Smart Modular Technologies Inc.v.Netlist, Inc.

Patent Trial and Appeal Board

Mar 9, 2016

12422925 (P.T.A.B. Mar. 9, 2016)

Trials@uspto.gov Paper 45
571-272-7822 Entered: March 9, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

SMART MODULAR TECHNOLOGIES INC.,
Petitioner,
v.
NETLIST, INC.,
Patent Owner.
_______________

Case IPR2014-01372
Patent 8,001,434 B1
_______________

Before LINDA M. GAUDETTE, BRYAN F. MOORE, and
PETER P. CHEN, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. BACKGROUND
Smart Modular Technologies Inc. (“Petitioner”) filed a Petition
(Paper 7, Corrected Petition (“Pet.”)) on August 23, 2014, requesting
institution of an inter partes review of claims 1–35 (the “challenged claims”)
of U.S. Patent No. 8,001,434 B1 (Ex. 1008, “the ’434 patent”). Netlist, Inc.
(“Patent Owner”) filed a Preliminary Response (Paper 11). Based on these
submissions, an inter partes review of claims 1–4, 14–20, 27, and 29 was
instituted on March 10, 2015, pursuant to 35 U.S.C. § 314. Paper 13 (“Dec.
on Inst.” or “Institution Decision”).
After institution, Patent Owner filed a Response (Paper 22, “PO
Resp.”), and Petitioner filed a Reply to the Patent Owner Response (Paper
27, “Reply”).
Petitioner filed a Motion to Exclude Evidence. Paper 26; see also
Paper 37 (Patent Owner’s Opposition) and Paper 42 (Petitioner’s Reply).
Patent Owner also filed a Motion to Exclude Evidence (Paper 34; see also
Paper 39 (Petitioner’s Opposition) and Paper 41 (Patent Owner’s Reply))
and a Motion to Exclude Portions of Petitioner’s Reply (Paper 35; see also
Paper 40 (Petitioner’s Opposition)).
Oral argument was held on November 17, 2015, and a transcript
(Paper 43, “Tr.”) has been entered into the record.
The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73,
addresses issues and arguments raised during trial.
For the reasons discussed below, we determine Petitioner has not met
its burden to prove, by a preponderance of the evidence, that claims 1–4, 14–
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20, 27, and 29 of the ’434 patent are unpatentable. Petitioner’s and Patent
Owner’s Motions to Exclude are dismissed.
A. Related Matters
Petitioner also requested, and we instituted, an inter partes review of
U.S. Patent No. 8,359,501 (“the ’501 patent”), which claims priority as a
continuation of U.S. Patent Application No. 12/422,925 (now the ’434
patent): Smart Modular Technologies Inc. v. Netlist, Inc., Case IPR2014-
01374 (PTAB March 10, 2015), Paper 12. We denied Petitioner’s requests
to institute inter partes reviews of the ’434 patent and the ’501 patent in two
additional petitions, filed August 23, 2014: Smart Modular Technologies
Inc. v. Netlist, Inc., Case IPR2014-01373 (PTAB March 13, 2015), Paper 16,
and Case IPR2014-01375 (PTAB March 13, 2015), Paper 12, respectively.
Oral argument in IPR2014-01374 was consolidated with the oral argument
in the present inter partes review. A final decision in IPR2014-01374 is
issued concurrently with this final decision.
The ’434 patent also is the subject of IPR2014-00970 (“IPR-970”).
We entered a final written decision in that case on December 14, 2015,
concluding that claims 1, 14, 15, 19–25, and 27–34 are unpatentable on the
following grounds: claims 1, 14, 15, 20–25, 27, and 29–34 under 35 U.S.C.
§ 102(b) based on Averbuj (U.S. Patent Application Publication No.
2005/0257109 A1, issued November 17, 2005); claim 28 under 35 U.S.C.
§ 103(a) based on Averbuj; and claims 1, 14, 15, 19, and 29 under 35 U.S.C.
§ 103(a) based on Huang (An Efficient Parallel Transparent BIST Method
for Multiple Embedded Memory Buffers, Fourteenth International
Conference on VLSI Design 379–384 (2001), IEEE). Sandisk Corp. v.
Netlist, Inc., Case IPR2014-00970 (PTAB December 14, 2015), Paper 32
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(“IPR-970 FWD”). Petitioner Sandisk Corporation has requested rehearing
of our determination that it did not meet its burden to show unpatentability
of claims 2, 5, 6, 17, 18, and 35. Id., Paper 33.
B. The ’434 Patent (Ex. 1008)
The ’434 patent relates to self-testing electronic memory modules.
Ex. 1008, 1:23–24. A block diagram of an exemplary self-testing memory
module is shown in Figure 3 of the ’434 patent, reproduced below. See id. at
9:23–25.

