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
`U.S. Patent 6,850,414 B2
`____________
`
`PETITIONER’S REQUEST FOR REHEARING OF THE BOARD’S
`INSTITUTION DECISION ON CLAIM 4
`
`
`
`
`
`Mail Stop Patent Trial and Appeal Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1
`
`Polaris Innovations Ltd. Exhibit 2009
`Kingston v. Polaris, IPR2017-00974
`
`
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LTD.,
`Patent Owner.
`
`____________
`
`Case IPR2016-01622
`U.S. Patent 6,850,414 B2
`____________
`
`PETITIONER’S REQUEST FOR REHEARING OF THE BOARD’S
`INSTITUTION DECISION ON CLAIM 4
`
`
`
`
`
`Mail Stop Patent Trial and Appeal Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1
`
`Polaris Innovations Ltd. Exhibit 2009
`Kingston v. Polaris, IPR2017-00974
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`I.
`STATEMENT OF PRECISE RELIEF REQUESTED ................................... 1
`II.
`III. ARGUMENT ................................................................................................... 2
`The Petition Did Not Seek to Modify Simpson’s Chip Design for
`A.
`Claim 4 .................................................................................................. 2
`The Petition Explains Why the Combination Would Be Made ............ 4
`The Petition Also Explains How the Combination Would Be Made ... 6
`The Claimed Circuit Board Height is a Design Choice Not Entitled to
`Independent Patentable Weight ............................................................. 8
`IV. CONCLUSION ................................................................................................ 9
`
`B.
`C.
`D.
`
`
`
`
`
`i
`
`2
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`Polaris Innovations Ltd. Exhibit 2009
`Kingston v. Polaris, IPR2017-00974
`
`
`
`Case IPR2016-01622
`Attorney Docket No. 37307-0007IP1
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`In re Applied Materials, Inc.,
`692 F.3d 1289 (Fed. Cir. 2012) ............................................................................ 9
`Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc.,
`222 F.3d 951 (Fed. Cir. 2000) .............................................................................. 3
`In re Keller,
`642 F.2d 413 (C.C.P.A. 1981) .............................................................................. 7
`In re Rose,
`220 F.2d 459 (C.C.P.A. 1955) .............................................................................. 8
`In re Sneed,
`710 F.2d 1544 (Fed. Cir. 1983) ............................................................................ 7
`In re Wertheim,
`541 F.2d 257 (C.C.P.A. 1976) .............................................................................. 9
`Other Authorities
`37 C.F.R. §42.71 ........................................................................................................ 1
`MPEP 2144.05(I) ....................................................................................................... 9
`
`
`ii
`
`3
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`Polaris Innovations Ltd. Exhibit 2009
`Kingston v. Polaris, IPR2017-00974
`
`
`
`Case IPR2016-01622
`Attorney Docket No. 37307-0007IP1
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. §42.71, Kingston Technology Company, Inc.
`
`(“Petitioner”) hereby respectfully requests rehearing of the Board’s decision
`
`denying institution of Inter Partes Review of claim 4 of U.S. Patent 6, 850,414
`
`(“the ’414 Patent”). In that decision, the Board held that Petitioner did not
`
`sufficiently explain how or why one of ordinary skill in the art would have
`
`“modified Simpson to achieve a height of ‘1 to 1.2 inches.’” However, Petitioner
`
`did not assert that the chip design of Simpson, which disclosed the elements of
`
`claim 1, needed to be modified to satisfy claim 4. Rather, as described in the
`
`Petition, “any person of ordinary skill in the art would know to take the design of
`
`Simpson and apply the standardized dimensions and tolerances described in the
`
`Intel Specification.” Paper 2 at 36-37. The Board’s decision thus appears to have
`
`misapprehended or overlooked Petitioner’s arguments with regard to claim 4.
`
`Additionally, as also described in the Petition, the Board appears to have
`
`misapprehended the patentable weight of design choices, such as height, which are
`
`generally not entitled to independent patentable weight.
`
`II.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioner requests that the Board reverse its decision denying institution and
`
`institute Inter Partes Review proceedings with respect to claim 4 of the ’414 Patent
`
`on the grounds set forth in the ’414 Petition.
`
`1
`
`4
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`Polaris Innovations Ltd. Exhibit 2009
`Kingston v. Polaris, IPR2017-00974
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`
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`Case IPR2016-01622
`Attorney Docket No. 37307-0007IP1
`
`III. ARGUMENT
`
`In the institution decision, the Board stated that “Petitioner has not explained
`
`sufficiently how or why a person of ordinary skill would have modified Simpson to
`
`achieve a height of 1 to 1.2 inches perpendicular to said contact strip.” Paper 7 at
`
`17. However, in reaching this decision, the Board did not appear to fully consider
`
`Petitioner’s arguments, which are set forth again below.
