NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
INNOVATIVE MEMORY SYSTEMS, INC.,
Appellant
v.
MICRON TECHNOLOGY, INC.,
Appellee
______________________
2017-2472
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
00330.
______________________
Decided: August 27, 2019
______________________
EDWARD C. FLYNN, Eckert Seamans Cherin & Mellott,
LLC, Pittsburgh, PA, argued for appellant. Also repre-
sented by PHILIP LEVY; ROBERT WILLIAM MORRIS, White
Plains, NY.
JARED BOBROW, Orrick, Herrington & Sutcliffe LLP,
Menlo Park, CA, argued for appellee. Also represented by
JEREMY JASON LANG; DOUGLAS WAYNE MCCLELLAN, Weil,
Gotshal & Manges LLP, Houston, TX.
______________________
2 INNOVATIVE MEMORY SYSTEMS v. MICRON TECHNOLOGY, INC.
Before PROST, Chief Judge, REYNA and STOLL,
Circuit Judges.
PROST, Chief Judge.
Innovative Memory Systems, Inc. (“IMS”) appeals from
the final written decision of the Patent Trial and Appeal
Board (“Board”) in an inter partes review filed by Micron
Technology, Inc. (“Micron”). The Board concluded that the
challenged claims of U.S. Patent No. 6,901,498 (“the ’498
patent”) were unpatentable in view of the prior art of rec-
ord. For the reasons below, we affirm-in-part, reverse-in-
part, vacate-in-part, and remand.
I
The ’498 patent generally relates to non-volatile
memory. A non-volatile memory, such as a flash memory,
can be “divided into logical zones” in order to “reduce the
size of the data structures it uses for address translation.”
’498 patent col. 6 ll. 25–28. The ’498 patent involves “meth-
ods to adjust the zone boundaries to accommodate defects
allowed by memory test to improve card yields and to ad-
just boundaries in the field to extend the usable lifetime of
the card.” Id. col. 6 ll. 29–32. Independent claim 1 is rep-
resentative and recites:
1. A memory system circuit, comprising:
a memory comprising a plurality of blocks of non-
volatile storage elements wherein the storage ele-
ments within individual ones of the blocks are sim-
ultaneously erasable, and
a controller that controls programming of data into
addressed blocks, reading data from addressed
blocks and erasing data from one or more of ad-
dressed blocks at a time, wherein the memory is or-
ganized into logical zones each comprised of one or
more blocks for address translation, and wherein
INNOVATIVE MEMORY SYSTEMS v. MICRON TECHNOLOGY, INC. 3
the correspondence of blocks to zones is adjustable
by controller.
Id. col. 12 ll. 56–67.
In December 2015, Micron filed an IPR challenging
claims 1, 2, 5, 6, 11, 12, 15, 16, 21, 22, 27, 32, 33, 38, 43, 44,
47, and 48 of the ’498 patent. The Board instituted review
on four grounds: (1) claims 1, 2, 11, 12, 21, 27, 32, 38, 43,
and 44 are unpatentable as obvious over European Patent
No. 0 896 280 A2 (“Tanaka”) in view of U.S. Patent No.
6,034,897 (“Estakhri”); (2) claims 5, 6, 15, 16, 47, and 48
are unpatentable as obvious over Tanaka in view of Esta-
khri and U.S. Patent No. 7,020,739 (“Mukaida”); (3) claims
5, 6, 15, 16, 47, and 48 are unpatentable as obvious over
Tanaka in view of Estakhri and U.S. Patent No. 6,088,264
(“Hazen”); and (4) claims 22 and 33 are unpatentable as
obvious over Tanaka in view of Estakhri and U.S. Patent
No. 6,260,156 (“Garvin”). Micron Tech., Inc. v. Innovative
Memory Sys., Inc., No. IPR2016-00330, Paper 10 at 27
(P.T.A.B. June 29, 2016) (“Institution Decision”).
After an oral hearing, the Board determined that Mi-
cron had demonstrated by a preponderance of the evidence
that all challenged claims were unpatentable based on the
asserted grounds. Micron Tech., Inc. v. Innovative Memory
Sys., Inc., No. IPR2016-00330, Paper 40, 2017 WL
2704099, at *18 (P.T.A.B. June 22, 2017) (“Final Written
Decision”).