As illustrated in Figure 3, above, “memory module 10 includes a
printed circuit board 12 configured to be operatively coupled to a memory
controller 14 of a computer system 16.” Id. at 5:1–3. Memory module 10
includes a plurality of memory devices 18, each memory device 20 of the
plurality of memory devices 18 comprising data, address, and control ports.
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Id. at 5:3–7. “[M]emory module 10 comprises a control module 22 [and] . . .
a data module 28.” Id. at 5:7–10.
“[C]ontrol module 22 can be configured to generate address and
control signals 24 for testing the plurality of memory devices 18.” Id. at
9:25–27. In the embodiment shown in Figure 3, control module 22 includes
control mixer element 32 for controlling the address and control signals for
the self-testing function. Id. at 9:31–33. Control mixer element 32 includes
memory device controller 34 (e.g., a DRAM controller) and test controller
36. Id. at 9:29–31. “[T]est controller 36 controls the generation of the
address and control signal sequences to be used during the self-testing
operation of the memory module 10 and also communicates with the data
module 28.” Id. at 9:53–56. “[M]emory device controller 34 receives
signals 38 (e.g., address and control signals) from the system memory
controller 14 and signals 42 (e.g., address and controls signals) from the test
controller 36.” Id. at 9:37–40.
Data module 28 comprises a plurality of data handlers 30 that “may be
operatively coupled to (e.g., logically and/or electrically coupled to) the
corresponding plurality of data ports” of memory devices 18. Id. at 5:10–11,
16–18. In the embodiment illustrated in Figure 3, each of data handlers 30
includes data handler logic element 46, comprising data generation element
54 and verification element 56. Id. at 10:27–30. “[D]ata generation element
54 may be configured to generate data signals (e.g., patterns of data signals)
for writing to the corresponding plurality of data ports” of memory devices
18. Id. at 10:31–33. “The data signals and/or patterns of data signals may
be based on information (e.g., programming or configuration information)
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the data handler logic element 46 receives from the control module 22.” Id.
at 10:33–37.
C. Illustrative Claim
Of the challenged claims, claims 1, 20, and 29 are independent.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A self-testing memory module, comprising:
a printed circuit board configured to be operatively coupled to a
memory controller of a computer system;
a plurality of memory devices on the printed circuit board, each
memory device of the plurality of memory devices
comprising data, address, and control ports; and
a circuit comprising:
a control module configured to generate address and
control signals for testing the memory devices; and
a data module comprising a plurality of data handlers,
each data handler operable independently from
each of the other data handlers of the plurality of
data handlers and operatively coupled to a
corresponding plurality of the data ports of one or
more of the memory devices and configured to
generate data for writing to the corresponding
plurality of data ports, wherein the circuit is
configured to test the memory devices using the
address and control signals generated by the
control module and the data generated by the
plurality of data handlers.
D. The Instituted Ground of Unpatentability
We instituted the instant inter partes review of claims 1–4, 14–20, 27,
and 29 based on anticipation under 35 U.S.C. § 102(b) by Averbuj, U.S.
Patent No. 7,392,442 B2, issued June 24, 2008 (Ex. 1011, “Averbuj”). As
indicated in Section I.A., above, in IPR-970, we held claims 1, 14, 15, 20–
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25, 27, and 29–34 of the ’434 patent unpatentable under 35 U.S.C. § 102(b)
and claim 28 unpatentable under 35 U.S.C. § 103(a) based on U.S. Patent
Application Publication No. 2005/0257109 A1, the published application of
the Averbuj patent on which the instituted ground of unpatentability in this
proceeding is based.
E. Expert Testimony
Petitioner relies on the testimony of Dr. Nader Bagherzadeh in
support of its patentability challenge. Pet. 1. Dr. Bagherzadeh executed a
declaration (Ex. 1009, “the Bagherzadeh Declaration”) in support of the
Petition. Dr. Bagherzadeh was cross-examined on the subject matter of his
declaration, and a transcript of the testimony was filed as Exhibit 2012.
Dr. Bagherzadeh testifies as follows: “In 1979 and 1987,
respectively, [he] earned a master of science in electrical engineering and a
doctorate degree in computer engineering from the University of Texas at
Austin.” Ex. 1009 ¶ 4. He has been involved in design and development of
digital systems for more than 30 years. Id. ¶ 6. Dr. Bagherzadeh joined the
University of California, Irvine, in 1987, and has “been teaching,
researching, and consulting regarding almost all aspects of memory design
for high performance computer systems, including but not limited to
DRAMs and SRAMs.” Id. ¶ 7. He has been employed as a professor in the
department of Electrical Engineering and Computer Science at the
University of California, Irvine, since 2003. Id. ¶ 5. In 2000, Dr.
Bagherzadeh became a cofounder of Morpho Technologies, a high tech
company focused on the design and development of low power and high
performance digital signal processors for mobile applications. Id. ¶ 7. He
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was involved in evaluating patents, technical reports and presentations
related to memory chip designs, DSPs, and parallel processing algorithms
for mobile platforms. Id.
Patent Owner relies on the testimony of Dr. Carl Sechen. PO Resp. 1.
Dr. Sechen executed a declaration (Ex. 2019, “the Sechen Declaration”) in
support of Patent Owner’s Response. Dr. Sechen was cross-examined on the
subject matter of his declaration, and a transcript of the testimony was filed
as Exhibit 1031.
Dr. Sechen testifies as follows: he has an M.S. degree in Electrical
Engineering from the Massachusetts Institute of Technology and “was
awarded a Ph.D. in electrical engineering from the University of California
at Berkeley in 1986.” Ex. 2019 ¶ 5. Dr. Sechen has been a Professor of
Electrical Engineering for 29 years. Id. ¶ 2. During this time period, his
research has focused on design and computer-aided design of digital
integrated circuits, including the design of DRAM, and he has taught
numerous students how to design DRAM memories. Id. Dr. Sechen has
“also been involved in numerous research projects on VLSI design and
memory design[, and has] taught numerous graduate researchers how to
design digital integrated circuits, including memories.” Id. ¶ 4.
The parties do not dispute that Dr. Bagherzadeh and Dr. Sechen are
qualified to testify as experts under FRE 702.
II. LEVEL OF ORDINARY SKILL IN THE ART
The level of ordinary skill in the art is relevant to claim construction
and anticipation. See Yorkey v. Diab, 605 F.3d 1297, 1300 (Fed. Cir. 2010)
(explaining that a determination of anticipation involves interpreting the
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claim language and then comparing the construed claim to a prior art
reference); In re Suitco Surface, Inc., 603 F.3d 1255, 1259–60 (Fed. Cir.
2010) (“[C]laim language should be read in light of the specification as it
would be interpreted by one of ordinary skill in the art.”).
Dr. Bagherzadeh and Dr. Sechen agree that the field of art is “memory
module design with features for built-in self-test (BIST).” Ex. 2019 ¶ 21;
see also Ex. 1009 ¶ 17.
Dr. Bagherzadeh testifies that
a person of ordinary skill in the art for the ‘434 patent in
April 2008 would have a bachelor’s degree or the equivalent
training or experience in electrical engineering or computer
engineering, and at least one year of experience relating to
memory systems and BIST.
A person having a bachelor’s degree or the equivalent
training or experience in electrical engineering or computer
engineering would have experience with digital circuit design,
memories and computer architecture. An additional year of
experience relating to memory systems and BIST would focus
on those areas and allow one to recognize current issues with
respect to the field.
Ex. 1009 ¶¶ 19–20; see id. ¶ 16 (“My understanding is that the earliest
possible priority date of the ’434 patent is April 14, 2008.”).
Dr. Sechen testifies that
one of ordinary skill in the art at the time of filing the
application(s) for the ’434 Patent, who would be working on the
design of memory devices and memory modules, would have at
least a Bachelor of Science degree in electrical engineering or
computer engineering, and at least five years of industry
experience designing memory devices and memory modules.
Alternatively, one of ordinary skill in the art would have an
M.S. degree in electrical engineering or computer engineering,
and at least three years of industry experience designing
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memory devices and memory modules. Moreover, one of
ordinary skill in the art would have a Ph.D. degree in electrical
engineering or computer engineering, and have at least one year
of industry experience designing memory devices and memory
modules.
Ex. 2019 ¶ 21.
The difference in the opinions of the two experts is essentially that Dr.
Sechen believes a person of ordinary skill in the art would have additional
experience, education, or a combination of the two, beyond that proposed by
Dr. Bagherzadeh. Both experts have been employed as professors since the
mid 1980s. Dr. Bagherzadeh also has some experience working with
engineers in the industry by virtue of his employment with AT&T Bell Labs
from 1980–1984 (Ex. 1009 ¶ 6; id. Appx. A). Both experts were awarded
bachelors and masters degrees in electrical engineering. Dr. Bagherzadeh
was awarded a doctorate in computer engineering, while Dr. Sechen was
awarded a doctorate in electrical engineering.
Based on a comparison of Dr. Bagherzadeh’s and Dr. Sechen’s
declarations (Exs. 1009, 2019), we find Dr. Bagherzadeh has a broader range
of educational and work experience, and, therefore, accord greater weight to
his opinion as to the level of ordinary skill in the art. Dr. Bagherzadeh’s
opinion is consistent with our finding as to the level of ordinary skill in the
art in our Final Written Decision in IPR-970. We, therefore, adopt our
finding in IPR-970 as to the level of ordinary skill in the art:
[A] person of ordinary skill in the art at the time of the ’434
patent would have a Bachelor’s degree in electrical engineering,
computer engineering, or in a related field and at least one year
of work experience relating to memory systems, and would be
familiar with the design of memory devices, memory modules,
and BIST.
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IPR-970 FWD, 10–11 (noting that our finding was “based on our review of
the ’434 patent and the types of problems and solutions described in the ’434
patent and cited prior art”).
III. CLAIM CONSTRUCTION
In its Petition, Petitioner offers specific constructions for the claim
terms “operatively coupled,” “ports,” “to generate”/“generating,” “data
module,” “operable independently,” “cyclic data,” and “proximate.” Pet.
23–28. We determined that, for purposes of our Institution Decision, only
the term “generate” required express construction. Dec. on Inst. 6. We
interpreted “generate” as meaning “produce” or “cause.” Id. at 9.
In its Response, Patent Owner disagrees with our interpretation of
“generate” as meaning “cause.” PO Resp. 18. Patent Owner contends our
“Institution Decision also provides a construction for ‘configured to
generate,’” and proposes its own construction for this phrase. Id. at 9 (citing
Dec. on Inst. 8–9). In its Reply, Petitioner asserts that our interpretation of
“generate” in the Institution Decision is correct (Reply 1), and offers a
proposed construction for the term “configured” (id. at 9). Patent Owner’s
and Petitioner’s proposed constructions for the disputed claim language are
listed in the table below.
Claim
Term/Phrase
Patent Owner’s Proposed
Construction
Petitioner’s Proposed
Construction
generate produce (PO Resp. 18) cause or initiate
transmission (Pet. 24–25)
produce or cause (Reply
1)
configured to
generate
programmed to
generate/produce (see PO
Resp. 9)
arranged or prepared to
produce or cause (Reply
9–10)
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In support of their proposed constructions of the disputed claim
language, the parties rely on language in the ’434 patent and extrinsic
evidence. See generally, Pet. 24–25; PO Resp. 8–36; Reply 1–17. Neither
party relies on prosecution history disclaimer in support of its proposed
constructions.
In an inter partes review, the Board interprets claim terms in an
unexpired patent according to the broadest reasonable construction in light
of the specification of the patent in which they appear. 37 C.F.R.
§ 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–
80 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable
interpretation standard in enacting the AIA,” and “the standard was properly
adopted by PTO regulation.”), cert. granted, sub nom. Cuozzo Speed Techs.
LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under that standard, and absent
any special definitions, we give claim terms their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art at the
time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007); see also Trivascular, Inc. v. Samuels, No. 2015-1631, 2016
WL 463539, at *3 (Fed. Cir. Feb. 5, 2016) (“Under a broadest reasonable
interpretation, words of the claim must be given their plain meaning, unless
such meaning is inconsistent with the specification and prosecution
history.”). Any special definitions for claim terms must be set forth with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
“[T]he Board may rely on dictionaries ‘so long as the dictionary
definition does not contradict any definition found in or ascertained by
reading the patent document.’” Belden Inc. v. Berk-Tek LLC, 610 Fed.
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App’x 997, 1002 (Fed. Cir. 2015) (quoting Phillips v. AWH Corp., 415 F.3d
1303, 1322–23 (Fed. Cir. 2005)). Expert testimony is useful to explain
terms of art, and the state of the art at any given time, but cannot be used to
prove “the proper or legal construction of any instrument of writing.” Teva
Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (internal
citations omitted); see also 37 C.F.R. § 42.65(a) (“Expert testimony that
does not disclose the underlying facts or data on which the opinion is based
is entitled to little or no weight.”).
Only terms which are in controversy need to be construed, and only to
the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am.
Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). A court may revisit
and alter its construction of claim terms as the record in a case develops.
See Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd, 599 F.3d 1308,
1316 (Fed. Cir. 2010).
A. Generate
Petitioner contends “[t]he Institution Decision correctly found that the
intrinsic and extrinsic record supported construing ‘generate’ as ‘cause’ or
‘produce.’” Reply 1. Patent Owner contends “‘generate’ is properly
construed to mean ‘produce,’” but “a construction of generate that includes
‘cause’ is unsupported by – and contradictory to – the intrinsic and extrinsic
evidence, and fails to provide reasonable clarity.” PO Resp. 18. The same
respective constructions of “generate” were advanced by Patent Owner and
the petitioner, Sandisk Corporation, in IPR-970. See IPR-970 FWD, 25–27.
We provided an extensive analysis of the term “generate” in our Final
Written Decision in IPR-970. See id. at 24–33. “[W]e agree[d] with Patent
Owner that the broadest reasonable interpretation of the claim term
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‘generate’ is ‘produce’ and that ‘generate’ does not mean ‘cause’ or ‘cause
to produce.’” Id. at 32.
We interpret[ed] the claim language “address and control
signals generated by the control module and the data generated
by the plurality of data handlers” (claim 1), and the
corresponding limitations in claims 20 and 29, as encompassing
signals and data that originated in these modules, including by
transformation or modification of information and/or data
received from another component.
Id. We also stated that “[w]e [did] not interpret this language as
encompassing signals and data received by the data and control modules
from another component, and merely provided, propagated, sent, or input to
memory devices, without transformation or modification by the data and
control modules.” Id.
In support of its contention that “generate” also should be interpreted
as meaning “cause,” Petitioner relies on extrinsic evidence that was not
before us in IPR-970, i.e., the Bagherzadeh Declaration (Ex. 1009) ¶ 28,
ANSI/IEEE 100 - Standard Dictionary of Electrical and Electronic Terms,
Fourth Edition, 1988 (Ex. 1016, “IEEE”)), and Webster’s II New College
Dictionary, 2001 (Ex. 1032, “Webster’s II”). See Pet. 24–25; Reply 1–9.
We consider this evidence as it is relevant to whether the term “generate”
has a particular meaning to one of ordinary skill in the art. See Trivascular,
2016 WL 463539, at *3 (“Construing individual words of a claim without
considering the context in which those words appear is simply not
‘reasonable.’ Instead, it is the ‘use of the words in the context of the written
description and customarily by those of skill in the relevant art that
accurately reflects both the “ordinary” and “customary” meaning of the
terms in the claims.’” (quoting Ferguson Beauregard/Logic Controls, Div.
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of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir.
2003))).
The IEEE defines “generate (computing systems)” as: “[t]o produce a
program by selection of subsets from a set of skeletal coding under the
control of parameters.” Ex. 1016, 5. Dr. Bagherzadeh cites the IEEE
definition in support of his testimony that “[t]he broadest reasonable
interpretation of the claim [terms] ‘to generate’ and ‘generating’ in claims 1,
20, and 29, is ‘to cause or initiate transmission’ and ‘causing or initiating.’”
Ex. 1009 ¶ 28 (also citing Ex. 1008, 6:3–5, 10:67–11:2, 6:14–17). Dr.
Bagherzadeh testifies that “[t]his interpretation is consistent with the
specification and extrinsic evidence because they describe generating as
initiating or transmitting, which is also the broadest interpretation of
‘generate.’” Id.
We are not persuaded by Dr. Bagherzadeh’s testimony because it is
devoid of specific facts and analysis as to what led him to conclude that a
person of ordinary skill in the art would interpret the claim term “generate”
in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not
explain how the IEEE definition supports an interpretation of generate as
“cause or initiate transmission,” terms that do not appear in the IEEE
definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic
evidence which he believes to be consistent with an interpretation of
“generate” as meaning “cause or initiate transmission.” See id. Likewise,
Dr. Bagherzadeh has not explained why he believes the ’434 patent
“describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as
these terms do not appear in the cited portions of the ’434 patent. See Ex.
1008, 6:3–5, 10:67–11:2, 6:14–17. Accordingly, Dr. Bagherzadeh’s
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testimony does not persuade us to accept Petitioner’s interpretation of
“generate” as meaning “cause.”
Petitioner contends “Dr. Bagherzadeh’s use of the IEEE definition
specifically illustrates that ‘generate’ includes ‘selection . . . from a set,’
which implies that ‘generate’ must not be limited to creating from previously
undefined values, which may be a more traditional meaning, but holds little
value in the intrinsic evidence in this proceeding.” Reply 6. Petitioner has
not identified corresponding testimony by Dr. Bagherzadeh or other
evidentiary support for this statement and, therefore, this argument is
likewise unpersuasive. See id.
In support of its construction of “generate” as meaning “cause,”
Petitioner also relies on a finding in our Institution Decision that such
construction is supported by Merriam-Webster’s Collegiate Dictionary,
wherein one definition of “generate” is “to be the cause of” (Ex. 2009, 3).
Reply 2 (citing Dec. on Inst. 9 [sic, 8]). This argument is not persuasive
because the definition in Merriam-Webster’s Collegiate Dictionary
contradicts the definition of “generate” that we ascertained upon reading the
’434 patent as discussed in our Final Written Decision in IPR-970. See
Belden, 610 Fed. App’x at 1002.
In sum, we are not persuaded that Petitioner’s extrinsic evidence
supports a finding that a customary meaning of “generate” to one of ordinary
skill in the art is “cause.”1 We, therefore, determine the broadest reasonable

