Crocus Technology S.A.v.New York University

Patent Trial and Appeal Board

Mar 26, 2015

10643762 (P.T.A.B. Mar. 26, 2015)

Trials@uspto.gov Paper 28
571-272-7822 Entered: March 26, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CROCUS TECHNOLOGY S.A.,
Petitioner,

v.

NEW YORK UNIVERSITY,
Patent Owner.
_______________

Case IPR2014-00047
Patent 6,980,469 B2
_______________

Before MIRIAM L. QUINN, PHILLIP J. KAUFFMAN, and
JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

IPR2014-00047
Patent 6,980,469 B2
2
I. INTRODUCTION
A. Background
On October 10, 2013, Crocus Technology S.A. (“Petitioner”) filed a
Petition (Paper 2; “Pet.”) challenging claims 1–20 and 22–35 of Patent No.
US 6,980,469 B2 (Ex. 1001; “the ’469 patent”). Petitioner relied upon the
following references and declaration:
Exhibit References and Declaration
1008 Patent No. US 5,695,864 to Slonczewski, issued Dec. 9. 1997
(“Slonczewski”)
1009 English language translation of Patent Application Publication
No. EP 1 225 593 A1 to Redon et al., published July 24, 2002
(“Redon”)
1010 Declaration of Sanjay K. Banerjee, Ph.D. (“Banerjee
Declaration”)
1011 Patent No. US 6,714,444 B2 to Huai et al., filed Aug. 6, 2002,
issued Mar. 30, 2004 (“Huai”)
1012 Patent No. US 7,006,375 B2 to Covington, filed June 6, 2003,
issued Feb. 28, 2006 (“Covington”)

On January 17, 2014, New York University (“Patent Owner”) filed a
Preliminary Response (Paper 7; “Prelim. Resp.”). In a Decision to Institute
(Paper 8; “Dec. to Inst.”) issued April 1, 2014, we
1
instituted inter partes

1
After issuance of the Decision to Institute, Judge Kauffman replaced Judge
Anderson as a member of this panel.
IPR2014-00047
Patent 6,980,469 B2
3
review of some of the challenged claims on the following grounds:
Claims Statutory Basis Applied Reference(s)
1, 5, 22, and 33 35 U.S.C. § 102(b) Slonczewski
16, 14–20, 22–
26, and 33–35
35 U.S.C. § 103(a) Redon and Slonczewski
7, 8, 11, 12, 27,
30, and 31
35 U.S.C. § 103(a) Redon, Slonczewski, and Huai
9, 10, 19, 28, and
29
35 U.S.C. § 103(a) Redon, Slonczewski, and
Covington
On July 1, 2014, Patent Owner filed a non-contingent Motion to
Amend (Paper 18; “Mot. to Amend”)), requesting cancellation of
independent claims 1 and 22 and dependent claims 5 and 33. Mot. to
Amend 1. Petitioner did not oppose the Motion to Amend. Therefore, we
grant the Motion to Amend; and, except to the extent that challenged claims
depend from independent claims 1 and 22, claims 1, 5, 22, and 33 are no
longer under consideration in this inter partes review. On July 1, 2014,
Patent Owner also filed a Patent Owner Response (Paper 17; “PO Resp.”);
and, on October 1, 2014, Petitioner filed a Reply (Paper 21; “Pet. Reply”) to
the Patent Owner Response.
Both parties requested oral argument. Papers 22 and 23. We granted
the requests for oral hearing (Paper 25), and the oral hearing was conducted
on February 10, 2014.
2

2
A transcript of the hearing is included in the record as Paper 26 (“Tr.”).
IPR2014-00047
Patent 6,980,469 B2
4
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a).
B. Related Proceedings
The ʼ469 patent is not involved in concurrent litigation or
administrative proceedings. Pet. 1; see Paper 5, 1; Paper 12, 1; Paper 16, 1;
Paper 24, 1. Pending U.S. Patent Application No. 13/264,685 and issued
Patent Nos. US 7,170,778 B2; US 7,307,876 B2; US 7,573,737 B2; US
7,911,832 B2; US 8,363,465 B2; US 8,755,222 B2; and US 8,760,915 B2
claim priority to the ’469 patent. See Paper 27, 1.
C. The ’469 Patent
The ’469 patent relates to magnetic devices “for memory cells that
can serve as non-volatile memory,” memory systems including such
memory cells, and methods for making such memory cells. See Ex. 1001,
col. 12, ll. 5–18; col. 13, ll. 9–26; col. 13, l. 60–col. 14, l. 5. Figure 4 of the
’469 patent is reproduced below.
IPR2014-00047
Patent 6,980,469 B2
5