`
`A. The Petition Did Not Seek to Modify Simpson’s Chip Design for
`Claim 4
`First, it appears that the Board may have conflated Petitioner’s arguments
`
`with regard to claims 2 and 4. Notably, while Petitioner’s argument for dependent
`
`claim 2 required a change to the chip layout of Simpson (removing the top row of
`
`chips), claim 4 requires no changes to the Simpson design to be rendered obvious.1
`
`However, in reaching its decision, the Board appears to have required Petitioner to
`
`establish a basis for changing the teachings of Simpson – something that Petitioner
`
`did not argue was required. Rather, Petitioner argued that a person of ordinary
`
`skill in the art would know to take “the design of Simpson and apply the
`
`standardized dimensions and tolerances described in the Intel Specification.”
`
`Paper 2 at 36-37. The chip design of Simpson remains unchanged.
`
`
`1 Claim 4 depends directly from claim 1, and the claim 2 argument is separate
`
`from the claim 4 argument
`
`2
`
`5
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`Polaris Innovations Ltd. Exhibit 2009
`Kingston v. Polaris, IPR2017-00974
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`
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`Case IPR2016-01622
`Attorney Docket No. 37307-0007IP1
`The source of the confusion may be rooted in Patent Owner’s argument,
`
`which the Board cites in its decision. As the Board stated, “Patent Owner argues
`
`that Petitioner ‘does not even explain how Simpson’s two rows of sockets could fit
`
`on a [printed circuit board] with a height of 1.0-1.2 inches.’” Paper 7 at 16.
`
`However, Simpson places no restriction on height at all – either of the circuit board
`
`or of the chips. The invention of Simpson could be implemented at any size circuit
`
`board with any size of chips and sockets that would be desirable to one of ordinary
`
`skill in the art. The Petition explains that as of the 2001 filing date, one of those
`
`sizes was “the standardized dimensions and tolerances described in the Intel
`
`Specification.” Paper 2 at 36-37. As Petitioner’s expert explained, it is not a
`
`question of changing Simpson, but rather that “Simpson could easily be
`
`constructed with a height in the range of 1 to 1.2 inches,” which is a height that
`
`“had been standardized for some time” when the ’414 Patent was filed Ex. 1006 at
`
`29.2
`
`
`2 Patent Owner’s argument appears to be based on interpreting the figures of
`
`Simpson as if they were drawn to scale. However, as the Board is certainly
`
`aware, patent drawings not designated as being drawn to scale cannot be relied
`
`upon to define precise proportions of elements if the specification is completely
`
`silent on the issue. See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc.,
`
`3
`
`6
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`Polaris Innovations Ltd. Exhibit 2009
`Kingston v. Polaris, IPR2017-00974
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`
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`Case IPR2016-01622
`Attorney Docket No. 37307-0007IP1
`Further, as set forth below, the Petition provides copious explanation about
`
`both how and why one of ordinary skill would apply the teaching of Simpson to a
`
`standard sized Dual Inline Memory Module (“DIMM”), as set forth in the Intel
`
`Specification. See Paper 2 at 13-15 and 35-37 (and supporting expert testimony).
`
`As some of these arguments do not appear to have been addressed in the institution
`
`decision, Petitioner respectfully requests reconsideration of the decision on claim 4
`
`in view of them as well as the clarification above.
`
`B.
`The Petition Explains Why the Combination Would Be Made
`The Petition set forth several reasons why a person of ordinary skill in the
`
`art would be motivated to use the invention of Simpson on a circuit board that is
`
`between 1 inch and 1.2 inches as described in the Intel Specification. First, as
`
`described in the “Reasons to Combine” section on page 14, “the mechanical design
`
`constraints of the market for printed circuit boards matured in the years leading up
`
`to the priority date of the ’414 Patent.” Paper 2 (citing Ex. 1006 at ¶¶37-41 in
`
`
`222 F.3d 951, 956 (Fed. Cir. 2000). Simpson is not only silent on being drawn
`
`to scale, it sets forth no restrictions on the dimensions of either the circuit board
`
`or the sockets. In other words, the invention of Simpson can be applied to any
`
`suitable sized circuit board – including one that is 1 inch to 1.2 inches in height
`
`using appropriately sized sockets.
`
`4
`
`7
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`Polaris Innovations Ltd. Exhibit 2009
`Kingston v. Polaris, IPR2017-00974
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`
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`Case IPR2016-01622
`Attorney Docket No. 37307-0007IP1
`support). The Petition explained that Simpson was an example of a printed circuit
`
`board design circa 1995 whereas the Intel Specification outlined “the mechanical
`
`design and tolerance constraints at the turn of the millennium.” Paper 2 at 14-15.