1 Petitioner relies on Webster’s II, for a definition of “cause.” See Reply 4,
6–8 (citing Ex. 1032, 3). Having determined the broadest reasonable
interpretation of “generate” does not encompass “cause,” we do not find this
evidence relevant to our claim construction analysis.
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construction of “generate” is “produce” for the reasons stated above and in
our Final Written Decision in IPR-970. We adopt and incorporate by
reference our analysis and construction of the term “generate” in our Final
Written Decision in IPR-970 (IPR-970 FWD, 24–33).
B. Configured to
In our Final Decision in IPR-970, we construed “configured to” as
“designed to, adapted to, or arranged to.” See IPR-970 FWD, 20–24.
Petitioner contends “configured” should be construed as “arranged” or
“prepared.” Reply 9. Responsive to this Board panel’s questioning during
the oral hearing, however, Petitioner agreed that “designed to, adapted to, or
arranged to” was an acceptable definition for the claim term “configured to.”
See Tr. 22:7–17.
Patent Owner contends the phrase “configured to generate” should be
construed as “programmed to generate.” PO Resp. 9. Patent Owner does
not propose a separate construction for the term “configured.” See generally
id. at 9–18. In support of its proposed construction, Patent Owner relies on
language in the ’434 patent and the testimony of its expert, Dr. Sechen. See
id. Dr. Sechen testifies as to the meaning of “configured to generate,” but
does not provide a separate discussion of the meaning of “configured to”
outside the context of “configured to generate.” See Ex. 2019 ¶¶ 42–57.
As explained in our Final Decision in IPR-970, the term “configured
to” is used in the ’434 patent in conjunction with numerous terms, such as
“provide” and “selectively input,” and there is a presumption that the term
“configured to” should carry the same meaning in each instance. See IPR-
970 FWD, 20–21. The evidence relied on by Patent Owner in support of its
proposed construction of the term “configured to” in the present inter partes
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review does not differ materially from the evidence relied upon by Patent
Owner in IPR-970. Compare PO Resp. 9–18 with IPR-970, Paper 16, 12–
17. Accordingly, we determine the broadest reasonable construction of
“configured to” is “designed to, adapted to, or arranged to” for the reasons
stated above and in our Final Written Decision in IPR-970. We adopt and
incorporate by reference our analysis and construction of the term
“configured to” in our Final Written Decision in IPR-970 (IPR-970 FWD,
20–24).
In summary, we construe the claim terms in controversy as follows:
Claim
Term/Phrase
Interpretation
Generate Produce
Configured to Designed to, adapted to, or arranged to [e.g.,
perform a function or be capable of performing a
function]
Configured to
Generate
Designed, adapted, or arranged to produce
IV. ALLEGED ANTICIPATION OF CLAIMS 1–4, 14–20, 27, AND 29
BY AVERBUJ
A. Principles of Law
To prevail in its challenges to the patentability of the claims, a
petitioner must establish facts supporting its challenges by a preponderance
of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
To establish anticipation, each and every element in a claim, arranged
as recited in the claim, must be found in a single prior art reference.
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001). While the elements must be arranged or combined in the same way
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as in the claim, “the reference need not satisfy an ipsissimis verbis test.” In
re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
A single prior art reference that discloses, either
expressly or inherently, each limitation of a claim invalidates
that claim by anticipation. Thus, a prior art reference without
express reference to a claim limitation may nonetheless
anticipate by inherency. “Under the principles of inherency, if
the prior art necessarily functions in accordance with, or
includes, the claims limitations, it anticipates.”
Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375–76 (Fed. Cir.
2005) (citations omitted). “In general, a limitation or the entire invention is
inherent and in the public domain if it is the ‘natural result flowing from’ the
explicit disclosure of the prior art.” Schering Corp. v. Geneva Pharms., Inc.,
339 F.3d 1373, 1379 (Fed. Cir. 2003).
“[T]he Board is not bound by any findings made in its Institution
Decision. . . . The Board is free to change its view of the merits after further
development of the record, and should do so if convinced its initial
inclinations were wrong.” Trivascular, 2016 WL 463539, at *9.
We analyze the instituted ground of unpatentability in accordance
with the above-stated principles.
B. Averbuj (Ex. 1011)
Averbuj describes a hierarchical built-in self-test (BIST) architecture
wherein a BIST controller provides centralized, high level control of the
testing of one or more memory modules. Ex. 1011, 1:64–65, 2:3–4. Figure
1 of Averbuj is reproduced below.
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Averbuj Figure 1, above, “is a block diagram illustrating an example
electronic device 2 having a distributed, hierarchical built-in self-test (BIST)
architecture.” Id. at 3:62–64. “[E]lectronic device 2 includes a built-in self-
test (BIST) controller 4 that provides centralized, high-level control over
testing of device blocks 6A through 6N (collectively ‘device blocks 6’).” Id.
at 3:64–67. “Each of device blocks 6 includes a sequencer 8, and a set of
one or more memory interfaces 10 and one or more respective memory
modules 12.” Id. at 3:67–4:3.
BIST controller 4 is illustrated in Figure 2, reproduced below.
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Averbuj Figure 2, above, “is a block diagram illustrating an example
embodiment of a BIST controller.” Id. at 3:39–40. BIST controller 4
includes algorithm controller 26 that can be invoked either by a user through
user interface 22 or automatically upon power-up of electronic device 2. Id.
at 5:12–16. “Once invoked, algorithm controller 26 provides an algorithm
select signal (ALG_SELECT) to multiplexer 24 to select one of the
algorithms stored within algorithm memory 20.” Id. at 5:16–19.
Alternatively, user interface 22 may programmably receive algorithms
via external input, and deliver the received algorithms to multiplexer 24. Id.
at 5:41–43. The algorithms, whether stored in algorithm memory 20 or
received via external input, have a similar form, i.e., “a sequence of binary
commands in which each command defines a test within the overall
algorithm.” Id. at 5:43–47. BIST controller 4 provides and communicates
the selected algorithm to sequencers 8 for application to device blocks 6 as a
stream of binary commands (CMD_DATA), “each command specif[ying] an
operational code [(OP CODE)] and a set of parameters that define one or
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more memory operations without regard to the physical characteristics or
timing requirements of memory modules 12.” Id. at 4:4–12, 5:19–21.
Figure 8, reproduced below, “is a block diagram illustrating an
example data structure of a command issued by BIST controller 4.” Id. at
9:15–16.

