Trials@uspto.gov
`571-272-7822
`
`
`Paper 8
`Entered: August 14, 2017
`
`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 IPR2017-00974
`Patent 6,850,414 B2
`____________
`
`
`Before SALLY C. MEDLEY, MATTHEW R. CLEMENTS, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. §§ 314, 325(d) and 37 C.F.R. § 42.108
`
`
`
`
`
`571-272-7822
`
`
`Paper 8
`Entered: August 14, 2017
`
`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 IPR2017-00974
`Patent 6,850,414 B2
`____________
`
`
`Before SALLY C. MEDLEY, MATTHEW R. CLEMENTS, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. §§ 314, 325(d) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2017-00974
`Patent 6,850,414 B2
`
`
`I.
`INTRODUCTION
`Kingston Technology Company, Inc. (“Petitioner”) filed a Petition
`requesting inter partes review of claim 4 (“the challenged claim”) of U.S.
`Patent No. 6,850,414 (Ex. 1001, “the ’414 patent”). Paper 2 (“Pet.”).
`Polaris Innovations Ltd. (“Patent Owner”) filed a Preliminary Response.
`Paper 6 (“Prelim. Resp.”). We review the Petition pursuant to 35 U.S.C.
`§ 314, which provides that an inter partes review may be authorized only if
`“the information presented in the petition . . . and any [preliminary]
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). Upon consideration of
`the Petition and the Preliminary Response, we exercise our discretion not to
`institute inter partes review. 35 U.S.C. §§ 314(a), 325(d).
`
`A. Related Proceedings
`The ’414 patent is involved in Polaris Innovations Ltd. v. Kingston
`Tech. Co., Inc., Case No. 8:16-cv-300 (C.D. Cal.). Pet. 2; Paper 7, 1.
`Petitioner and Patent Owner further identify IPR2016-01622, filed by
`Petitioner on August 16, 2016, as a related inter partes review proceeding
`regarding the ’414 patent, a case in which we denied institution of inter
`partes review with respect to claim 4 on February 15, 2017. Id.; see also
`Pet. 11–14 (arguing that we should not exercise our discretion to deny
`institution pursuant to 35 U.S.C. § 325(d)); Prelim. Resp. 5–27 (arguing that
`we should exercise our discretion to deny institution pursuant to 35 U.S.C.
`§ 325(d)).
`
`2
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`
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`IPR2017-00974
`Patent 6,850,414 B2
`
`
`B. The ’414 patent
`The ’414 patent, titled “Electronic printed circuit board having a
`plurality of identically designed, housing-encapsulated semiconductor
`memories,” issued February 1, 2005, from U.S. Patent Application
`No. 10/187,763. Ex. 1001 at [54], [45], [21].
`The ’414 patent generally relates to an electronic printed circuit board
`having a memory module comprised of identically designed semiconductor
`memories configured on the printed circuit board. Id. at Abstract.
`According to the ’414 patent, “Printed circuit boards of this type are inserted
`into motherboards of personal computers or network computers and serve as
`the main memory.” Id. at 1:21–23. Figures 1A and 1B are reproduced
`below.
`
`Figure 1A shows the front side of a conventional printed circuit board and
`Figure 1B shows the rear side of a conventional printed circuit board. Id. at
`
`
`
`3
`
`
`
`IPR2017-00974
`Patent 6,850,414 B2
`
`5:6–10. In a conventional arrangement, semiconductor memories 4 are
`arranged on the front and rear sides of the printed circuit board in the same
`orientation as error correction chip 5. Id. at 1:62–67. “In the case of this
`conventional arrangement . . . there is no more leeway for a further reduction
`of the circuit board height (the height of the printed circuit board
`perpendicular to the contact strip).” Id. at 2:37–41. In network computers,
`however, “the printed circuit boards are inserted into compartment-type
`elements having a small height, for which reason the printed circuit boards
`themselves should also have only a small height.” Id. at 1:23–27.
`To address this problem, the ’414 patent discloses an electronic
`printed circuit board in which the error correction chip remains oriented
`perpendicular to the contact strip but the other semiconductor memories are
`oriented parallel to the contact strip, such that it is “possible to reduce the
`height of the printed circuit board while enabling the rectangular housing to
`keep the same physical form.” Id. at Abstract. Figure 2 is reproduced
`below.