`
`The Petition then stated that “one of ordinary skill in the art would recognize that
`
`modifying Simpson to comply with the physical constraints supplied by the Intel
`
`Specification would be a way to modernize Simpson to work with current
`
`motherboards and contemporary technology.” Id. at 15. Thus, the Petitioner
`
`explains that a person of ordinary skill in the art would want to combine Simpson
`
`with the Intel Specification and adopt the “physical constraints” consistent with
`
`circa 2000 memory modules.
`
`Second, Petitioner also specifically described that by “mid-2001, the
`
`dimensions of printed circuit boards had been standardized for some time.” Paper
`
`2 at 36; see also Ex. 1006 at ¶95. In fact, Exhibit 1003 is a copy of specification
`
`for a 168-pin SDRAM DIMM, which those of skill in the art knew set forth the
`
`requirements to produce a DIMM that was standardized at 1 inch to 1.5 inches
`
`(i.e., the size sellable for use in PCs). See Ex. 1006 (Subramanian Dec.) at ¶96; see
`
`also Ex. 1003 at 11 & 13. As the Petition states “the Intel Specification describes
`
`the modern standards for printed circuit board designs such as those described in
`
`Simpson.” Paper 2 at 15. Given that DIMM sizes were standardized by 2000, one
`
`of ordinary skill would know that the invention of Simpson would need to be
`
`5
`
`8
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`Polaris Innovations Ltd. Exhibit 2009
`Kingston v. Polaris, IPR2017-00974
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`
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`Case IPR2016-01622
`Attorney Docket No. 37307-0007IP1
`placed on a standard size memory module to be fit consumer PCs, which use
`
`“standard” parts. Paper 2 at 36; Ex. 1006 at ¶96.
`
`Lastly, Petitioner’s expert explained that “historically, electrical and computer
`
`engineers have always endeavored to shrink electrical components.” Ex. 1006 at
`
`¶95. Petitioner made this same point in the Petition and reinforced it with
`
`reference to the Intel Specification (Ex. 1003) showing that by the time of the Intel
`
`Specification, this trend had led to standardized dimensions for memory modules
`
`that had shrunk to 1 inch to 1.5 inches. Paper 2 at 36-37. This provides yet
`
`another reason why one of ordinary skill would apply the teachings of Simpson to
`
`a standard size DIMM, as this represented next stage in the progress of technology
`
`in memory modules. Id.
`
`C. The Petition Also Explains How the Combination Would Be Made
`The Petition also explains how one of ordinary skill in the art would have
`
`been able to use the dimensions from the Intel Specification with the chip design of
`
`Simpson. In particular, on pages 15-16 (the section on “Reasonable Expectation of
`
`Success”), the Petition explains that Simpson itself recognizes that “wiring
`
`configurations can easily be designed by a person of ordinary skill in the art.”
`
`Paper 2 citing Ex. 1002 at 10:27-30. As a guide for these modifications, the
`
`Petition explains that “any person of ordinary skill in the art would know to take
`
`the design of Simpson and apply the standardized dimensions and tolerances
`
`6
`
`9
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`Polaris Innovations Ltd. Exhibit 2009
`Kingston v. Polaris, IPR2017-00974
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`
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`Case IPR2016-01622
`Attorney Docket No. 37307-0007IP1
`described in the Intel Specification.” Paper 2 at 36-37. The Petition (and the
`
`supporting testimony) then provides an engineering drawing from the prior art
`
`showing the specific dimensional aspects that one of ordinary skill would use
`
`along with drawings of parts for design reference. Id. at 37; Ex. 1006 at ¶97. As
`
`Petitioner and its expert described, one of ordinary need merely use the images and
`
`dimensions of the Intel Specification while building the memory module of
`
`Simpson to satisfy the requirements of claim 4. Only routine knowledge and the
`
`disclosure of prior art is required to apply Simpson to a standard sized printed
`
`circuit board (as claimed).
`
`Notably, while the Petition provides an explanation of how the memory
`
`chips of Simpson could be physically constructed on a standard size circuit board,
`
`this is not required to establish obviousness. “The test for obviousness is not
`
`whether the features of a secondary reference may be bodily incorporated into the
`
`structure of the primary reference . . . Rather, the test is what the combined
`
`teachings of those references would have suggested to those of ordinary skill in the
`
`art.” In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981). See also In re Sneed, 710
`
`F.2d 1544, 1550 (Fed. Cir. 1983) (“it is not necessary that the inventions of the
`
`references be physically combinable to render obvious the invention under
`
`review.”) Here, the Petition clearly asserts that the combined teaching of the
`
`7
`
`10
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`Polaris Innovations Ltd. Exhibit 2009
`Kingston v. Polaris, IPR2017-00974
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`
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`Case IPR2016-01622
`Attorney Docket No. 37307-0007IP1
`references would suggest a DIMM within the height range of claim 4 using the
`
`chip layout of Simpson. See Paper 2 at 36-37.