FIGURE 4
Figure 4 is illustrative of memory cells of a magnetic device according to the
challenged claims.
Referring to Figure 4 of the ’469 patent, the memory cell of a
magnetic device is depicted including at least five layers: (1) a pinned
magnetic layer (FM1) with a fixed magnetization direction ( 1m ); (2) a free
magnetic layer (FM2) with a free, e.g., variable, magnetization direction
( 2m ); (3) a first non-magnetic layer (N1) separating the pinned magnetic
layer (FM1) and the free magnetic layer (FM2); (4) a read-out magnetic
layer (FM3) with a fixed magnetization direction ( 3m ); and (5) a second
non-magnetic layer (N2) separating the free magnetic layer (FM2) and the
read-out magnetic layer (FM3). Id. at Abstract; col. 6, ll. 36–67; Fig. 4.
Petitioner’s Figures 1A˗C are reproduced below. Pet. 4.
IPR2014-00047
Patent 6,980,469 B2
6

The process for changing the variable magnetization direction is depicted in
Figures 1A–C.
Referring to Petitioner’s Figures 1A-C, a current source supplies a
current flow that traverses the magnetic cell. Ex. 1001, col. 3, ll. 10–13, Fig.
4; see also Pet. 3 (citing Petitioner’s Fig. 1B (reproduced above)). The
Specification of the ’469 patent describes the writing of information to such
memory cells. See Ex. 1001, col. 7, l. 1–col. 8, l. 51. As the current
traverses from the pinned magnetic layer (FM1) to the free magnetic layer
(FM2), the current flow transfers spin-angular momentum to the free
magnetization layer and produces a torque (τ) on the magnetization direction
( 2m ) of the free magnetic layer (FM2). Id. at col. 4, ll. 24–25; see also
Pet. 4 (describing Petitioner’s Fig. 1B).
The torque (τ) acting on the magnetization direction ( 2m ) of the free
magnetic layer (FM2) causes the magnetization vector of the free magnetic
layer (FM2) to rotate around the direction of the demagnetization magnetic
IPR2014-00047
Patent 6,980,469 B2
7
field. Ex. 1001, col 3, ll. 20–37; Figs. 5A–E. Based on parameters of the
current, e.g., duration of current application, the rotation may be controlled,
so that the magnetization direction ( 2m ) of the free magnetic layer (FM2) is
in one of an initial and a final state, corresponding to “1” or “0,”
respectively. Id. at col. 8, ll. 1–9. The resistance across the magnetic cell is
different for each of these two states. Id. at col. 1, ll. 40–42. Consequently,
the resistance may be measured to determine the state, “1” or “0,” of the
magnetic cell. Id.
D. Status of the Claims
Of the challenged claims, claims 1, 14, and 22 are independent. As a
result of our grant of the Motion to Amend, independent claims 1 and 22, as
well as dependent claims 5 and 33, are cancelled. As to the challenged
dependent claims, claims 2–4, 6, and 8–12 depend from cancelled claim 1,
claims 15–20 and 34 depend from independent claim 14, and claims 23–31
and 35 depend from cancelled claim 22.
In view of Patent Owner’s cancellation of the challenged independent
claims 1 and 22, independent claim 14 became the focus of the parties’
arguments. See Tr. 6:4–8; 15:24–16:7. Independent claim 14 is illustrative
and is reproduced below:

14. A memory system comprising: a memory cell comprising:
a pinned magnetic layer with a magnetization vector with a
fixed magnetization direction;
a free magnetic layer with at least one magnetization vector
with a changeable magnetization direction;
IPR2014-00047
Patent 6,980,469 B2
8
a first non-magnetic layer spatially separating said free
magnetic layer and said pinned magnetic layer;
a read-out magnetic layer with a magnetization vector with a
fixed magnetization direction; and
a second non-magnetic layer that spatially separates said free
magnetic layer and said read-out magnetic layer such that the mutual
magnetic interaction between said free magnetic layer and said read-
out magnetic layer is minimized; and
an electric current source connected to said pinned magnetic
layer and said read-out magnetic layer so that an electric current can
traverse said memory cell.
Ex. 1001, col. 13, ll. 9–24 (emphasis added). Disputed limitations are
emphasized.
II. ANALYSIS
A. Claim Construction
In an inter partes review, “[a] claim in an unexpired patent shall be
given its broadest reasonable construction in light of the specification of the
patent in which it appears.” 37 C.F.R. § 42.100(b); see also Office Patent
Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) (Claim
Construction); In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL
448667 at *7 (Fed. Cir. Feb. 4, 2015) (“We conclude that Congress
implicitly adopted the broadest reasonable interpretation standard in
enacting the AIA.”). Under the broadest reasonable construction standard, a
claim term is presumed to have an ordinary and customary meaning as
would be understood by one of ordinary skill in the art in the context of the
IPR2014-00047
Patent 6,980,469 B2
9
specification. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). A patent applicant may rebut that presumption by providing a
definition of the term in the specification with reasonable clarity,
deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994). In the absence of such a definition or other considerations,
“limitations are not to be read into the claims from the specification.” In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Neither Patent Owner nor Petitioner challenges our constructions of
the terms as set forth in the Decision to Institute. Dec. to Inst. 8–14.
Claim Term Construction from Decision to
Institute
“bit of information” (Claim 6) “a unit of information equivalent to
the result of a choice between only
two possible alternatives, represented
as 0 and 1” Id. at 9–10.
“so that an electric current can
traverse said memory cell” (Claim
14)
“so that an electric current is able to
traverse said memory cell” Id. at
10–11.
“a means for measuring the
resistance between said pinned
magnetic layer and said read-out
magnetic layer” (Claim 16)
“a voltmeter” and equivalents thereof
Id. at 11–13.
“voltmeter” (Claims 17 and 26) “any instrument for the measurement
of potential difference between two
points in volts” Id. at 13–14.