`
`Figure 3 shows the rear side of a printed circuit board according to an
`embodiment of the ’414 patent. Id. at 5:13–14. In this arrangement,
`
`
`
`4
`
`
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`IPR2017-00974
`Patent 6,850,414 B2
`
`housings 5a of semiconductor memories 4a are arranged horizontally on
`printed circuit board 1, and only housing 5b of error correction chip 4b is
`arranged vertically. Id. at 6:19–28. Housing 5b is “brought up to [] contact
`strip 2 as close as possible” because “there is no need for any resistors 8
`[between housing 5b and contact strip 2], as in the case of all of the other
`identically designed semiconductor memories 4a that are configured
`horizontally.” Id. at 6:28–35. “As a result, the height of printed circuit
`board [1] can be reduced from a value of H1 to a smaller value H2” (id. at
`6:41–42), as shown in Figure 2, which is reproduced below.
`
`
`
`Figure 2 shows the front side of a printed circuit board according to an
`embodiment of the ’414 patent. Id. at 5:11–12.
`
`C. Illustrative Claim
`Claim 4, which depends from independent claim 1, is the only claim
`challenged and is reproduced below:
`1. An electronic printed circuit board configuration,
`comprising:
`an electronic printed circuit board having a contact strip for
`insertion into another electronic unit; and
`a memory module having at least nine identically designed
`integrated semiconductor memories;
`
`5
`
`
`
`IPR2017-00974
`Patent 6,850,414 B2
`
`
`semiconductor memories being
`said
`each one of
`encapsulated in a rectangular housing having a shorter dimension
`and a longer dimension;
`said housing of each one of said semiconductor memories
`being identically designed and being individually connected to said
`printed circuit board;
`one of said semiconductor memories being connected as an
`error correction chip;
`said longer dimension of said housing of said error
`correction chip being oriented perpendicular to said contact strip;
`and
`
`said longer dimension of said housing of each one of said
`semiconductor memories, other than said error correction chip,
`being oriented parallel with said contact strip.
`Ex. 1001, 7:24–8:3.
`4.
`The printed circuit board according to claim 1, wherein:
`said printed circuit board has a height of 1 to 1.2 inches
`perpendicular to said contact strip.
`Id. at 8:21–23.
`
`D. Evidence Relied Upon
`Petitioner relies upon the following prior art references:
`Simpson
`GB 2 289 573 A
`Nov. 22, 1995
`Karabatsos
`US 2002/0006032 A1 Jan. 17, 2002
`Bechtolsheim
`US 5,973,951
`Oct. 26, 1999
`Tokunaga
`US 6,038,132
`Mar. 14, 2000
`PC SDRAM UNBUFFERED DIMM SPECIFICATION, REV. 1.0, 1997
`(the “Intel Specification”).
`
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1008
`
`Pet. 10–11. Petitioner also relies upon the Declaration of Vivek
`Subramanian, Ph.D. (“Subramanian Decl.”) (Ex. 1006).
`
`6
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`IPR2017-00974
`Patent 6,850,414 B2
`
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claim is unpatentable based on
`the following grounds (Pet. 9–10):
`Basis Claim challenged
`References
`§ 103 4
`Simpson and Karabatsos
`Bechtolsheim, Tokunaga, and Karabatsos § 103 4
`
`II. ANALYSIS
`
`A. Discretionary Non-Institution
`Institution of inter partes review is discretionary. 35 U.S.C. § 314(a);
`Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the
`PTO is permitted, but never compelled, to institute an IPR proceeding”); see
`also 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board
`may authorize the review to proceed on all or some of the challenged claims
`and on all or some of the grounds of unpatentability asserted for each
`claim.”). When exercising that discretion, the Board may take into account
`whether “the same or substantially the same prior art or arguments
`previously were presented to the Office.” 35 U.S.C. § 325(d); see Conopco,
`Inc. v. The Proctor & Gamble Co., Case IPR2014-00628, slip op. 5–10
`(PTAB October 20, 2014) (Paper 21) (declining to institute because
`substantially the same arguments previously were presented to the Board).
`There is no per se rule against a petitioner filing a second petition to address
`a patent claim on which the Board previously declined to institute a review.
