Takeaway: To establish anticipation, a petitioner must show that the prior art unambiguously discloses the claimed features arranged as in the challenged claim.

In its Final Written Decision, the Board held that Petitioner failed to show by a preponderance of the evidence that the challenged claims of the ’403 patent are unpatentable. The ’403 patent generally “relates to a circuit that enables reading from and writing to a random access memory (“RAM”) in the same clock cycle,” and specifically “using the rising and falling edges of the clock cycle to trigger read and write operations.”

Addressing claim construction, the Board had construed five claim terms in its Decision on Institution, and neither party disagreed with any of the constructions. Accordingly, the Board maintained the same constructions for the Final Written Decision.

Turning to the prior art, the Board first addressed the alleged anticipation of claims 1-6, 16, 19, and 20 based on the Sharp reference. Petitioner’s argument was based upon the premise that circuitry shown in Fig. 3 of Sharp could be used as an address latch 12 shown in Fig. 1 of Sharp. Patent Owner disputed this point, arguing that the circuitry of Fig. 3 would need to be modified to be used as address latch 12, the circuitry of Fig. 3 is for storing data rather than addresses, and using the circuitry of Fig. 3 as address latch 12 “would cause the memory of Sharp to operate in a manner inconsistent with the disclosure of Sharp.”

The Board found that Petitioner did not cite any evidence that Sharp expressly discloses, nor that a skilled artisan would understand, that the Fig. 3 circuitry could be used as address latch 12 without modification. In addition, Petitioner’s reliance upon its expert testimony regarding the use of the circuitry as address latch 12 was found to be not persuasive because it used the same conclusory language as in the Petition “without some additional reasoning and explanation.” The Board was unpersuaded by Petitioner’s expert’s supplemental declaration because the expert began with the assumption “that Figure 3 must be capable of being used, without modification, somewhere in Figure 1.” However, as the Board previously discussed, no reason had been provided “why a person of ordinary skill would understand Sharp as disclosing the use of Figure 3, without any modifications, in Figure 1.” The Board also found Petitioner’s expert testimony to be inconsistent with the disclosure of Sharp. Petitioner argued that Figure 3 was limited to being used as address latch 12 whereas the disclosure of Sharp indicated that Figure 3 was more broadly applicable to “latches or other logic circuits.”

The Board also found Patent Owner’s evidence that inserting the circuitry of Fig. 3 into Fig. 1 would yield “a device that would operate in a manner that is inconsistent with the disclosure of Sharp.” In particular, the Board was persuaded that while Sharp requires that data must be read before receipt of a hit/miss signal, “Petitioner’s proposed circuit would not deliver the address to decoder 11 until well after the hit or miss signal could be detected.” The Board found Petitioner’s response that Figure 3 would not “introduce delay” unpersuasive, finding that the response did not address Patent Owner’s argument.

Thus, the Board concluded that Petitioner did not show that Sharp “unambiguously discloses” the claimed circuit. Instead, the Board found that “Petitioner picks and chooses among the components disclosed in Sharp to assemble the claimed subject matter,” rather than showing the prior art elements arranged as in the claim as required to establish anticipation.

With respect to the alleged anticipation of claims 1 and 15 based on the Takayanagi reference, the Board held that Petitioner did not show by a preponderance of the evidence that Takayanagi discloses “storing addresses in response to a ‘first periodic signal transition’ and a ‘second periodic signal transition,’ as recited in claims 1 and 15.” The Board agreed with Patent Owner that Petitioner’s analysis was flawed. Petitioner conceded that its analysis in the Petition was flawed, and argued a new theory at oral hearing. However, the Board was unpersuaded by the new arguments, finding that the record weighed against them. In contrast to Petitioner providing “insufficient reasoning or explanation to support the inferences it seeks to have [the Board] draw from the few bits of evidence that it does cite,” Patent Owner’s arguments were “supported by the testimony of its expert and citations to Takayanagi.”

The Board denied the remaining instituted grounds for the same reasons discussed above.

GSI Tech., Inc. v. Cypress Semiconductor Corp., IPR2014-00121

Paper 46: Final Written Decision

Dated: April 9, 2015

Patent: 6,292,403 B1

Before: Miriam L. Quinn, William V. Saindon, and Kevin W. Cherry

Written by: Cherry

Related Proceedings: Cypress Semiconductor Corp. v. GSI Technology, Inc., C.A. 13-2013-JST (N.D. Cal.); Cypress Semiconductor Corp. v. GSI Technology, Inc., C.A. 13-3757-JST (N.D. Cal.)