Intellectual Ventures I LLC et al v. Toshiba Corporation et al
MEMORANDUM ORDER, IT IS ORDERED that Toshiba is not estopped from presenting the Fuse combination at trial, and Toshiba's request for reconsideration of claim construction of the '270 patent is denied. See Memorandum Order for further details. Signed by Judge Sue L. Robinson on 1/11/2017. (nmfn)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
INTELLECTUAL VENTURES I LLC and
INTELLECTUAL VENTURES II LLC,
TOSHIBA CORPORATION, TOSHIBA
AMERICA, INC., TOSHIBA AMERICA
ELECTRONIC COMPONENTS, INC., and
TOSHIBA AMERICA INFORMATION
) Civ. No. 13-453-SLR
At Wilmington this \\\"'"day of January, 2017, having reviewed the parties'
supplemental papers (D.I. 565, 566, 568, 569) that were submitted consistent with the
issues raised at the December 19, 2016 pretrial conference;
IT IS ORDERED, for the reasons discussed below, that Toshiba is not estopped
from presenting the Fuse combination at trial, and Toshiba's request for reconsideration
of claim construction of the '270 patent is denied.
1. Having reviewed the letters (D.I. 566, 568) and the case law submitted by the
parties, 1 I conclude that my first look at the estoppel issue was incomplete. As I now
understand the lay of the land, everyone agrees that estoppel applies to grounds for
invalidity upon which the Board instituted review in the IPR proceeding, whether or not
the Board addresses those grounds in its final decision ("instituted grounds"). I believe
that there likewise can be no dispute that estoppel does not apply to invalidity grounds
that were raised by a petitioner in an IPR, but rejected by the Board as instituted
grounds (i.e., "noninstituted grounds"). See Shaw, 817 F.3d at 1300 (a denied ground
never becomes part of the IPR and, therefore, could not have been raised during the
IPR); HP, 817 F.3d at 1347 ("noninstituted grounds do not become a part of the IPR"
and "could not be raised in the IPR; therefore "the estoppel provisions of§ 315(e)(1) do
not apply."). Which leaves us with the situation at bar, where the invalidity ground at
issue (the Fuse combination) was never raised in the IPR, but reasonably could have
been raised during the IPR ("litigation ground"). To the best of my knowledge, the
Federal Circuit has not addressed this specific fact pattern. The PTAB has. In Apotex,
the PTAB addressed two grounds, one that had been raised but not made part of the
instituted trial, and one that was known but not raised in the IPR. Estoppel applied to
the latter, but not the former. 2015 WL 5523393, at *4-5. 2
Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016);
H.P. Inc. v. MPHJ Tech. Inv., LLC, 817 F.3d 1339 (Fed. Cir. 2016); SAS Inst., Inc. v.
ComplementSoft, LLC, 825 F.3d 1351 (Fed. Cir. 2016); Precision Fabrics Group, Inc. v.
Tietex Int'/, Ltd., 2016 WL 6839394 (M.D. N.C. Nov. 21, 2016); Apotex Inc. v. Wyeth
LLC, No. IPR2015-00873, 2015 WL 5523393 (P.T.A.B., Sept. 16, 2015).
The reasoning in Precision Fabrics is not helpful, as the court held estoppel to apply to
grounds that the "PTAB did not address ... in its final decision," leaving the question of
whether these grounds were noninstituted grounds (under Shaw's reasoning, estoppel
would not apply) or simply never raised at all. 2016 WL 6839394, at *9.
2. In the absence of specific authority, it seems to me that I am left with two
options, based on different policy considerations and with very different consequences.
IV's reasoning leads to the conclusion that the PTAB is meant to be the invalidity arbiter
of first resort and, therefore, a company that seeks an IPR must bring to the PTAB's
attention every ground the company has reason to think might be relevant; otherwise, it
will be estopped from pursuing that ground in litigation. That outcome appears to be
inconsistent with all of the limitations imposed by the PTAB on IPR proceedings (e.g.,
page limits for petitions, 14 point type, and portrait-view claim charts) 3 and leaves for
trial only those references initially rejected by the PTAB. On the flip side of the coin is
Toshiba's reasoning, which leads to the conclusion that a company can play games
between the PTAB (IPR) and the courts (litigation), asserting some references in
connection with the IPR but reserving some for litigation. As I stated in my prior opinion
on this matter, that outcome does not strike me as necessarily consistent with the notion
of having a parallel administrative proceeding that is supposed to supplant litigation and
provide a faster, cheaper, better resolution to patent disputes.