`Rather, panels of this Board have considered a variety of factors in deciding
`whether to exercise their discretion not to institute review, including, inter
`alia:
`
`(1) the finite resources of the Board;
`
`7
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`IPR2017-00974
`Patent 6,850,414 B2
`
`
`(2) the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than one year after the date on which the
`Director notices institution of review;
`(3) whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`(4) whether, at the time of filing of the earlier petition, the
`petitioner knew of the prior art asserted in the later petition or
`should have known of it;
`(5) whether, at the time of filing of the later petition, the
`petitioner already received the patent owner’s preliminary
`response to the earlier petition or received the Board’s decision
`on whether to institute review in the earlier petition;
`(6) the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the later petition and the filing
`of the later petition;
`(7) whether the petitioner provides adequate explanation for the
`time elapsed between the filing dates of multiple petitions
`directed to the same claims of the same patent; and
`(8) whether the same or substantially the same prior art or
`arguments previously were presented to the Office.
`Alarm.com v. Vivint, Inc., IPR2016-01110, Paper 11 at 4–5 (PTAB Nov. 28,
`2016) (footnotes omitted) (citing LG Electronics Inc. v. Core Wireless
`Licensing S.A.R.L., IPR2016- 00986, Paper 12 at 6–7 (PTAB Aug. 22,
`2016); NVIDIA Corp. v. Samsung Elec. Co., IPR2016-00134, Paper 9 at 6–7
`(PTAB May 4, 2016); Unified Patents, Inc. v. PersonalWeb Techs., LLC,
`IPR2014-00702, Paper 13 at 7–9 (PTAB July 24, 2014); Amendments to the
`Rules of Practice for Trials Before the Patent Trial and Appeal Board, 81
`Fed. Reg. 18750, 18759 (Apr. 1, 2016) (“[T]he current rules provide
`sufficient flexibility to address the unique factual scenarios presented to
`handle efficiently and fairly related proceedings before the Office on a case-
`
`8
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`
`
`IPR2017-00974
`Patent 6,850,414 B2
`
`by-case basis, and that the Office will continue to take into account the
`interests of justice and fairness to both petitioners and patent owners where
`multiple proceedings involving the same patent claims are before the
`Office.”)). These factors guide our decision to exercise discretion, but all
`factors need not be present, and we need not give equal weight to each factor
`in reaching our decision.
`
`B. IPR2016-01622
`In IPR2016-01622, Petitioner asserted that claim 4 of the ’414 patent
`is unpatentable based upon the following grounds (Ex. 2008 (Petition filed
`in IPR2016-01622), 9):
`Basis Claims challenged
`References
`§ 103
`1–8
`Simpson
`Simpson and Intel Specification § 103
`1–8
`Intel
`§ 103
`1–8
`
`On February 15, 2017, in IPR2016-01622, we denied institution of inter
`partes review of challenged claim 4 of the ’414 patent. Kingston
`Technology Company, Inc. v. Polaris Innovations Ltd., Case IPR2016-
`01622, slip op. at 23 (PTAB Feb. 15, 2017) (Paper 7) (“Decision”). With
`respect to Petitioner’s assertion that claim 4 is unpatentable as obvious over
`Simpson, we determined that
`Claim 4 recites, “said printed circuit board has a height of
`1 to 1.2 inches perpendicular to said contact strip.” Petitioner
`argues that a person of ordinary skill in the art would have had a
`reasonable expectation of success in limiting Simpson to a height
`of 1 to 1.2 inches and would have been motivated to do so
`because, inter alia, “engineers have historically sought to reduce
`the size of electronic components.” Pet. 35–36. 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.” Prelim. Resp. 39. According to Patent
`
`9
`
`
`
`IPR2017-00974
`Patent 6,850,414 B2
`
`
`Owner, Simpson teaches “sockets arranged in two rows with
`dimensions that are significantly larger than the chip package
`itself . . . significantly increasing the height of the [printed circuit
`board.” Id. at 41. We agree that Petitioner has not explained
`sufficiently how or why a person of ordinary skill in the art would
`have modified Simpson to achieve a height of “1 to 1.2 inches
`perpendicular to said contact strip.” Id. at 39. As a result, we are
`not persuaded that Petitioner has established a reasonable
`likelihood that it would prevail in showing that claim 4 would
`have been obvious over Simpson.
