Docket No. 2016-1742, -1743, -1744 (IPR2014-00882, -00883, -01011)
DYK, TARANTO, HUGHES
July 25, 2017
Brief summary: Board’s anticipation/obviousness conclusions following IPR vacated as based on incorrect claim constructions (remanded).
Summary: Netlist appealed PTAB IPR final written decision finding certain claims of US 7,881,150 and 8,081,536 relating to a memory module in a computer system unpatentable. Netlist argued the PTAB incorrectly construed “selectively electrically coupling,” “selectively isolating/isolate,” and “circuit configured to be mounted on a memory module.” The FC panel explained it reviews PTAB “ultimate claim constructions de novo and its underlying factual determinations involving extrinsic evidence for substantial evidence” (Microsoft, FC 2015), and that “[i]n an IPR for an unexpired patent, the Board must construe terms according to their broadest reasonable construction” (Cuozzo, US 2016). Netlist argued “‘circuit configured to be mounted on a memory module’ means the entire circuit must be on a single memory module” and that “allowing any portion of the circuit to be mounted elsewhere would undermine the ability to easily swap out memory modules in the computer system.” The FC panel disagreed with Netlist because, e.g., “Netlist does not provide any compelling reason why the claim is limited to embodiments with that feature”, and agreed with the PTAB. Netlist also argued the Board incorrectly found “selectively electrically coupling” refers to the overall process of selecting components. It argued the term should be construed to refer to coupling or decoupling specific data lines, and the FC panel agreed based on the use of the term within the claims (Phillips, FC 2005 (“the context in which a term is used in the asserted claim can be highly instructive”)). Netlist also argued the PTAB misconstrued “selectively isolating/isolate”, which was construed differently for the ‘150 and ‘536 patents. Regarding the ‘150 patent, the FC panel found the Board erred in construing “selectively electrically coupling”, upon which “selectively isolating/isolate” “seems to be based”. The FC panel concluded “it is unclear if the Board intended to give this term a different meaning”. It therefore vacated the Board’s anticipation/obviousness conclusions as based on incorrect claim constructions.