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Inphi Corp. v. Netlist, Inc.

United States Court of Appeals, Federal Circuit

November 13, 2015

INPHI CORPORATION, Appellant
v.
NETLIST, INC., Appellee

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 95/001,381.

DAVID A. JAKOPIN, Pillsbury Winthrop Shaw Pittman LLP, Palo Alto, CA, argued for appellant. Also represented by ROBERT M. FUHRER, McLean, VA.

MEHRAN ARJOMAND, Morrison & Foerster LLP, Los Angeles, CA, argued for appellee. Also represented by BRYAN LEITCH, BRIAN ROBERT MATSUI, Washington, DC.

Before O'MALLEY, REYNA, and CHEN, Circuit Judges.

OPINION

Page 1351

O'Malley, Circuit Judge.

Netlist, Inc. (" Netlist" ) is the assignee of U.S. Patent No. 7,532,537 (" the '537 patent" ). Inphi Corporation (" Inphi" ) filed a request for inter partes reexamination[1] on June 9, 2010. The examiner rejected claims 1-9, 12-31, and 34-44 as obvious in view of the prior art. In order to overcome this rejection, Netlist amended its claims, narrowing them. Thereafter, the examiner withdrew its rejection of the claims and issued a final decision.

Inphi then filed a Notice of Appeal to the Patent Trial and Appeal Board (" PTAB" or " the Board" ), alleging, among other things, that the amendment, which introduced a negative claim limitation, failed to satisfy the written description requirement of 35 U.S.C. ยง 112, [116 U.S.P.Q.2d 2007] paragraph 1 (2006).[2] The Board issued a decision affirming the examiner's final decision declining to reject the relevant claims. Inphi Corp. v. Netlist, Inc., No. 2013-009066, 2014 WL 187535 (P.T.A.B. Jan. 16, 2014). Inphi filed a request for rehearing on February 18, 2014. The Board denied Inphi's request and affirmed its decision. Inphi Corp. v. Netlist, Inc., No. 2013-009066, 2014 WL 4180943 (P.T.A.B. Aug. 13, 2014) (" Board Decision " ). Inphi appeals from this decision. Because the Board's determination that the negative claim limitation met the requirements of § 112, paragraph 1 is supported by substantial evidence, we affirm.

Page 1352

Background

The '537 patent, entitled " Memory Module with a Circuit Providing Load Isolation and Memory Domain Translation" has an application date of January 19, 2006.[3] The invention relates to computer system memory modules, which Netlist designs and manufactures. In particular, the invention improves the performance and/or capacity of the memory modules. '537 Patent, col. 1, ll. 29-32. Conventional computer systems, such as a desktop PC or a laptop, are compatible with modular memory systems. Users may simply insert a memory module into a slot or socket in the motherboard of their personal computer. The '537 patent concerns random access memory (" RAM" ), which provides short-term storage of data for active software programs. Greater performance and/or capacity RAM leads, in general, to a better performing computer.

The memory module itself comprises a printed circuit board, on which memory devices (also known as memory chips) are mounted:

'537 Patent, Figure 16A. Figure 16A presents one side of a printed circuit board, 460. The memory devices--410, 420--of which there can be up to eighteen, are shown attached to the printed circuit board. The specification discloses multiple memory device types, including " random-access memory (RAM), dynamic random-access memory (DRAM), synchronous DRAM (SDRAM), and double-data-rate DRAM (e.g., SDR, DDR-1, DDR-2, DDR3)." Id. at col. 5, ll. 41-44.

The memory devices, therefore, can be of the Double Data Rate (" dDDR" ) Synchronous Dynamic RAM (" SDRAM" ) type. See id. at col. 36, ll. 28-31 (" In certain embodiments, the memory module 400 is a 1-GB unbuffered Double Data Rate (DDR) Synchronous Dynamic RAM (SDRAM) high-density dual in-line memory module (DIMM)." ). At issue in this appeal is a negative claim limitation Netlist introduced by amendment, limiting the claimed chip selects to exclude three particular types of signals (CAS, RAS, and bank-address signals).[4] Representative

Page 1353

claim 1, as amended, is as ...


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