Final Written Decision with Dissent Differing with Majority’s Technical Analysis IPR2014-01374


Takeaway: Based on their technical backgrounds, judges at the Board are capable of addressing very technical arguments related to the disclosure of prior art and may not always agree with the technical analysis of the other judges on the Board’s panel.

In its Final Written Decision, the Board held that Petitioner had not established by a preponderance of the evidence unpatentability of the challenged claims. The Board also dismissed the parties’ Motions to Exclude Evidence.  Judge Clements dissented from the opinion of the Board.

The ’501 patent “relates to self-testing electronic memory modules.” Trial was instituted based on anticipation of claims 1, 2, 4-6, 9-11, 14-17, and 20 by Averbuj.  The Board addressed claim construction of the terms “generate” and “configured to” under the broadest reasonable interpretation in light of the specification.

With respect to the term “generate,” the Board revisited its prior construction in its Institution Decision, modifying its previous definition for the term. In particular, the Board had construed “generate” to mean “produce” or “cause,” but after consideration of the parties’ arguments, the Board agreed with Patent Owner and decided the broadest reasonable interpretation does not encompass “cause.”  As to Petitioner’s arguments and its expert, Dr. Bagherzadeh, testimony, the Board stated:

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.”

As to the term “configured to,” the Board relied upon its analysis in IPR2014-00971, construing the term to mean “designed to, adapted to, or arranged to.”

Turning to the alleged anticipation of the challenged claims by Averbuj, the Board agreed with Patent Owner that the reference does not “generate” a certain code relied upon for allegedly teaching “‘configured to generate’ (claim 1) or can be ‘operat[ed] . . . to generate’ (claim 16) address signals for testing the memory chips in the manner recited in claims 1 and 16,” the challenged independent claims. In particular, Petitioner’s arguments and evidence were based on its proposed construction that “generate” encompassed “cause,” which the Board did not adopt.  Therefore, the Board found that Averbuj does not teach every element recited in claims 1 and 16, and similarly, does not teach the elements of the challenged dependent claims.

Regarding the parties’ Motions to Exclude Evidence, the Board dismissed them as the Board did not rely upon any of the evidence subject to the Motions.

Judge Clements wrote a dissenting opinion, specifically, disagreeing with the majority’s finding that Petitioner had not shown that Averbuj discloses a controlled “configured to generate” “address signals as recited in independent claims 1 and 16.” While Judge Clements agreed that “generate” should be construed as meaning “produce,” he believed that “the evidence cited by Petitioner nevertheless establishes sufficiently” that the controller of Averbuj “produces” address signals.

Judge Clements noted that the majority cites to cross-examination of Petitioner’s expert in support of its finding that a feature other than the controller generates the required address signals in Averbuj. However, Judge Clements disagreed with the majority’s technical analysis and was persuaded that “Petitioner has established sufficiently that BIST controller 4 ‘produces’ the recited ‘address and control signals.’”

Smart Modular Tech. Inc. v. Netlist, Inc., IPR2014-01374
Paper 44: Final Written Decision
Dated: March 9, 2016
Patent: 8,359,501 B1
Before: Linda M. Gaudette, Bryan F. Moore, and Matthew R. Clements
Opinion for the Board by: Gaudette
Dissenting Opinion by: Clements
Related Proceedings: IPR2014-01372; IPR2014-01373; IPR2014-01375; IPR2014-00971