In the embodiment shown in Figure 8, above, “command 60 includes
a sequencer identifier (ID) 62, and a payload 64. Sequencer ID 62 identifies
a sequencer, e.g., sequencer 8A, to which command 60 is being issued.” Id.
at 9:17–20. “Payload 64 of command 60 carries binary data that defines the
command itself. In particular, payload 64 includes an operational code (OP
CODE) 66 and a set of parameters 68.” Id. at 9:29–31. In one embodiment,
for example, “OP CODE 66 and parameters 68 comprise three bits and
twenty-nine bits, respectively, to form a 32-bit command.” Id.at 9:58–60.
“OP CODE 66 specifies a particular function to be performed by the
receiving sequencers 8.” Id. at 9:32–33. An exemplary OP CODE is SET
ADDRESS (OP CODE 100), which “[s]ets a specific starting address as
well as a maximum address limit for a test algorithm as applied to the
memory modules.” Id. at Table 1.
Figure 5, below, illustrates an exemplary sequencer 8A. Id. at 3:46–
47.
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As shown in Figure 5, above, exemplary sequencer 8A includes
command parser 30 that receives command data (CMD_DATA) from BIST
controller 4. Id. at 6:24–26. Command parser 30 processes the commands
from BIST controller 4 to identify a specified operation, e.g., by identifying
an OP CODE specified by the command. Id. at 6:26–29. Based on the
specified operation, command parser 30 may extract one or more parameters
from the command, and pass the extracted parameters to a selected
command controller (i.e., one of command controllers 34A-34N). Id. at
6:30–37. The invoked command controller, in turn, issues a sequence of one
or more operations to each memory interface 10, sequentially driving the
appropriate command control signals (CMD_CTRL_SIGNALS) to carry out
each operation of the sequence. Id. at 6:41–43. “Memory interfaces 10
handle specific interface requirements for each of memory modules 12. For
example, each of memory interfaces 10 may be designed in accordance with
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the particular signal interface requirements and physical characteristics of
the respective one of memory modules 12.” Id. at 4:45–49.
C. Arguments
Independent claims 1, 20, and 29 recite “a plurality of memory
devices” and “a data module.” Petitioner contends the claimed “memory
devices” read on Averbuj’s memory modules 12 and the claimed “data
module” reads on the combination of sequencers 8 and memory interfaces
10. Pet. 28. Independent claims 1, 20, and 29 further recite “a control
module configured to generate address and control signals for testing the
memory devices.” See also claims 1 and 20 (reciting a circuit configured to
test the memory devices using the address and control signals generated by
the control module); claim 29 (reciting a step of “generating, by the control
module, address and control signals for testing the memory devices”). With
respect to this limitation, the Petition states:
the BIST controller 4 of Averbuj ‘442 represents circuitry of a
control module that provides the SET ADDRESS and CMD_REQ
signals as OP CODE for testing the memory components 12A-
N. Ex. 1011, Fig. 2 and Column 9: Table 1. The SET ADDRESS
and CMD_REQ signals include address and control signals for
the testing functions. Since the BIST controller 4 provides the
SET ADDRESS and CMD_REQ signals as OP CODE, a person
of ordinary skill in the art (“POSITA”) would understand that the
BIST controller 4 is programmable to provide address and
control signals as recited in part by the Challenged Claims. Ex.
1009, Bagherzadeh Decl., ¶ 35.
Pet. 29.
Patent Owner argues Averbuj’s BIST controller 4 does not “generate”
the OP CODE communicated to sequencers 8, and Petitioner has not met its
burden to show that Averbuj’s BIST controller 4 is “configured to generate
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address . . . signals for testing the memory devices” as recited in claims 1,
20, and 29 of the ’434 patent. PO Resp. 48–49. As discussed in greater
detail below, we find this argument persuasive, and, for this reason,
conclude Petitioner failed to meet its burden to prove unpatentability of
claims 1–4, 14–20, 27, and 29 of the ’434 patent.2
D. Expert Testimony
In support of its argument that Averbuj’s BIST controller 4 is not
configured to generate address signals as claimed in claims 1, 20, and 29,
Patent Owner relies on paragraphs 133–141 of the Sechen Declaration. Id.
at 48–51. Patent Owner also relies on Dr. Bagherzadeh’s cross-examination
testimony (id. at 49–50 (quoting Ex. 2012, 55:6–56:9)) regarding Averbuj
Figure 2 (see Ex. 2012, 53:4–5; see generally id. at 53:4–56:9).
With reference to Averbuj Figure 2 (see Section IV.B., above,
wherein this figure is reproduced and described), Dr. Bagherzadeh testifies
that OP CODE residing in the algorithm memory of BIST controller 4 is
generated by hand or by a tool (Ex. 2012, 55:20–56:9), and he identifies a
compiler as a tool for generating such code (id. at 30:23–24; 41:1–4; see id.
at 55:6–25). 3 Dr. Bagherzadeh testifies that a compiler is not illustrated in

