Takeaway: When analyzing prior art, the entire reference must be considered, not just the stated purpose, goal, or objectives. 

In its Final Written Decision, the Board found that all of the challenged claims (1-11 and 17-19) of the ’819 Patent are unpatentable. The ’819 Patent addresses control circuitry that controls the exchange of data between read/write circuitry and first and second slave circuitry.

The Board began with claim construction, stating that because the ’819 Patent is expired, the claims are construed as set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). Therefore, they are given their plain and ordinary meaning as understood by one of ordinary skill in the art at the time of the invention. The Board determined that claim construction was not necessary for the purposes of the Decision.

Turning to the challenges, the Board first discussed the scope of the claim. Patent Owner contended that the independent claims are limited to “a move/copy operation . . . , which moves data to slave circuitry and then writes the data to memory using the same slave circuitry.” The Board found that this argument was not commensurate in scope with the language of the claims themselves, noting that the claims do not require use of the same slave circuit. The Board further found that this argument improperly read limitations from the specification into the claims because Patent Owner had not shown that the intrinsic evidence limits the independent claims to copying data using the same slave circuitry.

Next, the Board addressed Petitioner’s argument that claims 1-11 and 17-19 are rendered obvious by the disclosures in Ogawa ’577 in view of Ogawa ’045 and JP ’832. The Board agreed with Petitioner’s expert that the prior art disclosed the limitations. The Board then addressed each of Patent Owner’s arguments. The Board was not persuaded by Patent Owner’s evidence that Ogawa ’577 and JP ’832 do not teach or suggest writing data through the sense amplifiers into the memory array, finding that Patent Owner’s arguments were merely alternate arrangements to construct an embodiment that does not use sense amplifiers to write data to the memory. Patent Owner also argued that one of ordinary skill in the art would understand that the circuitry outside of Figure 2, but the Board found that this was arbitrary. The Board also did not agree with Petitioner that because there are alternate ways to implement the column decode function, the column decoder limitation of claim 7 is not disclosed inherently in JP ’832.

Finally, the Board addressed Patent Owner’s contention that Ogawa ’577 and JP ’832 teach away from being combined with Ogawa ’045. The Board found that Patent Owner’s arguments rely on the stated goals and improvements of Ogawa ’577 and JP ’832 over Ogawa ’045, but the case law states that all disclosures of a prior art reference, including non-preferred embodiments, must be considered. Therefore, the Board did not agree with Patent Owner’s teaching away argument.

Toshiba Corporation, Toshiba America, Inc., Toshiba America Electronic Components, Inc., and Toshiba America Information Systems, Inc. v. Intellectual Ventures II LLC, IPR2014-00418
Paper 28: Final Written Decision
Dated: August 7, 2015
Patent 5,500,819
Before: Jacqueline Wright Bonilla, Trevor M. Jefferson, and David C. McKone
Written by: Jefferson
Related Proceeding: Intellectual Ventures I LLC v. Toshiba Corp., No. 1:13-cv-00453 (D. Del.)