursue the known options within his or her technical grasp.”).
`
`In the Institution Decision, we noted that Petitioner argued that there
`are only a finite number of chip arrangement patterns and that Petitioner had
`cited evidence of a design need and market pressure, and we determined that
`
`
`7 The MPEP citation refers to the rationale: “‘Obvious to try’ – choosing
`from a finite number of identified, predictable solutions, with a reasonable
`expectation of success.” MPEP § 2143(I)(E) (9th ed., Rev. 08.2017, Jan.
`2018)
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`Petitioner had proffered an adequate reason why one would have made the
`specific design choice. See Inst. Dec. 12–13. Based on this initial showing,
`we determined that Petitioner had established a reasonable likelihood of
`prevailing in its obviousness challenge. Id. at 14. Now, having received
`further briefing and evidence from the parties and in light of the complete
`record, we determine that Petitioner has not established, by a preponderance
`of the evidence, the unpatentability of the challenged claims as being
`obvious over Kiehl.
`
`Patent Owner responds to the Petition first by noting that Kiehl’s
`memory chips do not alternate orientation within each row as recited in
`claim 1. PO Resp. 11–12; see Pet. 24 (conceding that Kiehl does not
`“explicitly disclose” this arrangement). Patent Owner then argues that
`Petitioner’s rationale, premised on there being a finite number of ways to
`arrange chips, is conclusory because “Petitioner never identifies what those
`ways are, how many there are, or provides any evidence that any of those
`ways were known in the art.” PO Resp. 1; see also id. at 14 (“They most
`certainly do not demonstrate that these arrangements were already ‘known’
`in the art.”).
`
`To reach a determination that the claimed invention would have been
`obvious to try, “the possible approaches and selection to solve the problem
`must be ‘known and finite.’” Rolls-Royce, PLC v. United Techs. Corp., 603
`F.3d 1325, 1339 (Fed. Cir. 2010) (citing Abbott Labs. v. Sandoz, Inc., 544
`F.3d 1341, 1351 (Fed. Cir. 2008)). “The important question is whether the
`invention is an ‘identified, predictable solution’ and an ‘anticipated
`success.’” Id. (citing Abbott Labs., 544 F.3d at 1352). An obvious to try
`analysis looks to whether the person of ordinary skill in the art would have a
`
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`“good reason to pursue the known options within his or her technical grasp.”
`Id. (emphasis added) (quoting KSR, 550 U.S. at 421). Thus, it is not enough
`for there to be a finite number of solutions, the options and solutions must
`have been identified and known.
`
`We find to be persuasive Patent Owner’s argument that Petitioner’s
`“finite number” position in the Petition is conclusory. The Petition contains
`a mere assertion that “there are only a finite number patterns in which
`rectangular chips can be arranged on a [printed circuit board].” Pet. 24
`(citing, inter alia, Ex. 1003 ¶ 56). The cited testimony of Dr. Subramanian
`repeats this assertion without elaboration. See Ex. 1003 ¶ 56 (“There are
`only a finite number patterns in which rectangular chips can be arranged on
`a PCB.”). Absent from this is an assertion that the claimed alternating
`arrangement within a row of memory chips was a known option to address
`what Petitioner defines as the subject of the design need and market
`pressure—to accommodate more memory on printed circuit boards. See Pet.
`25; Ex. 1003 ¶ 56. Dr. Subramanian testified on cross-examination that,
`after his thorough study of the art, he was unable to identify any reference in
`the semiconductor art that teaches memory chips with the alternating
`orientations. Ex. 2006, 27:9–28:15; id. at 28:4–6 (“As far as a row is
`concerned, where a row is parallel to the edge connector, it is true that there
`are no alternating orientation memory chips.”). Further, the conclusory
`assertion in the Petition is inadequate to establish that there was a finite
`number of possible memory chip arrangements such that one of ordinary
`skill would have found it obvious to try the claimed arrangement.
`
`In its Reply Brief, Petitioner attempts to bolster its earlier assertion
`regarding a finite number of patterns for arranging rectangular chips on a
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`circuit board. See Pet. Reply 6–8. In so doing, Petitioner sets forth what
`Patent Owner characterizes as an improper new argument—that concerning
`a “pinwheel” pattern of semiconductor chips in Kiehl. See Paper 23, 1.
`After conceding in the Petition that “Kiehl does not explicitly disclose
`‘memory chips in each row are arranged in an alternating sequence . . . .’”
`and identifying Bridge, not Kiehl, as depicting a “pinwheel” pattern (Pet. 16,
`24), Petitioner argues in the Reply Brief that an alternating pattern in the
`form of a “pinwheel” pattern is disclosed in Kiehl (Pet. Reply 7–8). In the
`Reply, Petitioner relies on testimony regarding the same in a second
`declaration of Dr. Subramanian. See, e.g., Pet. Reply 7 (citing Ex. 1022
`¶¶ 23–24). Petitioner provides the following annotated version of Kiehl’s
`Figure 1 to demonstrate its argument.