2 Because we are persuaded by this argument that Petitioner has not met its
burden to show unpatentability, we find it unnecessary to address the
additional arguments advanced by Patent Owner in its Response.
3 Petitioner contends “[t]he discussion of a compiler, from PO’s deposition
of [Dr. Bagherzadeh], was hypothetical and specific to an article coauthored
by [Dr. Bagherzadeh].” Reply 22 (citing Ex. 2012, 15:2–19:3).3 We were
unable to locate a discussion of a compiler or any reference to an article
coauthored by Dr. Bagherzadeh in the cited portions of Dr. Bagherzadeh’s
deposition transcript. Dr. Bagherzadeh’s first discussion of a compiler
appears to be in connection with a use thereof in MorphoSys (see Ex. 2012,
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Averbuj Figure 2, and that he did not recall any mention of the word
“compiler” in Averbuj. See Ex. 2012, 54:8–55:5. Dr. Bagherzadeh further
testifies that “99 percent of the designs or chips do not have a compiler on-
board.” Id. at 54:21–22. Dr. Bagherzadeh testifies that Averbuj Figure 2,
without consideration of any other disclosure in Averbuj, illustrates that a
multiplexer selects an input from the algorithm memory and “the output []
reflect[s] what’s in the input, based on the selection.” Id. at 54:8–13. Dr.
Bagherzadeh testifies that assuming “no other hardware components
between . . . [CMD_DATA] and the input,” CMD_DATA is stored in the
algorithm memory. Id. at 54:15–19.
Dr. Sechen testifies that
the Petition fails to identify every element of claims 1, 20, and
29 for at least two reasons[:] (1) because the CMD_REQ and
SET ADDRESS are not generated (“produced” or “caused”) by
the purported control module (Averbuj’s BIST controller 4),
and [(2)] because the OP CODE is not generated (“produced”
or “caused”) by the alleged control module (Averbuj’s BIST
controller 4).

