Unification Technologies LLC

Patent Trials and Appeals Board

Dec 15, 2021

IPR2021-00940 (P.T.A.B. Dec. 15, 2021)

Trials@uspto.gov Paper 14
571-272-7822 Entered: December 15, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

MICRON TECHNOLOGY, INC.,
MICRON SEMICONDUCTOR PRODUCTS, INC., and
MICRON TECHNOLOGY TEXAS LLC,
Petitioner,
v.
UNIFICATION TECHNOLOGIES LLC,
Patent Owner.

IPR2021-00940
Patent 8,533,406 B2

Before JUSTIN T. ARBES, TERRENCE W. McMILLIN, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
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Patent 8,533,406 B2

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I. INTRODUCTION
Petitioners Micron Technology, Inc., Micron Semiconductor Products,
Inc., and Micron Technology Texas LLC (collectively, “Micron” or “the
Micron parties”)1 filed a Petition (Paper 2, “Pet.”) under 35 U.S.C. §§ 311–
319 requesting inter partes review of claims 15–21 and 26 of U.S. Patent
No. 8,533,406 B2 (Ex. 1001, “the ’406 patent”). Patent Owner Unification
Technologies LLC (“UTL”)2 filed a Preliminary Response (Paper 11,
“Prelim. Resp.”).
Under the authority delegated to us by the Director under 37 C.F.R.
§ 42.4(a), we may institute an inter partes review when “the information
presented in the petition . . . and any 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); see also
37 C.F.R. § 42.108(c) (2020). However, the Board has discretion to deny a
petition for reasons independent of whether the petitioner meets that
threshold. See, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
(2016) (“[T]he agency’s decision to deny a petition is a matter committed to
the Patent Office’s discretion.”); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348,
1356 (2018) (“[Section] 314(a) invests the Director with discretion on the
question whether to institute review . . . .” (emphasis omitted)); Harmonic

1 According to the Petition, the real parties in interest are the named
Petitioners, but “[o]ut of an abundance of caution,” Micron also identifies
Dell Technologies Inc., Dell Inc., Denali Intermediate Inc. (“a corporate
parent entity of Dell Inc.”), and HP Inc. as real parties in interest. Pet. 58.
2 UTL identifies itself as the real party in interest, and states that it “is a
subsidiary of Acacia Research Group LLC.” Paper 5, 2.
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Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
permitted, but never compelled, to institute an IPR proceeding.”).
Having considered the parties’ submissions, we determine that it is
appropriate in this case to exercise our discretion to deny institution of inter
partes review, for the reasons explained below.
II. BACKGROUND
A. THE ’406 PATENT (EX. 1001)
The ’406 patent discloses techniques for “managing data in a storage
device using an empty data segment directive.” Ex. 1001 1:28–30.
“Typically, when data is no longer useful it may be erased. In many file
systems, an erase command deletes a directory entry in the file system while
leaving the data in place in the storage device containing the data,” such that
the storage device is unaware that the data is now invalid. Id. at 1:32–36.
“Another method of erasing data is to write zeros, ones, or some other null
data character to the data storage device to actually replace the erased file,”
but doing so is inefficient because “valuable bandwidth is used while
transmitting the data” and “space in the storage device is taken up by the
data used to overwrite invalid data.” Id. at 1:36–42.
The ’406 patent attempts to overcome these issues by having the
storage device “receive a directive that data is to be erased” and store a “data
segment token” that represents erased data, rather than performing either of
the typical erase methods. Ex. 1001, 1:63–2:1. In particular, the ’406 patent
discloses an apparatus comprising (1) a “request receiver module” that
“receive[s] an indication identifying data that can be erased from a non-
volatile storage medium,” where the indication identifies the data using a
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“logical identifier,” (2) a “marking module” that “invalidate[s] an
association between the logical identifier and the physical address” to which
the logical identifier is mapped in the index, (3) a “storage recovery module”
that “recover[s] the physical storage location at the physical address” at an
appropriate time, and (4) a “storage module” that “store[s] data associated
with another logical identifier on the physical storage location in response to
recovering the physical storage location.” Id. at 2:61–3:39.
B. CHALLENGED CLAIMS AND ASSERTED GROUNDS OF
UNPATENTABILITY
Independent claim 15, which exemplifies the other challenged claims
of the ’406 patent, is as follows:
15. An apparatus, comprising:
a non-volatile storage medium;
a request receiver module of a storage layer for the non-volatile
storage medium configured to receive an indication that a data
structure, corresponding to data stored on the non-volatile storage
medium, has been deleted, wherein the indication comprises a
logical identifier that is associated with the data structure by a
storage client, and wherein the logical identifier is mapped to a
physical address of the data on the non-volatile storage medium;
and
a marking module configured to record that the data stored at the
physical address mapped to the logical identifier can be erased
from the non-volatile storage medium in response to receiving the
indication.
Ex. 1001, 54:13–27. Claims 16–21 and 26 depend directly or indirectly from
claim 15. See id. at 54:28–53, 55:5–14.
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Micron argues two grounds for inter partes review, as summarized in
the following table:
Pet. 22.
A. RELATED PROCEEDINGS
The parties identify a co-pending district court litigation between
Micron and UTL that challenges the ’406 patent: Unification Technologies
LLC v. Micron Technology, Inc., No. 6:20-cv-500-ADA (W.D. Tex. filed
June 5, 2020) (“the related district court case”). Pet. 59; Paper 5, 2.