`
`D. The Claimed Circuit Board Height is a Design Choice Not
`Entitled to Independent Patentable Weight
`As Petitioner set forth in its Petition, a height of 1 to 1.2 inches would have
`
`been recognized as a “standardized design choice.” Paper 1 at 36. It is not entitled
`
`to patentable weight beyond that, and, thus, it would be obvious to construct
`
`Simpson at a height of 1 inch to 1.2 inches even without reliance on the Intel
`
`Specification. In particular, as the C.C.P.A. recognized decades before KSR’s
`
`more flexible approach to obviousness, “relative dimensions” are typically deemed
`
`matters of choice involving differences in degree and/or size and are not patentable
`
`distinctions. In re Rose, 220 F.2d 459, 463 (C.C.P.A. 1955) (holding that “[t]he
`
`number of strips in a bundle, the number of bundles in a layer, the number of
`
`layers of bundles and the relative dimensions of the strips, the bundles and the
`
`package are all deemed matters of choice involving differences in degree and/or
`
`size and are not patentable distinctions.”)
`
`As Petitioner argued, claim 4 recites no reason why a height of 1 inch to 1.2
`
`inches is significant and recites no feature which builds from or relies on this
`
`height. As recited in the claim, these numbers are essentially arbitrary and no
`
`different in concept than reciting that the memory module is blue. It is simply a
`
`design choice of the person building the module – they could build the features of
`
`8
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`11
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`Polaris Innovations Ltd. Exhibit 2009
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`
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`Case IPR2016-01622
`Attorney Docket No. 37307-0007IP1
`claim 1 on a tall circuit board or they could build it on a shorter circuit board.
`
`Absent something else, merely building on a shorter circuit board does not make
`
`the subject matter of claim 1 non-obvious.
`
`Even if the height range recited in claim 4 were an optimal or improved size,
`
`it would remain a design choice and still not be entitled to independent patentable
`
`weight. This is the doctrine known as “result effective variable,” and the Federal
`
`Circuit has cautioned against giving independent patentable weight for merely
`
`varying the size of objects. See In re Applied Materials, Inc., 692 F.3d 1289, 1295
`
`(Fed. Cir. 2012). As the Court explained, “where the general conditions of a claim
`
`are disclosed in the prior art, it is not inventive to discover the optimum or
`
`workable ranges by routine experimentation.” Id. Moreover, as the range of 1
`
`inch to 1.2 inches lies within the range of the prior art Intel Specification (as
`
`described above), the named inventors did not even determine this range, so a
`
`prima facie obviousness case would exist in any event. See MPEP 2144.05(I) (“In
`
`the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the
`
`prior art’ a prima facie case of obviousness exists”); see also In re Wertheim, 541
`
`F.2d 257 (C.C.P.A. 1976).
`
`IV. CONCLUSION
`
`For each of the reasons set forth above, Petitioner respectfully requests
`
`reconsideration of the institution decision for claim 4 of the ’414 Patent in view of
`
`9
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`12
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`Polaris Innovations Ltd. Exhibit 2009
`Kingston v. Polaris, IPR2017-00974
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`
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`Case IPR2016-01622
`Attorney Docket No. 37307-0007IP1
`the Petition arguments set forth above. Petitioner believes that the Petition
`
`establishes that there is a reasonable likelihood that it will prevail on claim 4 and
`
`requests that the Board institution a trial on claim 4 in addition to the already
`
`instituted trial on claims 1 and 5-8.
`
`
`
`
`
`Respectfully submitted,
`
`Date: February 27, 2017
`
`
`
`
`
`/David Hoffman/
`David Hoffman (Reg. No. 54,174)
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (512) 226-8154
`Fax: (202) 783-2331
`IPR37307-0007IP1@fr.com
`
`10
`
`13
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`Polaris Innovations Ltd. Exhibit 2009
`Kingston v. Polaris, IPR2017-00974
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`
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`Case IPR2016-01622
`Attorney Docket No. 37307-0007IP1
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies that on
`
`February 27, 2017, a complete and entire copy of this Petitioner’s Request for
`
`Rehearing of the Board’s Institution Decision on Claim 4 were provided via email
`
`to the Patent Owner by serving the correspondence address of record as follows:
`
`Kenneth J. Weatherwax
`LOWENSTEIN & WEATHERWAX LLP
`1880 Century Park East, Suite 815, Los Angeles, CA 90067
`PolarInnovs_IPRs@lowensteinweatherwax.com
`
`
`/Christine Rogers/
`Christine Rogers
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`Tel: (650) 839-5092
`
`
`
`
`
`
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`11
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`14
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`Polaris Innovations Ltd. Exhibit 2009
`Kingston v. Polaris, IPR2017-00974
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