Examining patent docs at USPTO II – sloppy appeals

What sloppy appeals at the USPTO look like

UPDATE: 07/08/2012 – quoting from the pdfs

We’ll shed some light on Inphi’s arguments in appeal of USPTO finding in favor of Netlist in the ‘537 and ‘274 patent reexams.

You can visit the USPTO PAIR website as described in the section “Searching at the USPTO” in the article:

https://ddr3memory.wordpress.com/2012/06/04/examining-patent-docs-at-uspto/
Examining patent docs at USPTO
June 4, 2012

The last two filings are presented below – for convenience – as these two illustrate the Inphi position and Netlist’s response.

If you like reading legal stuff, these maybe reasonably interesting.

Some background

Inphi is a maker of RDIMM buffer chipsets and the newer LRDIMM buffer chipsets. The LRDIMM buffer chipsets are copying Netlist IP in load reduction and rank multiplication. LRDIMMs are a new standard because they are non-compatible with RDIMMs.

Netlist is the inventor of load reduction and rank multiplication, and make a product which is compatible with RDIMMs and trumps the LRDIMMs on performance, latency, price and IP issues.

If you may recall, Inphi had challenged Netlist patents at the USPTO. The patent reexam process involves a complete de-construction of the patent where it is built up from scratch (without a “presumption of validity”) in front of the challenger (Inphi) who is given every opportunity to participate in the process.

What emerges becomes iron-clad and the challenger can never again challenge that IP on those same issues ever again in court.

The USPTO has reaffirmed Netlist patents ‘537 and ‘274 in patent reexams with ALL claims intact (a very strong result indeed). This will come back to bite Inphi when Netlist vs. Inphi resumes (it was stayed pending reexams).

‘274 – application number: 95/001,337
‘537 – application number: 95/001,381

Inphi’s retaliatory lawsuit against Netlist – Inphi vs. Netlist – was unilaterally withdrawn by Inphi, in my opinion because one or both of the patents Inphi was using may have been invalidated if Inphi had proceeded – Netlist had pointed out a possible case of double-patenting – Inphi had applied for patents using two different sets of authors to two different examiners at the USPTO – a blatant case of patent inflation !

See the section entitled “Inphi’s “intent to deceive” the USPTO” in the article:

https://ddr3memory.wordpress.com/2012/05/30/legal-issues-with-lrdimms-repeating-metaram-2/
LRDIMMs similarities with MetaRAM
May 30, 2012

Last two filings

Those interested in patent and legal info may find the filings by Inphi and Netlist interesting.

The Netlist filing is interesting because it provides an overview of the USPTO re-validation of all claims for both the Netlist patents ‘537 and ‘274 in patent reexaminations that were provoked by Inphi.

The Netlist filing also includes a copy of the declarations of expert witnesses Dr. Carl Sechen, who is a professor of Electrical Engineering at Univ. of Texas and Dr. Hyun Lee who is an employee of Inphi, in favor of Netlist and Inphi respectively.

Here are the recent filings for the ‘537 patent reexam (the ‘274 patent is a continuation of the ‘537 patent):

Inphi initially filed a defective brief, after which they were able to file this brief – here Inphi appeals to the BPAI to reconsider the USPTO decision to re-validate all claims of the Netlist ‘537 patent:

https://ddr3memory.files.wordpress.com/2012/07/2012_05_31_iphi_appealbrief.pdf

It is a pdf comprising these documents on the USPTO PAIR website:

05-31-2012 RXC/M. Reexam Certificate of Mailing PROSECUTION 1
05-31-2012 RXC/SR Reexam Certificate of Service PROSECUTION 1
05-31-2012 XI.AP.BR Appeal Brief – Third Party Requester PROSECUTION 1
05-31-2012 XI.AP.BR Appeal Brief – Third Party Requester PROSECUTION 40
05-31-2012 XI.AP.BR Appeal Brief – Third Party Requester PROSECUTION 1
05-31-2012 XI.AP.BR Appeal Brief – Third Party Requester PROSECUTION 1
05-31-2012 XI.AP.BR Appeal Brief – Third Party Requester PROSECUTION 14
05-31-2012 RXAF/DR Reexam – Affidavit/Decl/Exhibit Filed by 3rd Party PROSECUTION 2
05-31-2012 RXAF/DR Reexam – Affidavit/Decl/Exhibit Filed by 3rd Party PROSECUTION 5
05-31-2012 RXAF/DR Reexam – Affidavit/Decl/Exhibit Filed by 3rd Party PROSECUTION 22
05-31-2012 RXAF/DR Reexam – Affidavit/Decl/Exhibit Filed by 3rd Party PROSECUTION 36

