Saturday, June 06, 2015

Intellectual Ventures loses IPR at PTAB on US Patent 5,687,132

In light of the discussion of "inter partes review" [IPR] surrounding the marked-up version of the PATENT Act (now before the US Senate), IPR2014-00317 between Toshiba and Intellectual Ventures [IV], which was decided on 3 June 2015, presents some interesting facts for consideration.

The patent in question is US 5,687,132, now controlled by IV (designated the patent owner in the IPR). Yes, there is a related litigation [ 1:13-cv-00453 (D. Del.). ].
Of greater interest is the observation that there was an ex parte re-examination [90/012,571 ], which found claims 1, 2, 4, 6, 9, 10, 28, and 29 valid, in distinction to the outcome of the IPR of June 2015 !. A key issue was that the Examiner in the ex parte re-examination concluded that each of the claims under reexamination includes a requirement of a single memory, rather than two separate memories, a limitation the Examiner found lacking in the cited prior art.

Yes, BRI was mentioned in the IPR:

The Board interprets claims of an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
778 F.3d 1271, 1279–81 (Fed. Cir. 2015). Claim terms generally are given
their ordinary and customary meaning, as would be understood by one of
ordinary skill in the art in the context of the entire disclosure. See In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).

and, one notes BRI would be removed in the marked-up PATENT Act and in Goodlatte's Innovation Act.

Of the prior ex parte re-exam, the IPR noted:

At the time of our Decision to
Institute, the Examiner in the ’571 reexam had issued a NIRC confirming
those claims. Ex. 2001. In the Preliminary Response, Patent Owner argued
that we should reject the Petition based on 35 U.S.C. § 325(d), which gives
us discretion to “take into account whether, and reject the petition or request
because, the same or substantially the same prior art or arguments previously
were presented to the Office.” Prelim. Resp. 1. We declined to exercise that
discretion, citing our disagreement with the Examiner’s claim construction
in the NIRC. Dec. 3. Following our Decision on Institution, the Office
issued a Reexamination Certificate, US 5,687,132 C1, confirming claims 1,
2, 4, 6, 9, 10, 28, and 29.

Patent Owner again contends that the reexamination decision supports
its proposed constructions of “a first subarray of memory cells,” “a second
subarray of memory cells,” “a memory,” and “a memory subsystem,”
arguing that the Examiner effectively adopted the constructions Patent
Owner proposes in this proceeding. PO Resp. 31–34. We are not

As detailed in the NIRC, the Examiner considered, and agreed with,
Patent Owner’s argument that “a memory” and “a memory subsystem” are
limited to a single memory or single memory subsystem, respectively.
Ex. 2001, at 9–10 (“Even though the claim only recited ‘a memory’ not ‘a
single memory’; . . . However, it is agreed that the prior art references of
record fail to teach or suggest the combination of the claimed limitations, for
example: the first plurality of columns of memory cells and the second
plurality of columns of memory cells are located in a same memory . . . ; or
a first subarray of memory cells and a second subarray of memory cells are
located in a same memory subsystem . . . .”). For the reasons given in
Section II.A.2 above, and in the Decision to Institute, at 7–8, we continue to
disagree with the Examiner’s construction in the NIRC. Accordingly, we do
not adopt it in this proceeding.

The IPR decision runs 38 pages and is an interesting read.

Sterne, Kessler represented IV.

See also the post at The Register Intellectual Ventures: Toshiba is violating our patent! Toshiba: What patent?


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