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SK hynix Inc. v. Netlist, Inc.

Docket IPR2018-00362, Patent Trial and Appeal Board (Dec. 22, 2017)
Bryan Moore, Jon Jurgovan, Kamran Jivani, Matthew Clements, presiding
Case TypeInter Partes Review
Patent9606907
Patent Owner Netlist, Inc.
Petitioner SK hynix Inc.
Petitioner SK Hynix Memory Solutions
...
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30 Other Not for motions: Record of Oral Hearing

Document IPR2018-00362, No. 30 Other Not for motions - Record of Oral Hearing (P.T.A.B. Jun. 27, 2019)
This configuration has come to be called the fork in the road, because the data transmission circuit 416 chooses to permit communication as -- at least as described in the ’907 Patent.
Because they’re inclusion in the same patent application would have motivated a skilled artisan to consider them together.” And also because Ellsberry specifically relates them to each other, and also at the bottom you’ll see it’s because they are essentially an arrangement of old elements used in their prior art way with no unpredictable results.
Going back to paragraph 42, Figures 8(a) and 8(b) illustrate a command scheme for a switch control unit combination to -- and here it is -- operate multiple banks concurrently, according to one embodiment of the invention.
JUDGE JIVANI: And my question is your opponents contend that paragraph 33 is evidence that there’s no port disabled option that is described subsequently in the 40 -- you used 40 through 42 somewhere in there -- is not available for read commands.
The next sentence “In row bank mode, read and write Case IPR2018-00362 (Patent 9,606,907 B2) Case IPR2018-00364 (Patent 9,606,907 B2) command are sent only to the targeted memory device, which outputs or receives data in response to that read or write command.” And here they cite to Ellsberry at 33, which the board found to be no port disabling scheme -- a no port disabling scheme.
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29 Termination Decision Document: Termination Decision Document

Document IPR2018-00362, No. 29 Termination Decision Document - Termination Decision Document (P.T.A.B. Jun. 27, 2019)
Petitioner contends it stands by its proposed constructions but agrees “there is no need for the Board to construe any claim terms, as none of Patent Owner’s arguments turn on claim construction.” Corr.
Nonetheless, both alleged port schemes use signals on Ellsberry’s bus 220 that can be considered “first module control signals” and signals on Ellsberry’s bus 210 that can be regarded as “second module control signals.” See, e.g., Ex. ...
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28 Order: Order Trial Hearing

Document IPR2018-00362, No. 28 Order - Order Trial Hearing (P.T.A.B. Mar. 22, 2019)
The hearing will commence at 12:00 PM Central Time, on March 26, 2019, on the 1st floor of the Terminal Annex Federal Building, 207 S. Houston St., Dallas, Texas.
The Board will provide a court reporter for the hearing and the reporter’s transcript will constitute the official record.
Petitioner bears the ultimate burden of proof that the claims under review in this case are unpatentable.
The parties are directed to St. Jude Medical, Cardiology Division, Inc. v. The Board of Regents of the University of Michigan, Case IPR2013-00041, (PTAB Jan. 27, 2014) (Paper 65), for guidance regarding the appropriate content of demonstrative exhibits.
Petitioner’s request for audiovisual equipment to display demonstrative exhibits, including the use of a projector and screen that connects to a laptop computer, is acknowledged.
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24 Order Conduct of Proceeding: Order 37 CFR 425

Document IPR2018-00362, No. 24 Order Conduct of Proceeding - Order 37 CFR 425 (P.T.A.B. Mar. 1, 2019)
By email communication to the Board on February 22, 2019, Patent Owner requests authorization to file a Sur-Reply to Petitioner’s Corrected Reply filed February 20, 2019.
Patent Owner desires to address Petitioner’s characterization of one of the prior art references, Ellsberry, and its presentation in the briefings in light of the Corrected Reply.
Petitioner responds that Patent Owner provided insufficient information for Petitioner to be able to address Patent Owner’s request, and opposes the request for failing to comply with our meet-and-confer requirement before requesting Board authorization.
Petitioner has not identified issues in Patent Owner’s Sur-Reply that would warrant granting leave for such extraordinary briefing, and indeed, Petitioner cannot make such a showing without the benefit of Patent Owner’s Sur- Reply.
ORDERED that Patent Owner’s request for authorization to file a Sur- Reply in this case is granted; FURTHER ORDERED that Patent Owner’s Sur-Reply shall be limited to no more than 5 pages and filed on or before March 8, 2019; FURTHER ORDERED that Patent Owner shall not submit a motion for observations in this proceeding; and FURTHER ORDERED that Petitioner’s request for authorization to file a Sur-Sur-Reply is denied.
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17 Order: PANEL CHANGE ORDERConduct of the Proceedings37 CFR ¿¿ 425

Document IPR2018-00362, No. 17 Order - PANEL CHANGE ORDERConduct of the Proceedings37 CFR ¿¿ 425 (P.T.A.B. Jan. 15, 2019)
Before JACQUELINE WRIGHT BONILLA, Acting Deputy Chief Administrative Patent Judge.
The parties are notified that the panel has changed in the above- referenced proceeding.
Due to unavailability, Administrative Patent Judge Bryan F. Moore replaces Administrative Patent Judge Matthew R. Clements on the panel.
Thus, Administrative Patent Judges Bryan F. Moore, Jon M. Jurgovan, and Kamran Jivani now constitute the panel for consideration of all matters in this proceeding.
All prior decisions and orders remain in effect.
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10 Order Conduct of Proceeding: Order 37 CFR 425

Document IPR2018-00362, No. 10 Order Conduct of Proceeding - Order 37 CFR 425 (P.T.A.B. Aug. 2, 2018)
1 Case IPR2018-00363 has been consolidated with the instant proceeding.
By email communication to the Board on July 29, 2018, Patent Owner requested clarification of the manner in which Patent Owner’s Response should be filed in this proceeding since it has been consolidated with IPR2018-00363.
Specifically, Patent Owner asked whether it should file two separate Patent Owner Responses or one Patent Owner Response with twice the allotted word count under 37 C.F.R. § 42.24.
We, therefore, grant Patent Owner twice the normal allotment for its Patent Owner Response and grant Petitioner twice the normal allotment for its Reply.
ORDERED that Patent Owner is authorized to file one Patent Owner Response of up to 28,000 words; and FURTHER ORDERED that Petitioner is authorized to file one Reply of up to 11,200 words.
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7 Institution Decision: Granting Institution of Inter Partes Review37 CFR § 42108

Document IPR2018-00362, No. 7 Institution Decision - Granting Institution of Inter Partes Review37 CFR § 42108 (P.T.A.B. Jun. 29, 2018)
... Ellsberry’s no-port-disabled and one-port-disabled 26 IPR2018-00362 and IPR2018-00363 Patent 9,606,907 B2 schemes together because a switch’s port cannot be both enabled and disabled at the same time, Petitioner nonetheless ...
The signals that control unit 204 generates vary among the different port schemes but there are nonetheless signals that can be identified as “first module control signals” and “second module control signals” regardless of the port ...
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