30:12–20), a chip fabricated by Morpho Technologies (id. at 19:2–9), a
company co-founded by Dr. Bagherzadeh (Ex. 1009 ¶ 7). An article relating
to MorphoSys and co-authored by Dr. Bagherzadeh (see Ex. 2014,
“MorphoSys: Case Study of A Reconfigurable Computing System
Targeting Multimedia Applications”) is introduced on page 39 of the
deposition transcript. See Ex. 2012, 39:19–22, cited in PO Resp. 27. In any
event, Petitioner’s argument is not persuasive because we find the testimony
on pages 54–56 of the Bagherzadeh transcript supports Patent Owner’s
argument. See Section IV.E. infra.

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Ex. 2019 ¶ 136. Dr. Sechen testifies, more specifically, that the Petition fails
to explain how Averbuj’s BIST controller 4 “generate[s]/produce[s] OP
CODE,” “because the Petition does not state that Averbuj’s BIST Controller
includes a compiler, as described by Dr. Bagherzadeh.” Id. ¶ 138. Dr.
Sechen testifies that “[b]ecause SET ADDRESS (OP CODE 100) is a
predefined 3-bit sequence, . . . it is not ‘generated’ by Averbuj’s BIST
Controller. Rather, it is stored in Algorithm Memory 20 of Fig. 2.” Id. ¶
140. Dr. Sechen further testifies that “command 60, which carries the OP
CODE . . . (e.g. . . . the SET ADDRESS opcode), . . . is not ‘generated’ by
Averbuj’s BIST Controller,” but “is merely stored in memory (Algorithm
Memory 20 in Fig. 2) and is output as part of ‘a stream of binary
commands.’ (Ex. 1011 at 5:1–21.)” Ex. 2019 ¶ 141.
E. Analysis
After considering the parties’ arguments and evidence, we determine
Petitioner has not shown, by a preponderance of the evidence, that Averbuj
discloses “a control module configured to generate address . . . signals for
testing the memory devices” as recited in independent claims 1, 20, and 29.
As noted in Section III, above, in its Petition, Petitioner proposes
construing the claim term “generate” as “cause or initiate transmission” (Pet.
24). The Petition cites the following disclosure in the ’434 patent in support
of this construction: “‘the data module 28 and/or the control module 22 are
configured to provide memory signals (e.g., data, address and
control signals)’ Ex. 1008,’434 patent, 6:3-5 (emphasis added).” Pet. 24.
The Petition states that Averbuj teaches “a control module configured to
generate address and control signals for testing the memory devices,”
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because Averbuj’s “BIST controller 4 is programmable to provide address
and control signals.” Pet. 29 (emphasis added); see PO Resp. 53.
For purposes of our Institution Decision, we interpreted “generate” as
used in the ’434 patent claims as meaning “cause” or “produce.” See Dec.
on Inst. 9. As indicated in Section III.A., above, subsequent to that decision
and the oral hearing in the present inter partes review, we again considered
the meaning of the claim term “generate” in our final decision in IPR-970,
and determined that the broadest reasonable interpretation of the ’434 patent
claim term “generate” is “produce,” and that “generate” does not mean
“cause” or “cause to produce.” See IPR-970 FWD, 24–33. In Section III.A.,
above, we considered extrinsic evidence in support of Petitioner’s
interpretation of “generate” as meaning “cause” that was not before us in
IPR-970, but concluded the broadest reasonable interpretation of “generate”
is “produce.” We, therefore, adopted and incorporated by reference in the
present final decision our analysis and construction of the terms “generate”
and “configured to generate” in our Final Written Decision in IPR-970. See
Section III., above.
In construing the claim term “generate” in our final decision in IPR-
970, we found that the terms “provide” and “generate” are used in the ’434
patent to describe different embodiments of the control module, and
determined the claim term “generate” did not mean “provide.” See IPR-970
FWD, 28–30. We also determined that the phrases “address and control
signals generated by the control module” (claims 1, 20) and “generating, by
the control module, address and control signals” (claim 29) encompass
signals that originated in the control module, including by transformation or
modification of information received from another component. IPR-970
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FWD, 32. We further determined the broadest reasonable interpretation of
this claim language does not encompass “signals received by the control
module from another component, that are merely provided, propagated, sent,
or input to the memory devices, without transformation or modification by
the control module.” Id. We stated that “generate,” as used in the ’434
patent, does not encompass the selection function of a multiplexer. Id. at
29–30.
Petitioner’s contention that Averbuj teaches “a control module
configured to generate address . . . signals for testing the memory devices,”
as recited in independent claims 1, 20, and 29, is based on an interpretation
of “generate” as meaning “cause.” Pet. 24, 29; see also, Reply 20–21
(asserting that Averbuj’s BIST controller 4 is “configured to generate
address and control signals” as claimed in the ’434 patent because “the BIST
controller of Averbuj causes the CMD_REQ and SET ADDRESS signals,
representing the claimed ‘address and controls signals’” (emphasis added))
(citing Dec. on Inst. 15–16). Petitioner has not explained sufficiently,
however, how Averbuj’s BIST controller 4 is designed, adapted, or arranged
to produce address signals for testing the memory devices.4