IMS appealed. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
II
“We review the Board’s ultimate claim constructions de
novo” and “any subsidiary factual findings involving ex-
trinsic evidence for substantial evidence.” AC Techs. S.A.
v. Amazon.com, Inc., 912 F.3d 1358, 1365 (Fed. Cir. 2019).
A claim in an unexpired patent is given its broadest
4 INNOVATIVE MEMORY SYSTEMS v. MICRON TECHNOLOGY, INC.
reasonable construction. 1 See 37 C.F.R. § 42.100(b) (2017);
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2146
(2016). Under this standard, “words of the claim must be
given their plain meaning, unless such meaning is incon-
sistent with the specification and prosecution history.” Tri-
vascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir.
2016).
Obviousness is a question of law based on underlying
factual determinations. Belden Inc. v. Berk-Tek LLC, 805
F.3d 1064, 1073 (Fed. Cir. 2015). We review the ultimate
obviousness determination de novo and underlying factual
findings for substantial evidence. Harmonic Inc. v. Avid
Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). “A finding
is supported by substantial evidence if a reasonable mind
might accept the evidence to support the finding.” K/S
Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1364
(Fed. Cir. 2014).
III
IMS first contends that the Board erred in determining
that the combination of Tanaka and Estakhri renders ob-
vious the claim limitation “wherein the correspondence of
blocks to zones is adjustable by controller” in claim 1, and
related limitations in claims 11 and 43. IMS challenges the
Board’s construction of the term and the Board’s analysis
of the prior art. We address each in turn.
1 The U.S. Patent and Trademark Office changed the
claim construction standard used in IPR proceedings. See
37 C.F.R. § 42.100(b); Changes to the Claim Construction
Standard for Interpreting Claims in Trial Proceedings Be-
fore the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
(Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). The new
standard applies only to petitions filed on or after Novem-
ber 13, 2018, and therefore does not impact this case.
INNOVATIVE MEMORY SYSTEMS v. MICRON TECHNOLOGY, INC. 5
A
IMS contends that the Board improperly construed the
term “wherein the correspondence of blocks to zones is ad-
justable by controller.” Below, IMS argued that the phrase
means “adjusting zone boundaries such that blocks from
one logical zone are shifted to another logical zone.” Final
Written Decision at *4. The Board rejected this require-
ment that the blocks being adjusted must come from an ex-
isting “logical zone.” See id. at *5. It found that the plain
and ordinary meaning “is broad enough to encompass both
the situation where blocks are assigned to zones and the
situation where the blocks are not yet assigned.” Id. It did
not further construe the term. On appeal, IMS argues this
construction was unreasonably broad in light of the plain
language of the claims and the specification. We agree.
We begin with the claim language. In claim 1, the “con-
troller” must be able to adjust “the correspondence” be-
tween blocks and zones. Therefore, the outcome here turns
on the meaning of “the correspondence.” The Board con-
cluded that the plain and ordinary meaning of “correspond-
ence” is simply any “connection” or “relation.” Id. But that
does not end the inquiry. The claim is not written as “a
correspondence.” Rather, as written, the plain language of
the claims requires “the correspondence.”
The phrase “the correspondence” establishes there is a
preexisting connection or relationship between the blocks
and zones. The relationship is defined in the claim. In-
deed, it is described in the “wherein” clause directly before
the disputed limitation. In full, the two phrases together
read: “wherein the memory is organized into logical zones
each comprised of one or more blocks for address transla-
tion, and wherein the correspondence of blocks to zones is
adjustable by controller.” ’498 patent col. 12 ll. 64–67 (em-
phases added). Claim 11 recites the same “wherein” lan-
guage. Id. col. 13 ll. 35–39.
6 INNOVATIVE MEMORY SYSTEMS v. MICRON TECHNOLOGY, INC.
Read together, the two wherein clauses leave no doubt
about the proper construction. Blocks are organized into
zones. When blocks become defective in a zone, the claim
recites a solution: “the correspondence of blocks to zones”
can be adjusted. Thus, IMS’s construction that “blocks
from one logical zone are shifted to another logical zone” is
required by the claim language.