`Decision 16–17. We also determined that Petitioner had not explained
`persuasively its allegations for the other two grounds. Decision 18, 22.
`Petitioner requested rehearing with respect to claim 4. Ex. 2009. We
`denied the rehearing request, explaining that
`The Petition and Dr. Subramanian propose modifying the
`height of Simpson’s printed circuit board, but do not address
`whether a height in the range of 1 to 1.2 inches would be
`sufficient to accommodate two rows of horizontally-oriented
`memory chips, as taught by Simpson. Neither the Petition nor
`Dr. Subramanian addresses, for example, the dimensions of the
`components taught by Simpson, whether two rows of memory
`chips would fit on a printed circuit board that has a height of only
`1 to 1.2 inches, or—if the memory chips taught by Simpson
`would not fit—what a person of ordinary skill in the art would
`have known about the dimensions of similar memory chips as of
`the critical date that would have made it obvious to fit two rows
`of them on a printed circuit board having a height of only 1 to
`1.2 inches.
`Kingston Technology Company, Inc. v. Polaris Innovations Ltd., Case
`IPR2016-01622, slip op. at 6 (PTAB April 6, 2017) (Paper 16).
`
`C. Discussion
`Petitioner asserts that 35 U.S.C. § 325(d) does not apply to this case
`because this Petition “presents new and substantially different arguments
`
`10
`
`
`
`IPR2017-00974
`Patent 6,850,414 B2
`
`and prior art,” four new references were unknown to Petitioner at the time it
`filed its previous petition, other panels have allowed second petitions,
`instituting an inter partes review of claim 4 will potentially streamline the
`corresponding litigation in district court, the one-year bar in § 315(b)
`“plainly affords conscientious petitioners who file early (like [Petitioner])
`time to thereafter supplement with an additional filing,” and declining to
`review the merits would discourage parties from filing early. Pet. 11–14.
`Patent Owner argues that we should decline to institute because (1)
`this Petition is the second Petition by the same Petitioner challenging claim
`4 (third factor); (2) this Petition was delayed to take advantage of the
`Preliminary Response and the Decision on Institution in IPR2016-01622
`(fifth and seventh factors); (3) Petitioner knew, or should have known, of the
`prior art asserted in this Petition at the time that it filed its previous Petition
`(fourth and sixth factors); (4) this Petition relies on substantially the same
`arguments as in Petitioner’s previous petition (eighth factor); and (5)
`considering this Petition would waste Board resources and prevent a “just,
`speedy, and inexpensive resolution” (first and second factors). Prelim. Resp.
`1–3, 5–22. Patent Owner also argues that Petitioner’s theory regarding the
`one-year bar is contrary to law, that Petitioner ignores the Board’s
`discretionary authority under § 314(a), that the Board decisions relied upon
`by Petitioner are inapposite, and that the mere addition of “new” references
`to a second petition is not dispositive under § 325(d). Id. at 22–27.
`With the above-described factors in mind, and for the reasons that
`follow, we agree with Patent Owner that the circumstances here weigh
`against institution of an inter partes review.
`
`11
`
`
`
`IPR2017-00974
`Patent 6,850,414 B2
`
`
`With respect to the third factor, this Petition is Petitioner’s second
`petition specifically challenging claim 4 of the ’414 patent.
`With respect to the fourth factor, Petitioner knew of at least Simpson
`and the Intel Specification at the time it filed its first petition because it
`relied upon those two references in that petition. Prelim. Resp. 13. Even
`assuming as true Petitioner’s assertion that Bechtolsheim, Karabatsos, and
`Tokunaga were unknown to it at the time it filed its first petition (which
`Patent Owner disputes (Prelim. Resp. 15–16)), this factor weighs against
`institution at least for the asserted ground based upon Simpson.
`With respect to the fifth factor, this Petition was filed on February 24,
`2017. Thus, when Petitioner filed this Petition, it had both Patent Owner’s
`Preliminary Response (filed November 28, 2016) and our Decision on
`Institution (mailed February 15, 2017) in IPR2016-01622. Kingston
`Technology Company, Inc. v. Polaris Innovations Ltd., Case IPR2016-
`01622, Papers 6, 7.