Consequently, the constructions of those terms are adopted for purposes of
this Final Written Decision. In light of the parties’ arguments in the Patent
Owner Response and Petitioner’s Reply and during the oral hearing, it is
IPR2014-00047
Patent 6,980,469 B2
10
appropriate for us to construe certain additional terms.
1. “a first non-magnetic layer” and “a second non-magnetic layer”
(Claims 1, 14, 22)
We construe the terms “a first non-magnetic layer” and “a second
non-magnetic layer” according to their ordinary and customary meanings as
describing separate layers of material that are not magnetic in the recited
magnetic devices, memory cells, and methods for making memory cells.
The Specification of the ’469 patent states that such non-magnetic layers
may be comprised of metals or insulators. Ex. 1001, col. 1 ll. 21–23; col. 4,
ll. 54–56 (“For the nonmagnetic layers, materials include (but are not limited
to) Cu, Cr, Au, Ag, and Al.” (emphasis added)); col. 11, ll. 40–43 (Referring
to Figure 10, the nonmagnetic layer I2 may be an insulating layer made from
a material such as Al2O3,). Other claims of the ’469 patent also can be
valuable sources of enlightenment as to the meaning of a term of a
challenged claim. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996). Although we did not institute inter partes review with
respect to claims 13 and 32, these claims further limit the recitations of
“non-magnetic layers” in claims 1 and 22 to layers “comprised of at least
one member of the group consisting of Cu, Cr, Au, Ag, and Al.” See, e.g.,
id. at col. 13, ll. 6–8. Thus, we construe “a first non-magnetic layer” and “a
second non-magnetic layer” to mean a layer that is not magnetic and that
may comprise metals or insulators.
IPR2014-00047
Patent 6,980,469 B2
11
2. “mutual magnetic interaction” (Claims 1, 14, and 33–35)
Although both parties argued the significance of “mutual magnetic
interaction” to the analysis of the grounds for unpatentability (Pet. 20–21,
22; PO Resp. 26–30; Pet. Reply 2–6), neither party proposes a construction
for this term (Tr. 19:5–20:9; 29:23–30:6). As a first step in our analysis,
although the Specification of the ’469 patent does not define the term
“mutual magnetic interaction,” we understand the ordinary and customary
meaning within the context of the Specification to mean the magnetically-
mediated interaction of two or more magnets on each other, where both
magnets are affected by the interaction, for example, the exchange of spin
polarized electrons between magnetic layers across a separating layer. See
Ex. 1038, 41:1–42:1.
Patent Owner’s declarant, Dr. Edward Murdock, testified that mutual
magnetic interaction may involve different types of electron exchange
couplings. Ex. 2004 ¶¶ 121–129. In particular, Patent Owner’s declarant
described a “static” exchange coupling that occurs when two magnetic
layers are separated by a thin metallic layer, e.g., a conductor, that is so thin
that pinholes can form allowing current to flow between magnetic layers.
Id. ¶¶ 120–121; see PO Resp. 28. According to Patent Owner’s declarant, a
“conventional” exchange coupling is different from the “static” exchange
coupling. Such a “conventional” exchange coupling may occur “even when
the spacer layer is thick enough to prevent pinholes from forming.” Id.
¶ 122. Further, Patent Owner’s declarant testified that that “the exchange
coupling between two magnetic layers separated by an insulating layer
IPR2014-00047
Patent 6,980,469 B2
12
results in direct exchange coupling, not indirect exchange coupling.” Id.
¶ 126. Patent Owner’s declarant explains that, with respect to the layer
separating two magnetic layers, there is an oscillating decrease in the
exchange coupling with the increasing thickness of a non-magnetic,
conducting layer and an exponential decrease in the exchange coupling with
the increasing thickness of a non-magnetic, insulating layer. Id. ¶¶ 127–128
(reproducing Ex. 2007, Figs. 4 and 5); see also Ex. 2007, 411 (describing the
oscillatory nature of couplings across non-magnetic, metallic layers). Thus,
regardless of the composition of the non-magnetic separating layer, Patent
Owner’s declarant testified that mutual magnetic interaction decreases with
the increasing thickness of separating layer.
Petitioner’s declarant, Dr. Sanjay Banerjee, testified that “[t]he
interaction of a fixed layer with a free layer is due to the propagation of spin
polarized electrons between ferromagnetic films across the interlayer.”
Ex. 1010 ¶ 44 (citing Ex. 1033, 3). Moreover, Petitioner’s declarant
explained that there is no clear distinction between the effects of non-
magnetic layers comprised of metals and of those comprised of insulators,
and that conductivity and resistivity are reciprocal characteristics. Ex. 2005,
23:8–28:4.
Neither party suggests that either the claim language or the
Specification of the ’469 patent requires that “mutual magnetic interaction”
is construed to exclude a particular type of exchange coupling. Tr. 19:23–
20:9; 29:19–22; see Pet. Reply 2 n.2 (citing Ex. 1038, 39:23–40:20; Ex.
IPR2014-00047
Patent 6,980,469 B2
13
1010 ¶¶ 44, 74, 232, 238). Further, except for certain dependent claims,
3

independent claim 14 does not specify whether the non-magnetic layer
separating the free magnetic layer from the read-our magnetic layer is a
composed of conducting (metal) or insulating material. See Tr. 8:13–23;
16:11–17:20. Accordingly, we conclude that the phrase “mutual magnetic
interaction,” under the broadest but reasonable interpretation in light of the
Specification of the ’469 patent, does not exclude any particular type of
exchange coupling, and means “the effect between two magnetic layers on
each other,” such as, for example, an exchange of spin polarized electrons
between magnetic layers across a separating layer.

III. ASSERTED GROUNDS OF UNPATENTABILITY
A. Anticipation by Slonczewski
We instituted inter partes review of claims 1, 5, 22, and 33 of the ’469
patent under 35 U.S.C. § 102(b) as anticipated by Slonczewski. Dec. to
Inst. 15–22, 30. As noted above, Patent Owner has filed an unopposed and
non-contingent Motion to Amend, requesting cancellation of claims 1, 5, 22,
and 33 of the ’469 patent. Mot. to Amend 1. Therefore, because we grant
the non-contingent and unopposed Motion to Amend, this ground for
unpatentability now is moot.