`
`
`
`Id. at 8. The figure above is Kiehl’s Figure 1 with the addition of a
`depiction of a “pinwheel” pattern, apparently copied from the Bridge
`ceramic tile reference (which is not a reference in this first ground), and
`arrows indicating Petitioner’s identification of Kiehl’s chips purportedly
`corresponding to such a pattern. See id. Patent Owner argues, and we agree,
`that this position, and the accompanying testimony in the second declaration
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`of Dr. Subramanian, represents new argument and evidence not originally
`articulated or identified in the Petition. Paper 23, 2 (Patent Owner’s
`identification of allegedly improper arguments and evidence in the Reply);
`see also Paper 24, 1 (Petitioner’s reply to the same). “It is of the utmost
`importance that petitioners in the IPR proceedings adhere to the requirement
`that the initial petition identify ‘with particularity’ the ‘evidence that
`supports the grounds for the challenge to each claim.’” Intelligent Bio-Sys.,
`Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016)
`(quoting 35 U.S.C. § 312(a)(3)). In the Petition, and contrary to the position
`taken in the Reply, Petitioner argued that the alternating arrangement was
`missing from Kiehl and pointed to Bridge, rather than Kiehl, as disclosing a
`“pinwheel” pattern. See Pet. 16 (asserting that it would have been obvious
`to modify Kiehl’s arrangement to have the memory chips in Bridge’s
`“pinwheel” pattern), 24, 26.
`
`Nonetheless, even considering this belated position, we are not
`persuaded that Petitioner has shown that the claimed alternating arrangement
`of memory chips was obvious to try. We note that the chips in the grouping
`identified by Petitioner in the Reply is not the same as those identified in the
`Petition as corresponding to the claimed memory chips. Compare Pet. 23,
`with Pet. Reply 8. Petitioner’s grouping now includes the PLL and the
`register, not a collection of that which Petitioner originally identified as the
`claim’s recited memory chips. The “pinwheel” does not depict an
`alternating orientation between neighboring memory chips in the same row.
`To the contrary, Kiehl discloses consistently oriented memory chips in each
`row with, as Petitioner admits, “one row of chips oriented vertically and
`another row oriented horizontally.” Pet. Reply 7. As such, Petitioner still
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`has not shown the claimed alternating pattern applied to a collection of
`adjacent memory chips, and does not explain adequately why one of
`ordinary skill would have recognized the “pinwheel” arrangement to be
`appropriate for memory chips.
`
`We also are not persuaded by Petitioner’s apparent argument,
`appearing for the first time in the Reply and based on the existence of
`Kiehl’s “pinwheel,” that the purported “finite number of ways to arrange
`identical rectangular memory chips on a PCB” is four and that the claimed
`arrangement is one of those ways. Pet. Reply 6–7. According to Petitioner:
`At the outset, it is only reasonable to orient rectangular chips in
`one of two directions (vertically or horizontally) on a rectangular
`PCB. . . . The two most basic arrangements include rows of chips
`all oriented either vertically or horizontally as shown in Gall. . . .
`
`The next reasonable option would be Kiehl’s arrangement
`with one row of chips oriented vertically and another row
`oriented horizontally. . . .
`
`After that the only remaining reasonable option is to
`extend the alternating arrangement to chips in both the same row
`and same column, which is suggested to a POSITA [person of
`ordinary skill in the art] by Kiehl in two ways.
`Id. (citations omitted). The purported suggestion, according to Petitioner
`comes from the “pinwheel” of Kiehl. Id. at 7–8. As discussed above, the
`“pinwheel” of Kiehl does not teach alternating orientations of memory chips
`as required by claim 1. We are not persuaded that “pinwheel” in Kiehl
`suggests a consistent alternating pattern of memory chips.
`
`Petitioner’s new argument as to the purported “finite number” of
`options is circular in that, after failing to identify the claimed arrangement of
`memory chips as a known option, Petitioner applies a seemingly hindsight-
`driven analysis in an attempt to establish that the claimed alternating
`
`17
`
`
`
`IPR2016-01623
`Patent 7,315,454 B2
`
`arrangement of memory chips would have been an obvious choice and
`therefore one of a finite number8 of options and therefore an obvious choice.
`See Reply 7–8 (arguing that the option of alternating within rows and
`columns merely is suggested by Kiehl); see also id. at 19 (Petitioner arguing
`(with emphasis added) that Bridge’s ceramic tile pattern merely is
`“suggestive of one of a finite number of possible arrangements for identical
`rectangular memory chips.”).