The same holds true for claim 43. Claim 43 recites “log-
ical address section” instead of “logical zones.” But it also
recites the same existing “correspondence” between “logical
address sections” and “blocks.” Id. col. 16 ll. 5–9
(“[W]herein the non-volatile [sic] is organized into logical
address sections as seen by the controller, wherein the cor-
respondence between physical blocks and logical address
sections is adaptable by the controller in response to de-
fects in the memory”).
The specification confirms this reading of the plain lan-
guage of the claims. In every embodiment disclosed in the
’498 patent specification, zone boundaries are adjusted by
transferring blocks from one logical zone organized for ad-
dress translation to another logical zone organized for ad-
dress translation. See, e.g., id. col. 6 ll. 24–32, 40–44, col. 7
ll. 35–51, col. 8 ll. 20–34. Micron does not dispute this
point. See Appellee’s Br. 30. In light of the clear scope of
the claims, which is only further supported by the specifi-
cation, the Board’s construction was unreasonably broad.
Resisting this conclusion, Micron makes several argu-
ments that the claims are not limited. None are persua-
sive. First, it argues that IMS’s construction must fail
because the claims do not expressly use the term “bounda-
ries.” Appellee’s Br. 27. The Board appears to have been
led astray by this argument. See Final Written Decision at
*5 (“Importantly, the identified passages of the Specifica-
tion discuss adjusting zone boundaries, but the claims do
not use the term ‘boundaries.’”). Certainly, the claims
could have been written to describe this process as
INNOVATIVE MEMORY SYSTEMS v. MICRON TECHNOLOGY, INC. 7
redrawing the “boundaries” between zones. But it was not
necessary. Per the claim language, the blocks in question
must be organized into zones. The claims recite changing
the “correspondence” between the zone and its compo-
nents—blocks already part of zones—to assist zones with
defective blocks. Whether expressed as changing “bounda-
ries” or adjusting “correspondence,” the outcome is the
same.
Next, Micron points to the Board’s reasoning that claim
1 refers to several different types of “blocks.” Id. (discuss-
ing the “plurality of blocks” that comprise the memory, “ad-
dressed blocks,” and the “one or more blocks” organized
into logical zones). Micron infers that since certain “blocks”
(e.g., “plurality of blocks”) referenced elsewhere in the
claim are not expressly tied to a particular zone, the claims
must encompass adjusting blocks that have no affiliation
to a zone.
This misreads the claim language. If one examines the
claim in full and follows the antecedent basis for each ele-
ment, Micron’s argument about unaddressed blocks unrav-
els. Claim 1 requires a “memory system circuit.” The
circuit must have “a memory comprising a plurality of
blocks” wherein “the memory is organized into logical zones
each comprised of one or more blocks for address transla-
tion.” In turn, “the correspondence of blocks to zones is ad-
justable by [the] controller.” The claim goes from a broad
category (“a memory”) including the different types of
memory Micron identifies, to a much more finite class of
memory (“the memory” organized into logical zones of “one
or more blocks for address translation”). It is this finite
class of “the memory” that “the correspondence of blocks to
zones” refers back to. As such, the broader list of memory
at the outset of the claim has no bearing on this specific
limitation.
Finally, the cases Micron cites are inapplicable here.
Micron points to our decisions discussing the rigors of
8 INNOVATIVE MEMORY SYSTEMS v. MICRON TECHNOLOGY, INC.
proving specification disclaimer. See, e.g., Unwired Planet,
LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016)
(“We do not read this specification as clearly and unmis-
takably requiring that voice signals be transmitted exclu-
sively over voice channels.”). But in such cases, the issue
was whether the specification disclaimed or otherwise lim-
ited the broader scope of the claim as written. By contrast,
here the narrow scope is already established by the plain
text of the claims itself. In other words, the specification is
not being used to narrow the claim, triggering the disa-
vowal doctrine. Rather, the specification simply supports
the conclusion being drawn from the text of the claim on its
face.
For the reasons above, we reverse the Board’s construc-
tion for the term “wherein the correspondence of blocks to
zones is adjustable by controller” in claim 1 and the related
term in claims 11 and 43. The term requires that the con-
troller can adjust zone boundaries such that blocks from
one logical zone are shifted to another logical zone.