3 35 U.S.C. § 103(a) (2006), amended by Leahy–Smith America Invents Act,
Pub. L. No. 112-29 § 103, sec. (n)(1), 125 Stat. 284, 287, 293 (2011)
(effective Mar. 16, 2013). The ’406 patent claims priority, among other
applications, to a provisional application filed on September 22, 2007, which
is before the effective date of this amendment to § 103. See Ex. 1001, code
(60); Pet. 1 & n.1 (alleging that September 22, 2007 is the correct priority
date for the ’406 patent).
4 Shu et al., US 9,207,876 B2, filed Feb. 12, 2008, issued Dec. 8, 2015 (Ex.
1003). Micron alleges that Shu is prior art under 35 U.S.C. §§ 102(a) and
(e), based on a provisional application filed April 19, 2007. Pet. 22–23.
5 Frank Shu, Notification of Deleted Data Proposal for ATA8-ACS2, rev. 0
(Apr. 21, 2007) (Ex. 1017); Frank Shu & Nathan Obr, Data Set Management
Commands Proposal for ATA8-ACS2, rev. 1 (July 26, 2007) (Ex. 1018)
(collectively, “Trim Proposals”). Micron alleges that the Trim Proposals
qualify as prior art under 35 U.S.C. § 102(a). Pet. 25.
6 Ban, US 5,404,485, issued Apr. 4, 1995 (Ex. 1025). Micron alleges that
Ban is prior art under 35 U.S.C. §§ 102(a), (b), and (e). Pet. 25.
7 Jenett, US 6,014,724, issued Jan. 11, 2000 (Ex. 1033). Micron alleges that
Jenett qualifies as prior art under 35 U.S.C. §§ 102(a), (b), and (e). Pet. 25.
Claims Challenged 35 U.S.C. § Reference(s)
15, 21, 26 103(a)3 Shu,4 Trim Proposals,5 Ban6
16–20 103(a) Shu, Trim Proposals, Ban, Jenett7
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Micron challenges a subset of the claims of the ’406 patent that it also
challenges in co-pending inter partes review IPR2021-00343, including
independent claim 15. See Pet. 59; Paper 5, 2–3; IPR2021-00343, Paper 4, 8.
Micron and other petitioners (not part of this proceeding) filed the IPR2021-
00343 petition on December 22, 2020, challenging claims 15–21 and 26–30
of the ’406 patent as unpatentable based on different prior art. See IPR2021-
00343, Paper 4, 8. UTL filed its preliminary response for that proceeding on
April 13, 2021. IPR2021-00343, Paper 8. We then instituted inter partes
review on July 9, 2021. See IPR2021-00343, Paper 9. Thus far in that case,
UTL has filed its Patent Owner Response and Micron has served notice to
depose UTL’s declarant, Dr. Vijay K. Madisetti, in January 2022. See
IPR2021-00343, Papers 21, 22.
Micron filed its Petition in the current proceeding on June 4, 2021,
which is after UTL filed its preliminary response in IPR2021-00343 and
before we instituted inter partes review. See Paper 2.
III. DISCRETION TO DENY INSTITUTION
UNDER § 314(A)
A. GENERAL PLASTIC FACTORS
The Board has recognized a number of factors that may merit denial
of institution under § 314(a) when a party files a “follow-on” petition
challenging the same patent as a previous petition. See General Plastic Co.,
Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15–16 (PTAB
Sept. 6, 2017) (precedential as to § II.B.4.i). These factors are as follows:
1. whether the same petitioner previously filed a petition
directed to the same claims of the same patent;
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2. whether at the time of filing of the first petition the
petitioner knew of the prior art asserted in the second
petition or should have known of it;
3. whether at the time of filing of the second petition the
petitioner already received the patent owner’s preliminary
response to the first petition or received the Board’s decision
on whether to institute review in the first petition;
4. the length of time that elapsed between the time the
petitioner learned of the prior art asserted in the second
petition and the filing of the second petition;
5. whether the petitioner provides adequate explanation for the
time elapsed between the filings of multiple petitions
directed to the same claims of the same patent;