3. On the whole, since it is not my place to make policy decisions, I am not
inclined to change my original decision, with the hopes that an appeal may clarify the
issue for future judges in future cases. Therefore, Toshiba is not estopped from
presenting the Fuse combination at trial.
Of course, the statute already places numerous constraints on IPR proceedings. IPR
petitions may be filed within a limited timeframe. 35 U.S.C. §§ 311 (c), 315(b). Also, the
grounds raised in IPR petitions are limited to anticipation and obviousness. 35 U.S.C.
§ 311 (b)
Reconsideration of '270 Patent Claim Construction
4. Toshiba requests reconsideration 4 of the claim construction of the term
"redundancy bus" 5 that I addressed at summary judgment. (D.I. 565) During claim
construction, Toshiba proposed that a "redundancy bus" is an "address bus that allows
for the addressing of the redundant memory cells independent of the addressing of the
primary memory cells through the primary address bus." (D.I. 183 at 2) I adopted
Toshiba's construction. (D.I. 277 at 4) At summary judgment, Toshiba argued that "the
[c]ourt's claim construction requires two address buses, a 'primary address bus' and a
separate 'redundancy bus' that is independent from the primary address bus." (D.I. 434
at 7) IV disagreed, and I observed that "the parties dispute whether the primary and
redundancy buses must be separate wires or if a multiplexed bus, i.e., a single wire,
may satisfy the claims." (D.I. 559 at 28) Based upon the arguments presented and the
claims in light of the specification, I clarified that "[i]n the '270 patent, both the address
system and the primary and redundancy buses may be multiplexed." (D.I. 559 at 29)
5. Toshiba now argues that I made a "factual mistake ... regarding the '270
patent specification's discussion of multiplexing." (D.I. 565 at 1) Specifically, Toshiba
avers that: "[t]he court's ruling is premised upon a misreading of column 10:52-65 of the
specification as teaching the use of a single multiplexed bus .... The specification
never teaches combining the primary address bus and the redundancy bus into a single
multiplexed bus." (D.I. 565 at 1-2) Here, Toshiba adds verbiage ("a single multiplexed
bus") that is not found in either my prior opinion or the specification.
IV argues that this is a request for reconsideration of a claim construction argued in
the motions for summary judgment and that Toshiba has presented no basis for
reconsideration. (D.I. 569) I agree.
Found in claims 1, 3, and 20 of the '270 patent.
6. In my memorandum opinion, I addressed the '270 patent 10:52-62, noting that
the preferred embodiments disclose a non-multiplexed address bus and a nonmultiplexed addressing scheme. (D.I. 559 at 28) In light of these disclosures in the
specification, the relevant paragraph stands out:
Alternatively, address bus 202 and redundancy address bus 301 may be
multiplexed. In this case, row address bits alone would be pipelined
through row address amplifier/buffers 401 and redundancy address
amplifiers/buffers 402 from address bus 202 and redundancy address bus
301 respectively. Similarly, in a multiplexed address system, only column
address bits would be pipelined through column address amplifiers/buffers
406 and redundancy column address amplifiers/buffers 408. In the case
of redundancy addressing, redundancy address bits to redundant rows are
pipelined along with the remaining row address bits through
buffer/amplifiers 402 and redundancy address bits to redundant columns
are pipelined along with the remaining column address bits through
('270 patent, 10:52-65) This paragraph discusses two different alternative
embodiments: bus multiplexing and address multiplexing. The word "alternatively"
prefaces a statement in the specification that the "address bus and redundancy
address bus may be multiplexed." (Id., 10:52-53) This is followed by a sentence
beginning with "[s]imilarly, in a multiplexed address system." (Id., 10:57) I cannot
conclude, in light of the second sentence, that the first sentence does not disclose
multiplexed primary and redundancy address buses. Therefore, Toshiba's request for
reconsideration is denied.
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