B
We now turn to the Board’s analysis of the prior art.
Below, the Board addressed IMS’s narrower construction
in the alternative. It concluded that Tanaka still discloses
a controller “adjusting zone boundaries such that blocks
from one logical zone are shifted to another logical zone.”
See Final Written Decision at *10. According to the Board,
Tanaka discloses taking spare blocks unassociated with an
address and assigning them to a zone. Id. The Board found
that those blocks come from a “redundant block area.” Id.
In the Board’s view, this area could be considered a logical
zone, though none of the blocks within it are assigned to an
address. Id. Because Tanaka discloses making zone ad-
justments by transferring redundant blocks from the “re-
dundant block area” (i.e., a first logical zone) to a second
area where defective blocks are located (i.e., a second logi-
cal zone), the Board found that Tanaka satisfies IMS’s
INNOVATIVE MEMORY SYSTEMS v. MICRON TECHNOLOGY, INC. 9
construction. Id. (citing Subramanian Decl. ¶ 25; Subra-
manian Dep. 58:8–59:13). The Board’s reasoning was not
meaningfully different for claims 11 or 43. See, e.g., Final
Written Decision at *13 (“Our reasoning regarding why
Tanaka satisfies the limitations of claims 1 and 11 also ap-
plies here to claim 43, even though claim 43 recites ‘logical
address sections,’ instead of ‘zones’; because, as discussed
above, Tanaka’s zones and redundant block are logical ad-
dress sections within the meaning of claim 43.”).
IMS argues the Board’s analysis ignored the require-
ments of the claim. We agree. The Board cut the analysis
short. The claim does not simply require that the memory
is organized into “logical zones” of any nature. 2 The full
claim limitation expressly requires that the memory is “or-
ganized” into “logical zones each comprised of one or more
blocks for address translation.” ’498 patent col. 12 ll. 64–
66 (emphasis added). Thus, the zones contain blocks that
are already assigned for address translation. As discussed
above, the properly construed remaining language in the
claim then requires a controller that can adjust boundaries
between zones of assigned blocks “such that blocks from
one logical zone are shifted to another logical zone.”
Based on the record, IMS insists there is no evidence
supporting a finding that Tanaka meets the full limitation.
It encourages us to reverse. Reversal, rather than remand,
is appropriate where, “[o]n the evidence and arguments
presented to the Board, there is only one possible evidence-
supported finding: [that] the Board’s determination . . .
when the correct construction is employed, is not supported
by substantial evidence.” Corning v. Fast Felt Corp., 873
F.3d 896, 900–01 (Fed. Cir. 2017). According to IMS, there
is no evidence to show that the “redundant block area” in
2 The term “logical zones” was construed to mean “a
logical subdivision of the total capacity of the non-volatile
memory die.” Id. at *10.
10 INNOVATIVE MEMORY SYSTEMS v. MICRON TECHNOLOGY, INC.
Tanaka is a zone in which memory is already organized or
mapped to an address. IMS’s expert, Dr. Nettles, testified
that these redundant blocks do not have logical addresses
until they are used to replace a defective block. J.A. 1677
(Nettles Decl. ¶¶ 105–106). Micron’s expert, Dr. Subrama-
nian, appeared not to dispute this point. J.A. 19–1920
(Subramanian Dep. 27:2–16).
We think the better course is to remand to the Board
for determination of the factual issue under the proper con-
struction. Consequently, we vacate the Board’s conclusion
about this limitation and remand for further proceedings
regarding whether the prior art teaches this limitation in
independent claims 1, 11, and 43 and their respective de-
pendent claims (2, 5, 6, 12, 15, 16, 44, 47, and 48).
IV
Separately, IMS challenges the Board’s finding that
the combination of Tanaka and Estakhri discloses “a single
controller” in independent claims 1, 11, 21, 32, and 43. The
claims all recite a single controller that performs two func-
tionalities. The first functionality requires the controller
to control “programming,” “reading,” and “erasing” of data.