6. the finite resources of the Board; and
7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
determination not later than 1 year after the date on which
the Director notices institution of review.
General Plastic, Paper 19 at 16. The General Plastic factors “are not
dispositive, but part of a balanced assessment of all relevant circumstances
in the case, including the merits.” Consolidated Trial Practice Guide 58
(Nov. 2019) (“Trial Practice Guide”), https://go.usa.gov/xpvPF (citing
General Plastic, Paper 19 at 15).
UTL contends that the General Plastic factors weigh heavily in favor
of denying institution in this case. See Prelim. Resp. 22–29. We agree.
Below, we address each of these factors as they apply to the circumstances
of this case.
1. Whether the Same Petitioner Previously Filed a Petition
Directed to the Same Claims of the Same Patent
The Micron parties in this proceeding are also among the petitioners
in IPR2021-00343. The petitioners in the earlier proceeding also include
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Dell Technologies Inc., Dell Inc., and HP Inc., which were defendants in
district court actions by UTL asserting the ’406 patent. IPR2021-00343,
Paper 4 at 66, caption. Micron states that “those cases were dismissed before
the filing of this Petition,” but Micron still identifies these entities as real
parties in interest for this proceeding “[o]ut of an abundance of caution.”
Pet. 58–59.
UTL contends that “[t]here is no dispute that the same Petitioners who
filed the IPR2021-00343 Petition also filed the present Petition,” and that
“[b]oth the present Petition and IPR2021-00343 challenge claims 15–21 and
26 of the ’406 Patent.” Prelim. Resp. 24.
We agree with UTL that Micron is the same Petitioner that filed the
earlier petition, and that there is complete overlap as to the challenged
claims. Therefore, this factor weighs in favor of denying institution.
2. Whether at the Time of Filing of the First Petition the
Petitioner Knew of the Prior Art Asserted in the Second
Petition or Should Have Known of It
UTL contends that Micron knew of the prior art cited in this Petition
at the time it filed its petition in IPR2021-00343. Prelim. Resp. 24–25. UTL
points out that in the related district court litigation, Micron listed all four of
the asserted references in its Preliminary Invalidity Contentions dated
October 16, 2020, before Micron filed its first petition on December 22,
2020. Prelim. Resp. 26 (citing Ex. 2006, 7–9, 26 (listing Jenett, Shu, and the
Trim Proposals)); see also Ex. 2006, 11 (listing Ban). UTL also notes that
Micron included Ban and the Trim Proposals as exhibits for its petition in
IPR2021-00343. Prelim. Resp. 25 (citing IPR2021-00343, Exs. 1017, 1018,
1035). And UTL points out that Shu, Ban, and Jenett appear on the face of
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the ’406 patent, and the Examiner rejected claims based on Jenett. Id. at 2–4,
30 (citing Ex. 1001, code (56)).
The record is clear that Micron was aware of Shu, the Trim Proposals,
Ban, and Jenett when it filed its first petition. See Ex. 2006, 7–8, 11, 26;
IPR2021-00343, Exs. 1017, 1018, 1035. Thus, we agree with UTL that at the
time of its first petition, Micron was aware of each reference asserted in the
present Petition. Under the circumstances, the second factor weighs strongly
in favor of denying institution.
3. Whether at the Time of Filing of the Second Petition the
Petitioner Already Received the Patent Owner’s
Preliminary Response to the First Petition or Received
the Board’s Decision on Whether to Institute Review in
the First Petition
UTL argues that Micron “already received Patent Owner’s
preliminary response to the first petition on April 13, 2021. This gave
Petitioner approximately two months to review any potential shortcomings
in its first petition to address in its second petition.” Prelim. Resp. 25.