4 During oral argument, Mr. Heafey, counsel for Petitioner, was asked the
following question: “Assuming we adopt ‘to produce’ as the proper
construction [of ‘to generate’], are [CMD]_REQ and SET ADDRESS
produced by BIST controller 4?” Tr. 78:16–18. In response, Mr. Heafey
stated: “[T]hose signals are definitely produced by BIST controller 4, yes,
they are.” Id. at 78:19–20. Mr. Heafey did not elaborate, however, nor did
he otherwise explain clearly during oral argument how Averbuj’s BIST
controller 4 is designed, adapted, or arranged to produce address signals for
testing the memory devices.
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Moreover, the evidence in this proceeding fails to support a finding
that Averbuj’s BIST controller 4 is configured to generate address signals
for testing the memory devices in the manner claimed.
In Averbuj, the algorithms (i.e., CMD_DATA containing OP CODE
such as SET ADDRESS (see Ex. 1011, 4:4–12, 5:19–21, Table 1))
communicated to sequencers 8 are either received by user interface 22 via
external input (id. at 5:41–43) or generated by another component (i.e., a
component that is not part of BIST controller 4 circuitry) and stored in
algorithm memory 20 (see Ex. 2012, 30:23–24, 41:1–4, 54:21–22, 55:6–25,
55:20–56:9 (wherein Dr. Bagherzadeh testifies that OP CODE residing in
the algorithm memory of BIST controller 4 are generated by hand or by a
tool, e.g., a compiler, and that “99 percent of the designs or chips do not
have a compiler on-board”)). Multiplexer 24 selects one of the algorithms
(i.e., CMD_DATA) and BIST controller 4 provides to sequencers 8 the same
CMD_DATA (e.g., address signals) without transformation or modification.
See Ex. 1011, 4:4–12, 5:16–21; Ex. 2012, 54:8–13 (“Averbuj Figure 2,
without consideration of any other disclosure in Averbuj, illustrates that a
multiplexer selects an input from the algorithm memory and the output []
reflect[s] what’s in the input, based on the selection.”). Based on our
interpretation of the terms “configured to” and “generate,” as discussed
above, the claim recitation “a control module configured to generate address
. . . signals for testing the memory devices” (claims 1, 20, and 29) does not
read on Averbuj’s BIST controller 4, because the SET ADDRESS signal
output by BIST controller 4 is produced by a component external to BIST
controller 4, and merely selected by multiplexer 24 and provided to
sequencers 8 without transformation or modification by BIST controller 4.
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In sum, after considering the parties’ arguments and evidence, we
determine Petitioner has not shown, by a preponderance of the evidence, that
Averbuj discloses “a control module configured to generate address . . .
signals for testing the memory devices” as recited in independent claims 1,
20, and 29. Petitioner does not correct this deficiency in its challenges as to
dependent claims 2–4, 14–19, and 27. See Pet. 32–39; 35 U.S.C. § 112, ¶ 4
(“A claim in dependent form shall be construed to incorporate by reference
all the limitations of the claim to which it refers.”). Because Petitioner has
not identified in Averbuj a teaching of each and every limitation recited in
claims 1–4, 14–20, 27, and 29, Petitioner has not met its burden to show
these claims are unpatentable under 35 U.S.C. § 102(b) as anticipated by
Averbuj.
V. MOTIONS TO EXCLUDE
Both Patent Owner and Petitioner filed Motions to Exclude.
A. Petitioner’s Motion to Exclude
Petitioner moves to exclude Exhibit 2018 (the Deposition Transcript
of Dr. Donald Alpert) and to strike Section IV(B)(5)(a) of Patent Owner’s
Response, wherein Patent Owner quotes Dr. Alpert’s deposition testimony in
support of its proposed construction of the claim term “generate” (see PO
Resp. 34). Paper 26, 2. Petitioner argues Dr. Alpert is Sandisk
Corporation’s expert in IPR-970 and that Petitioner was not provided notice
or otherwise invited to attend Dr. Alpert’s deposition. Id. at 3. Petitioner
contends Dr. Alpert’s statements are not admissible as evidence in this
proceeding “because they are hearsay and will unfairly prejudice Petitioner.”
Id. at 2.
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In construing the claim term “generate” in Section III.A., above, we
adopted and incorporated by reference our analysis and construction of this
term on pages 24–33 of our Final Written Decision in IPR-970. In our claim
construction in IPR-970, we considered Dr. Alpert’s deposition and
declaration testimony, but did not quote or cite to the testimony relied on by
Patent Owner in Section IV(B)(5)(a) of its Patent Owner Response in the
present proceeding. Compare IPR-970 FWD, 25–26 with PO Resp. 34. In
IPR-970, we determined Dr. Alpert’s testimony that one of ordinary skill in
the art would understand the claim term “generate” as meaning “cause” or
“produce” was inconsistent with the ’434 patent’s implicit definition of this
term as meaning only “produce.” See IPR-970 FWD, 30 n.4. We, therefore,
did not rely on Dr. Alpert’s testimony in our construction of the claim term
“generate” in IPR-970, or in the present case. See id.; see also id. at 32
(“Having considered the ordinary meaning of the term ‘generate’ in the
context of both the claims and the ’434 patent as a whole, we agree with
Patent Owner that the broadest reasonable interpretation of the claim term
‘generate’ is ‘produce,’ and that ‘generate’ does not mean ‘cause’ or ‘cause
to produce.’”).
Because we did not rely on Exhibit 2018 or consider the argument in
Section IV(B)(5)(a) of Patent Owner’s Response in rendering our decision in
this proceeding, we dismiss Petitioner’s Motion to Exclude Exhibit 2018 and
to strike Section IV(B)(5)(a) as moot.
B. Patent Owner’s Motions to Exclude
Patent Owner filed a Motion to Exclude “Exhibits 1026, 1029, 1030,
and 1032 (or portions thereof)” and requests that we strike the corresponding
citations to these exhibits in Petitioner’s Reply. Paper 34, 2. We did not
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rely on these exhibits in rendering our decision. Accordingly, Patent
Owner’s Motion to Exclude these exhibits is dismissed as moot.
Patent Owner also filed a Motion to Exclude Portions of Petitioner’s
Reply, contending “Petitioner’s Reply improperly presents new theories,
never raised in its Petition or adopted by the Board’s Institution Order,
violating 37 CFR 42.22-23 and applicable law.” Paper 35, 1. Patent Owner
provides a table identifying the alleged new theories advanced by Petitioner
in its Reply (id. at 2) and identifies by page and line number specific
portions of sections II.A.3, II.B.1.a, II.B.5 & III.B.2 of the Reply that it
contends should be excluded as advancing new theories (see id. at 2–8).
Our decision is not based on any of the alleged new theories identified
by Patent Owner, and Patent Owner does not cite to any of the specific
language in the Reply that Patent Owner contends should be excluded.
Accordingly, Petitioner’s Motion to Exclude portions of Petitioner’s Reply
is dismissed as moot.
VI. CONCLUSION
Petitioner has not shown by a preponderance of the evidence that
claims 1–4, 14–20, 27, and 29 of the ’434 patent are unpatentable under 35
U.S.C. § 102(b) as anticipated by Averbuj (U.S. Patent No. 7,392,442 B2).
VII. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–4, 14–20, 27, and 29 of U.S. Patent No.
8,001,434 B1 are not held unpatentable under 35 U.S.C. § 102(b) as
anticipated by Averbuj (U.S. Patent No. 7,392,442 B2);

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FURTHER ORDERED that Petitioner’s Motion to Exclude Exhibit
2018 and to strike Section IV(B)(5)(a) of Patent Owner’s Response is
dismissed;
FURTHER ORDERED that Patent Owner’s Motion to Exhibits 1026,
1029, 1030, and 1032 to strike the corresponding citations to these exhibits
in Petitioner’s Reply is dismissed;
FURTHER ORDERED that Patent Owner’s Motion to Exclude
Portions of Petitioner’s Reply is dismissed; and
FURTHER ORDERED that, because this is a final decision, parties to
the proceeding seeking judicial review of the decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Sanjiva Reddy
Michael Heafey
KING & SPALDING LLP
sreddy@kslaw.com
mheafey@kslaw.com

For PATENT OWNER:

Thomas Wimbiscus
Scott McBride
Wayne Bradley
Gregory Schodde
Ronald Spuhler
MCANDREWS, HELD & MALLOY, LTD.
twimbiscus@mandrews-ip.com
smcbride@mcandrews-ip.com
wbradley@mcandrews-ip.com
gschodde@mcandrews-ip.com
rspuhler@mcandrews-ip.com