See, e.g., ’498 patent col. 12 ll. 61–63. The second function-
ality is expressed slightly differently across different
claims. In some claims, the controller must be able to “ad-
just[],” (claims 1 and 11) or “assign[]” (claims 21 and 32)
blocks to zones. Id. col. 12 l. 67, col. 13 l. 38, col. 14 ll. 11–
12, col. 14 ll. 65–66. In other claims, the controller must be
able to “adapt[]” (claim 43) the blocks to “logical address
sections.” Id. col. 16 ll. 7–9.
IMS disputes that Micron proved the combination of
Tanaka and Estakhri discloses “a single controller.” IMS’s
argument on appeal boils down to two points. First, IMS
seems to argue waiver. Second, it argues failure of evi-
dence. Neither position is persuasive.
INNOVATIVE MEMORY SYSTEMS v. MICRON TECHNOLOGY, INC. 11
Regarding its waiver-style arguments, IMS contends
that Micron never advanced a theory that it would have
been obvious to put Tanaka’s functionality—which in-
volves the second functionality of zone adjustment—in Es-
takhri’s controller. Appellant’s Br. 55. According to IMS,
Micron only ever argued the reverse. Contrary to IMS’s
position, however, Micron’s petition appears to have raised
the theory. According to the petition:
[T]o the extent that Tanaka does not expressly dis-
close that the controller is performing the re-
mapping (or the same controller as in claim [1.2]),
it would have been obvious from Tanaka in view of
Estakhri that the same “controller device 14” in Es-
takhri (or of Tanaka) that controls the program-
ming (i.e., writing), reading, and erasing of data
could also perform the above-mentioned zone ad-
justments.
J.A. 128 (Petition); see also J.A. 715 (Subramanian
Decl.).
As for failure of proof, IMS contends that there is a lack
of substantial evidence to support this theory. We disa-
gree. Not only did Micron’s petition disclose the theory of
combining the redundant circuit functionality in Tanaka’s
system into the controller of Estakhri, but it provided sub-
stantial evidence in support of this theory, including
through the declaration of Dr. Subramanian. See, e.g., J.A.
708–14, 715–17, 886 (Abstract); see also J.A. 894 (col. 1 ll.
64–66, col. 2 ll. 20–22, col. 2 ll. 38–50), 896 (col. 5 ll. 34–36),
1589–90 (¶ 36).
Relatedly, IMS further contends that Micron neglected
to offer any evidence of a motivation to combine Tanaka’s
functionality with Estakhri’s controller. We disagree. The
record here confirms Micron presented several evidentiary
bases. Micron’s expert, Dr. Subramanian, testified that us-
ing the controller of Estakhri in Tanaka would have in-
volved a simple substitution that would have been
12 INNOVATIVE MEMORY SYSTEMS v. MICRON TECHNOLOGY, INC.
understood to yield predictable results and would have
been obvious to try. See J.A. 683–84 (Subramanian Decl.
¶¶ 80–82). Dr. Subramanian also opined that a person of
ordinary skill “would have used the controller and planes
of Estakhri in the Tanaka system because both address the
specific issue of logically grouping flash blocks together and
erasing multiple blocks at a time.” J.A. 681–83 (Subrama-
nian Decl. ¶¶ 78–79). On this record, substantial evidence
supports a finding of motivation to combine. See J.A. 27–
28.
This was the only challenge on appeal to independent
claims 21 and 32. Therefore, we affirm the Board’s conclu-
sion that claims 21 and 32 are unpatentable as obvious.
Likewise, as IMS raises no other challenge to dependent
claims 22, 27, and 38, we also affirm the Board’s conclu-
sions that these claims were unpatentable as obvious.
V
For the reasons above, we reverse the Board’s claim
construction of “wherein the correspondence of blocks to
zones is adjustable by controller” and vacate and remand
its obviousness determination for further analysis regard-
ing whether claims 1, 2, 5, 6, 11, 12, 15, 16, 43, 44, 47, and
48 are unpatentable as obvious over the combination of
Tanaka and Estakhri. We affirm the Board’s conclusion
that claims 21, 22, 27, 32, 38 are unpatentable.
AFFIRMED-IN-PART, REVERSED-IN-PART,
VACATED-IN-PART, AND REMANDED
COSTS
The parties shall bear their own costs.