Although the Board had not yet instituted an inter partes review on
the first petition when Micron filed the current Petition, Micron did have
access to UTL’s preliminary response to the first petition, and Micron would
have been able to take UTL’s arguments into consideration in shaping its
strategy for the present Petition. Thus, we agree with UTL that the third
General Plastic factor weighs in favor of denial.
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4. The Length of Time that Elapsed Between the Time the
Petitioner Learned of the Prior Art Asserted in the
Second Petition and the Filing of the Second Petition
For the fourth General Plastic factor, UTL argues that Micron “listed
each of the asserted references in its Preliminary Invalidity Contentions it
served on October 16, 2020, but then waited ten months to file the present
Petition on June 4, 2021.” Prelim. Resp. 26 (citing Ex. 2006, 7–9, 26).
We agree with UTL that ten months is a substantial delay between
learning of potential prior art references and asserting them in a petition,
particularly because in this case, Micron had not only learned of the
references as of October 16, 2020, but had analyzed them sufficiently by that
date to include them in its Preliminary Invalidity Contentions (and then
relied on three of them as evidence in its IPR2021-00343 petition). Thus,
this factor weighs in favor of denying institution.
5. Whether the Petitioner Provides Adequate Explanation
for the Time Elapsed Between the Filings of Multiple
Petitions Directed to the Same Claims of the Same Patent
Micron contends that, when it filed its first petition, “investigation
into the . . . Trim Proposals remained ongoing, and Petitioners did not have
possession of relevant materials, such as Frank Shu’s presentations (Ex.
1022, Ex. 1024) until recently.” Pet. 26. Micron also contends that in the
related district court case, UTL “delayed providing its priority contentions
until late April, 2021.” Id. (citing Ex. 1019). Also, according to Micron,
“[t]he earlier IPR petition dealt with different prior art and assumed a
different priority date.” Id. at 26–27 (citing Trial Practice Guide 59 (stating
that “a dispute about priority date requiring arguments under multiple prior
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art references” can be a potential reason for the Board to institute trial on
multiple petitions challenging the same patent)).
UTL argues that Micron’s explanation for the delay is inadequate. See
Prelim. Resp. 26–27. According to UTL, the later-discovered Frank Shu
presentations (Exs. 1022 and 1024) “are irrelevant to the asserted Ground[s]
in the present Petition because they are not part of the asserted Ground[s].”
Id. at 26. UTL also argues that the disputed priority date of the ’406 patent
does not justify multiple petitions because “Petitioners were well aware of
Patent Owner’s position with respect to the priority date of the ’406 Patent
before Patent Owner provided its detailed Interrogatory response in April
2021 and before Petitioner filed its first Petition.” Id. at 27 (citing Ex. 2005,
5 (UTL’s Initial Infringement Contentions, served August 21, 2020)). And
according to UTL, Micron “was free to argue that the ’406 Patent was only
entitled to a later priority date in IPR2021-00343—but it chose not to.” Id.
We agree with UTL that Micron’s explanation for the delay between
the two petitions is inadequate. Because Micron does not assert the Frank
Shu presentations (Exs. 1022, 1024) as prior art, the timing of their
discovery is not relevant to the delay in asserting Shu, the Trim Proposals,
Ban, and Jenett in the present Petition. We also agree with UTL that Micron
should have known UTL’s position on the priority date of the ’406 patent
when UTL served its Initial Infringement Contentions on August 21, 2020,