`
`Even if, as Petitioner argues, one of ordinary skill in the art would
`have tried rearranging memory chips on a circuit board as a way to increase
`memory capacity, we are not persuaded that the specific, claimed
`arrangement of alternating orientations of memory chips within the same
`row was a known option to try. Accordingly, Petitioner has not shown that
`claim 1 would have been obvious in light of Kiehl under an “obvious to try”
`theory.
`
`Petitioner also argues that Court of Customs and Patent Appeals
`decisions “recognized that there is nothing novel or unexpected in the
`rearrangement of the parts of prior art devices.” Pet. 25–26 (citing In re
`Japikse, 181 F.2d 1019, 1031 (CCPA 1950) (affirming the Board of
`Appeals’ determination “that there would be no invention in shifting the
`starting switch disclosed by [the prior art reference] to a different position
`since the operation of the device would not thereby be modified.”); In re
`
`
`8 Bridge—from which Petitioner derives the “pinwheel pattern” label
`applied in its argument that there are only a finite number of possible
`arrangements—contradicts that argument. Bridge states in the caption of the
`relied-upon figure: “Using modular rectangles, the possibilities are endless.”
`Ex. 1006, 3; see also PO Resp. 29 (noting this contradiction).
`18
`
`
`
`IPR2016-01623
`Patent 7,315,454 B2
`
`Kuhle, 526 F.2d 553, 555 (CCPA 1975) (stating, after quoting at length from
`the teachings of the prior art reference and before elaborating on what was
`well-known to the ordinary artisan, “the particular placement of the
`[electrical] contact provides no novel or unexpected result” and “would be
`an obvious matter of design choice within the skill of the art.”)). Petitioner
`argues that the rearrangement of memory chips “is no different” and
`“consequently, the results of rearranging semiconductor chips . . . would
`have been entirely predictable by one of skill in the art.” Pet. 26 (citing
`Ex. 1003 ¶¶ 24, 47, 56-57). Petitioner’s argument, and the relied-upon
`expert testimony, is too conclusory to prevail; Petitioner does not explain
`adequately how the facts of the cited cases are analogous to the
`rearrangement of memory chips on a circuit board. Further, Petitioner’s
`position is based on the oversimplified view that memory chip orientation
`and arrangement merely is “an elementary geometry problem that is
`common in everyday human experience” rather than a matter of electrical
`engineering. See Ex. 1003 ¶¶ 24, 47 (cited at Pet. 26); see also Pet.
`Reply 17 (impliedly arguing that memory chip arrangement is irrelevant to
`the ability of a memory module to read and write data). Also, Petitioner’s
`argument that rearranging chips would yield predictable results does not
`answer the question as to whether one would have contemplated and had
`reason to modify the arrangement to have that of the claimed design. We do
`not find persuasive Petitioner’s implied position that the claimed invention is
`obvious as a matter of law simply because it involves an arrangement of
`components different from that of the prior art.
`
`In Patent Owner’s Response and in Petitioner’s Reply thereto, the
`parties debate the merits of a “common sense” obviousness rationale. PO
`
`19
`
`
`
`IPR2016-01623
`Patent 7,315,454 B2
`
`Resp. 28–29; Reply 17–18. We do not discern the assertion of such a
`rationale in the Petition. Patent Owner’s arguments about “common sense”
`refers to Petitioner’s statement that the problem of the ’454 patent is not
`highly technical in nature but is “a problem common to many human
`experiences” and that “common sense would naturally have led one skilled
`in the art to look for ‘reasonably pertinent’ solutions to the ‘classical tile
`fitting problem’ addressed by the ’454 Patent.” Pet. 14–15; see PO Resp. 28
`(quoting the phrase “a problem common to many human experiences”).
`These arguments by Petitioner go to whether Bridge is analogous art. But
`see Pet. 25 (referring to “common sense” when quoting from case law and in
`the context “finite number” rationale9).
`3. Conclusion—Kiehl Alone
`For the foregoing reasons, we find that Petitioner has not
`
`demonstrated by a preponderance of the evidence that independent claim 1
`would have been obvious over Kiehl alone. The remaining claims subject to
`this ground, claims 2, 3, 5, and 7, each depend directly from claim 1.
`Petitioner’s arguments against these claims refer to and rely on the same
`contentions discussed above regarding the obviousness of claim 1, and do
`not cure the underlying deficiency. See Pet. 30–35. Thus, for the same
`reasons, Petitioner has not shown by a preponderance of the evidence that
`claims 2, 3, 5, and 7 would have been obvious over Kiehl alone.
`
`
`9 To the extent that Petitioner intended a quote from KSR to constitute an
`argument that common sense supplies a rationale to modify Kiehl, we are
`not pe
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