In two related inter partes reviews (IPRs) decided on March 9, 2016, a PTAB panel issued final written decisions holding that Smart Modular Technologies Inc. (Petitioner) failed to prove by a preponderance of the evidence that any challenged claim is invalid as anticipated. The patents at issue had previously been the subject of IPRs, brought by a different party. In those previous IPRs the PTAB held that the petitioner had proven some, but not all, claims obvious or anticipated based on very similar prior art as that raised by Smart Modular here.
In its institution decision, the PTAB construed the term “generate” to mean “produce or cause.” In its response, the patent owner argued that the term should be construed as only “produce” and that a construction including “cause” is inconsistent with the intrinsic and extrinsic evidence. In its reply, Petitioner disagreed and argued that the PTAB was correct in its institution decision. In its final written decision, the PTAB determined that, consistent with its construction of these same terms in the previous IPRs, the broadest reasonable construction of “generate” was “produce.” Petitioner’s evidence here did not convince the panel otherwise. Accordingly, the PTAB changed the construction it had used in the institution decision and construed “generate” to mean “produce.” Under this construction, the PTAB found that Petitioner failed to show that the cited reference included every claim element, and, accordingly, Petitioner had failed to prove the claims anticipated. This may be a case where the difference between the ‘broadest reasonable interpretation’ standard, currently applied by the PTAB, and the Phillips standard for claim construction applied by the district courts could have a material impact on the ultimate outcome.
Smart Modular Techs. Inc. v. Netlist, Inc., IPR2014-01372; IPR2014-01374 (PTAB Mar. 9, 2016).
[Gaudette (opinion), Moore, Chen]