well before Micron filed its first petition. See Ex. 2005, 5 (contending that
“claims [15–21 and 26–30] of the ’406 Patent are entitled to a priority date
no later than December 6, 2006.”). Thus, any delay in UTL’s interrogatory
responses in April 2021 does not adequately explain Micron’s delay in filing
the current Petition.
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The Board recognizes that “more than one petition may be necessary
. . . when there is a dispute about priority date requiring arguments under
multiple prior art references.” Trial Practice Guide 59. But when the Board
has accepted such multiple petitions, they are usually parallel petitions filed
“at or about the same time (e.g., before the first preliminary response by the
patent owner).” Id. Micron’s argument that it needs a second petition to
address a different priority date assumption still does not adequately explain
the delay in filing the current Petition.
Thus, we agree with UTL that the fifth General Plastic factor weighs
in favor of denying institution.
6. The Finite Resources of the Board; and the Requirement
Under 35 U.S.C. § 316(a)(11) to Issue a Final
Determination Not Later than 1 Year After the Date on
Which the Director Notices Institution of Review
Micron contends that if we institute on its current Petition, “[t]he
limited resources of the Board will be put to efficient use because the Board
is already familiar with the technology and mainly needs to decide a priority
date challenge to prevent the Patent Owner from unfairly using hindsight to
capture Frank Shu’s invention.” Pet. 27.
In response, UTL argues that under Micron’s reasoning, “every
follow-on IPR on the same patent would then somehow be an efficient use
of the Board’s resources because ‘the Board is already familiar with the
technology.’” Prelim. Resp. 29 (citing General Plastic, Paper 19 at 21
(“[M]ultiple, staggered petition filings, such as those here, are an inefficient
use of the inter partes review process and the Board’s resources.”)).
We agree with UTL that instituting trial on the present Petition would
not be an efficient use of the Board’s resources. In the IPR2021-00343 case,
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we already instituted trial about five months ago on all the claims challenged
in this Petition, and UTL has already filed its Patent Owner Response. See
IPR2021-00343, Paper 21. If we were also to institute an inter partes review
on the current Petition, it would be too late for us to consolidate the two
cases on the same schedule, while still issuing a final written decision by
July 8, 2022 as required under 35 U.S.C. § 316(a)(11). Thus, the two cases
would be on different schedules in entirely separate proceedings, and have
different evidentiary records.
Thus, General Plastic factors 6 and 7 weigh in favor of denying
institution.
B. CONCLUSION AS TO THE GENERAL PLASTIC FACTORS
For the reasons above, we weigh all seven General Plastic factors in
favor of denying institution. Although no single factor is dispositive, the
evidence and circumstances as a whole weigh strongly in favor of denying
institution on the present Petition.
IV. CONCLUSION
We have considered the evidence and circumstances before us in view
of the General Plastic factors and the guidance provided in the Consolidated
Trial Practice Guide. For the above reasons, we exercise our discretion to
deny institution of inter partes review.
V. ORDER
In consideration of the foregoing, it is
ORDERED that the Petition is denied, and no trial is instituted.
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Patent 8,533,406 B2

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For PETITIONER:
Katherine Vidal
Qi Tong
WINSTON & STRAWN LLP
kvidal@winston.com
ptong@winston.com

For PATENT OWNER:
Barry Bumgardner
Robert Delafield II
NELSON BUMGARDNER ALBRITTON P.C.
barry@nelbum.com
bobby_delafield@yahoo.com