3
See supra Sec. II.A.1. (discussing claims 13 and 32 of the ’469 patent).
IPR2014-00047
Patent 6,980,469 B2
14
B. Obviousness Over Redon and Slonczewski
1. Overview
Petitioner argues that claims 2–4, 6, 14–20, 23–26, 34, and 35 are
unpatentable under 35 U.S.C. § 103(a) as rendered obvious over Redon and
Slonczewski. Pet. 50–51. A patent claim is unpatentable under 35 U.S.C.
§ 103(a) if the differences between the claimed subject matter and the prior
art are “such that the subject matter[,] as a whole[,] would have been
obvious at the time the invention was made to a person having ordinary skill
in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on
the basis of underlying factual determinations, including: (1) the scope and
content of the prior art; (2) any differences between the claimed subject
matter and the prior art; (3) the level of skill in the art; and (4) objective
evidence of nonobviousness, i.e., secondary considerations.
4
Graham v.
John Deere Co., 383 U.S. 1, 17–18 (1966).
2. Person of ordinary skill in the art
Petitioner’s declarant proposes a definition for a person of ordinary
skill in the art. Ex. 1010 ¶ 18. Patent Owner’s declarant proposes an
alternative, but overlapping, definition. Ex. 2004 ¶ 24. From our review of
the applied references, we conclude that Patent Owner’s declarant proposes
too narrow a field of work experience for a person of ordinary skill in the

4
Patent Owner does not argue that secondary considerations are present,
which would render the challenged claims patentable over the applied
references.
IPR2014-00047
Patent 6,980,469 B2
15
art. Therefore, for purposes of this decision, a person of ordinary skill in the
art is one who has a Bachelor of Science degree in physics, electrical
engineering, or a related field with an additional two years of graduate level
study in physics, electrical engineering, or a related field, or at least two
years of experience working with or researching magnetic memory
technology.
3. Petitioner’s arguments
Referring to its claim charts, Petitioner argues that Redon teaches or
suggests the majority of the limitations of claims 2–4, 6, 14–20, 23–26, 34,
and 35. Pet. 29–50. In particular, referring to Redon’s Figure 2, Petitioner
argues that Redon teaches or suggests a magnetic device having three
magnetic layers separated by two non-magnetic layers and a current source
for supplying current to traverse the magnetic device. Pet. 31 (depicting an
annotated version of Redon’s Fig. 2); see also Ex. 1009 ¶ 21.
Redon’s Figure 2 is reproduced below.