Here is the Netlist reply to the Inphi appeal above – it is interesting because of it’s language addressing Inphi arguments, and because it includes the two expert witness declarations:

https://ddr3memory.files.wordpress.com/2012/07/2012_07_02_nlst_respondentbrief.pdf

It is a pdf comprising these documents on the USPTO PAIR website:

07-02-2012 TRAN.LET Transmittal Letter PROSECUTION 1
07-02-2012 XI.RSBO Respondent Brief – Owner PROSECUTION 24
07-02-2012 RXC/SR Reexam Certificate of Service PROSECUTION 1
07-02-2012 APAF Affidavit/Dec/Exhibit after Notice of Appeal PROSECUTION 4
07-02-2012 APAF Affidavit/Dec/Exhibit after Notice of Appeal PROSECUTION 132
07-02-2012 N417 EFS Acknowledgment Receipt PROSECUTION 2
07-02-2012 WFEE Fee Worksheet (SB06) PROSECUTION 2
07-02-2012 N417 EFS Acknowledgment Receipt PROSECUTION 2

Not all of it is understandable to a layman, but it shows how a patent is defended against multiple prior art presented by the challenger. A patent has to survive the prior art alone and in combination with the other prior art, before the USPTO re-validates a claim for a patent (the USPTO re-validated all pending claims).

Let’s see if anyone can identify the problems in the Inphi arguments.

UPDATE: 07/08/2012 – quoting from the pdfs

From the Netlist pdf above (thanks to cherk_on for the text):

pg. 9:

VII. ARGUMENT
A. Introductory Comments

In the RAN, the Examiner confirmed or allowed all the pending claims. Appellant seeks
to undermine this conclusion in four principal ways. Appellant first seeks to exclude
amendments and the Sechen Declaration entered by the Examiner. (Brief, 5-9.) Second,
Appellant presents the Examiner’s patentability conclusion as resting on the DDR recitations.
(Id., 23, 26, 29, 31-32.) Appellant also presents a nine-page tutorial on 1-to-2 and 2-to-4 line
decoders. With this evidence, Appellant concludes that some claim recitations, such as the DDR
recitations, were known. (M., 5, 9-18.) All four ways are fundamentally flawed.

First, the Examiner’s entry of amendments and the Sechen Declaration is not an issue for
appeal. This is well-established case law.

Second, Appellant has incorrectly recast the RAN as being based on just the DDR
recitations. The Examiner incorporated Respondent’s reasons for patentability into the RAN,
and those reasons include recitations and arguments that go well beyond the DDR recitations
identified by Appellant. (RAN, 19, 22.) Importantly, Appellant has failed to address these
additional reasons on appeal. The Board can thus dispose of many proposed rejections on this
basis alone.

Third, the tutorial is replete with statements of the knowledge in the art without any
evidentiary support in the record. Those portions should not be admitted under 37 CFR §§
41.63(c) and 41.67(c)(2). On one hand, Appellant seeks to introduce evidence after appeal to
buttress its own arguments and, on the other hand, it incorrectly seeks to exclude Respondent’s
Sechen Declaration.

Fourth, when Appellant finally addresses some claim recitations, its analysis lacks clarity
and is based on conclusory attorney arguments. This is in sham contrast to Respondent’s
substantiated analysis of the references’ deficiencies.

For these reasons, as discussed in detail below, Respondent respectfully requests that the
Board affirm the patentability of all the pending claims.”

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2 responses to “Examining patent docs at USPTO II – sloppy appeals

  1. Pingback: HyperCloud to own the 32GB market ? | ddr3memory

  2. Pingback: The Curious Case of Google vs. Netlist | ddr3memory

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