`With respect to the sixth factor, Petitioner does not specify when it
`learned of the new prior art in this case (i.e., Bechtolsheim, Karabatsos, and
`Tokunaga), saying only that it “is the product of continued searching.” Pet.
`11. As Patent Owner points out, Petitioner does not “provide any
`explanation for the length of time that elapsed between when the Petitioner
`learned of this ‘new’ art and the filing of the [this] Petition.” Prelim. Resp.
`17.
`
`With respect to the seventh factor, Petitioner provides no explanation
`for the time elapsed between the filing date of the first Petition on August
`16, 2016, and the filing of this Petition on February 24, 2017. Prelim. Resp.
`12. Moreover, as Patent Owner also points out, the filing of this Petition
`
`12
`
`
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`IPR2017-00974
`Patent 6,850,414 B2
`
`more than six months after the first petition and just one day before the
`statutory bar date under § 315(b), suggests that Petitioner attempted to
`maximize its ability to use Patent Owner’s Preliminary Response and our
`Decision on Institution in IPR2016-01622 for the benefit of this Petition. Id.
`at 12.
`With respect to the eighth factor, we determine that the prior art and
`arguments asserted in this Petition are “substantially the same” as those in
`the first petition. We agree with Patent Owner that this Petition uses
`different secondary references but that those references “serve the same
`purpose.” Prelim. Resp. 19. For example, whereas the first petition relied
`upon the Intel Specification for teaching a module having a height in the
`range recited by claim 4, this Petition relies upon Karabatsos for teaching a
`module with a height of between 1.125 and 1.250 inches. Pet. 35 (citing Ex.
`1003 ¶ 27). As in its first Petition, Petitioner argues that a person of
`ordinary skill in the art would have recognized the design need for modules
`with the recited height and would have found it obvious to reduce the height
`of Simpson’s module. Pet. 35–38. This is substantially the same argument
`that we determined not to be persuasive in IPR2016-01622. Prelim. Resp.
`40–41. In particular, this argument, like the argument in the first Petition,
`does not
`address[], for example, the dimensions of the components taught
`by Simpson, whether two rows of memory chips would fit on a
`printed circuit board that has a height of only 1 to 1.2 inches,
`or—if the memory chips taught by Simpson would not fit—what
`a person of ordinary skill in the art would have known about the
`dimensions of similar memory chips as of the critical date that
`would have made it obvious to fit two rows of them on a printed
`circuit board having a height of only 1 to 1.2 inches.
`
`13
`
`
`
`IPR2017-00974
`Patent 6,850,414 B2
`
`Kingston Technology Company, Inc. v. Polaris Innovations Ltd., Case
`IPR2016-01622, slip op. at 6 (PTAB April 6, 2017) (Paper 16). Petitioner
`relies upon substantially the same argument in the ground based upon
`Bechtolsheim. Pet. 51–54. Bechtolsheim teaches three rows of chips. See,
`e.g., Ex. 1004, Figs. 1a, 2a. Petitioner suggests that a person of ordinary
`skill in the art could, “for example, simply eliminat[e] a row of the DRAM
`memory devices to reduce the profile height of the memory module” (Pet.
`53), but Petitioner does not address the dimensions of the memory devices
`taught by Bechtolsheim, whether two rows of those devices would fit on a
`printed circuit board that has a height of only 1 to 1.2 inches, or—if the
`memory chips taught by Bechtolsheim would not fit—what a person of
`ordinary skill in the art would have known about the dimensions of similar
`memory chips as of the critical date that would have made it obvious to fit
`two rows of them on a printed circuit board having a height of only 1 to 1.2
`inches.
`
`D. Summary
`On this record, we exercise our discretion not to institute inter partes
`review. 35 U.S.C. §§ 314(a), 325(d).
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied.
`
`
`
`14
`
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`IPR2017-00974
`Patent 6,850,414 B2
`
`For PETITIONER:
`
`David Hoffman
`FISH & RICHARDSON P.C.
`hoffman@fr.com
`
`
`Martha Hopkins
`LAW OFFICES OF S.J. CHRISTINE YANG
`mhopkins@sjclawpc.com
`
`
`For PATENT OWNER:
`
`Kenneth Weatherwax
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`
`
`15
`
`
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