IPR2014-00047
Patent 6,980,469 B2
16
Redon’s Figure 2 depicts a spin-polarized magnetic device. Ex. 1009 ¶¶ 19,
21˗23. The depicted magnetic device includes magnetic polarizing layer 20,
e.g., the fixed magnetic layer, the magnetic field of which is perpendicular to
the plane of the layer (id. ¶¶ 22, 32), and free magnetic layer 16 (id. ¶¶ 4,
21). See Pet. 29–30. Layers 16 and 20 are separated by metallic separating
layer 18, e.g., first non-magnetic layer. Pet. 29–30 (citing Ex. 1009 ¶ 22;
Ex. 1010 ¶¶ 102–117). Redon further depicts that trapped (e.g., read-out)
layer 12 includes two magnetic layers 121 and 123, separated by insulating
layer 122. Ex. 1009 ¶¶ 19, 21. Trapped layer 12 is separated from free layer
16 by insulating layer 14, e.g., a second non-magnetic layer. Id. ¶ 21.
With respect to independent claim 14, the claim charts set forth in the
Petition demonstrate the correspondence of the teachings of Redon to the
limitations of those claims. Pet. 34–36 (claim 1), 40–42 (claim 14), and 45–
46 (claim 22). Claim 14 further recites “an electric current source connected
to said pinned magnetic layer and said read-out magnetic layer so that an
electric current can traverse said memory cell.” Ex. 1001, col. 13, ll. 24–26.
Referring to Figure 2, Redon teaches that the magnetic device is
disposed between power supply 24 and a current switching means, e.g.,
transistor 26. Ex. 1009 ¶ 22. Thus, current may traverse Redon’s magnetic
device and realign the magnetization of free magnetic layer 16. Pet. 42
(citing Ex. 1009 ¶¶ 12, 16, 22); see also Ex. 1010 ¶ 159 (discussing Ex.
1009, Figs. 3A, 3B, 6A, and 6B). Claim 24, which depends from claim 22,
recites similar limitations to the quoted limitations of claim 14, and the
limitations of the other dependent claims, challenged on these grounds,
IPR2014-00047
Patent 6,980,469 B2
17
allegedly are taught by Redon. Pet. 36–39 (claims 2–4, 6), 42-45 (claims
15–20), and 46–50 (claims 23–25 and 33–35).
Petitioner acknowledges, however, that Redon may not suggest
modifying its magnetic device “to include a non-magnetic layer in a
magnetic device to spatially separate a fixed layer from a free layer such that
the mutual magnetic interaction between the free magnetic layer and the
fixed layer (i.e., pinned magnetic layer or the read-out magnetic layer) be
minimized,” as recited in independent claim 14. Pet. 50; see Pet. Reply 2.
Petitioner argues, however, that Slonczewski teaches this limitation, and that
a person of ordinary skill in the relevant art would have reason to combine
the teachings of Redon and Slonczewski to achieve this limitation of the
recited inventions. Id. at 51; see Pet. Reply 6–9.
Slonczewski’s Figure 6 is reproduced below:
IPR2014-00047
Patent 6,980,469 B2
18

Figure 6 depicts a three terminal device, i.e., terminals A, C, and E, based on
reflection-mode spin transfer. Ex. 1008, col. 2, ll. 6–7.
In particular, Figure 6 depicts a device structure having magnetic
layers F1, F2, and F3 (id. at col. 8, ll. 28–32), conducting terminal layers A,
B, and E (id. at col. 10, ll. 50 and 56–59; col. 11, l. 11); and a non-magnetic
layer D made from alumina (AL2O3) or another insulator (id. at col. 11, ll. 1–
4). Petitioner contends that layer F1 discloses “a pinned magnetic layer with
a magnetization vector with a fixed magnetization direction,” i.e., M1. Pet.
21 (referring to claim chart for claim 1). Similarly, Petitioner contends that
layer F2 allegedly discloses “a free magnetic layer with at least one
magnetization vector with a changeable magnetization direction,” i.e., M2;
and that layer F3 allegedly discloses “a read-out magnetic layer with a
IPR2014-00047
Patent 6,980,469 B2
19
magnetization vector with a fixed magnetization direction,” i.e., M3. Id. at
2122 (referring to claim chart for claim 1). Further, Petitioner contends
that layers B and D, respectively, disclose claim 14’s recitation of “a first
non-magnetic layer spatially separating said free magnetic layer and said
pinned magnetic layer” and “a second non-magnetic layer that spatially
separates said free magnetic layer and said read-out magnetic layer.” Id. at
2122.
Regardless of whether it is a conductor or an insulator, Petitioner
argues that, if the layer separating the magnetic free layer from the magnetic
read-out layer is sufficiently thick, Slonczewski teaches that the mutual
magnetic interaction between these layers may be reduced or minimized.
Ex. 1008, Abstract; col. 1, ll. 33–36; col. 4, ll. 60–65; see Tr. 10: 15–20.
Further, because layer D is a sufficiently thick insulating layer, Petitioner
argues that layer D minimizes the mutual magnetic interaction between the
free magnetic layer, i.e., layer F2, and the read-out magnetic layer, i.e., layer
F3. Ex. 1008, col. 8, ll. 16–21; see Pet. 21; Tr. 11:12–17. Referring to
Figure 6, Slonczewski explains that, “[i]n essence, magnet F3 behaves as a
spinanalyzer of the electrons passing through magnet F2 and spacer D.”
Ex. 1008, col. 8, ll. 58–60 (emphasis added)
In particular, Petitioner argues that Slonczewski teaches that “[t]he
electrons flow between the fixed and free ferromagnets through a non-
magnetic metallic spacer which is thick enough to make the static inter-
magnetic exchange coupling negligible.” See Pet. 18 (quoting Ex. 1008,
Abstract); see Pet. Reply 3. Moreover, Slonczewski teaches that the
IPR2014-00047
Patent 6,980,469 B2
20
thickness of the layer intervening between the fixed and free magnetic layers
must be sufficient to prevent the exchange of electrons between the magnetic
layers. Ex. 1008, col. 4, ll. 60–64; see also id. at col. 8, ll. 16–21
(insufficient thickness may result in “accidental bridges”).
In addition, Petitioner argues that a person of ordinary skill in the art
would have had reason to modify the teachings of Redon in view of the
teachings of Slonczewski because both references are in the same field of
endeavor, e.g., stacked magnetic memory devices; both are directed to
solving the same problem, namely “creating a magnetic device that allows
for fast data storage in high density memory systems”; both involve devices
employing spin torque transfer; and both describe devices sharing the same
structures. Tr. 9:24–10:9: see Pet. 51 (citing Ex. 1009 ¶¶ 1, 15; Ex. 1008,
col. 1, ll. 5–11). Further, Redon expressly states its desire to improve upon
the magnetic devices, such as those taught by Slonczewski. Ex. 1009 ¶¶ 9–
10; see Tr. 10:5–9. As the U.S. Supreme Court explained, “if a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.” KSR, 550 U.S. at 417.
IPR2014-00047
Patent 6,980,469 B2
21
4. Patent Owner’s response
Patent Owner disagrees and contends that a person of ordinary skill in
the art would not have reason to combine Redon and Slonczewski because,
first, Redon and Slonczewski have different structures and solve different
problems and, second, Slonczewski expressly teaches against using Redon’s
structure with Slonczewski’s recited invention. PO Resp. 5.
a. Different structures
Referring to Slonczewski’s Figures 1 and 6, Patent Owner contends
that Slonczewski teaches two distinct structures for the magnetic device. Id.
at 6–10. Slonczewski’s Figure 1 is reproduced below:

Figure 1 depicts magnetic device 10 comprising five conducting layers,
including three non-magnetic, metallic layers A–C and two magnetic layers
F1 and F2. Ex. 1008, col. 1, ll. 58–60; col 2, ll. 57–61. “Layer F1 is a fixed
or pinned magnetic layer, and layer F2 is a free magnetic layer.” PO
IPR2014-00047
Patent 6,980,469 B2
22
Resp. 6–7 (citing Ex. 2004 ¶ 31). Magnetic device 10 operates in the
transmission mode with current I, generated by Current Supply, passing
through all five layers of device 10 and changing the direction of magnetic
vector M2 in layer F2. See PO Resp. 6–7.
Patent Owner contends, however, that the magnetic devices depicted
in Slonczewski’s Figures 5 and 6 operate in the reflection mode and contain
a layer that reflects current passing through the stacked layers, so that
current is not transmitted through each of the stacked layers. Id. at 7–10.
Slonczewski’s Figure 5 is reproduced below:

In Figure 5, a current source passes current I to layer A and receives
returning current through layer C. Ex. 1008, col. 6, ll. 37–39. Electron-
wave trajectories 1 and 2 are reflected from magnetic layer F2, due to the
IPR2014-00047
Patent 6,980,469 B2
23
presence of “air or other insulator” lying above layer F2. Id. at col. 6, l. 64–
col. 7, l. 2.
Referring to Slonczewski’s Figure 6, reproduced above, Patent Owner
contends that the depicted embodiment shows a magnetic valve, which
includes insulating layer D lying between magnetic layers F2 and F3 and
non-magnetic metallic layer E lying above magnetic layer F3. PO Resp. 8
(citing Ex. 2004 ¶¶ 37, 39); see Ex. 1008, col. 8, ll. 45–55. Patent Owner
contends that “[t]he insulating layer in these devices reflects switching
current through the conducting layers. Specifically, switching current flows
through layers A, F1, B, and C in order to set the magnetic vector of the free
layer.” Id. (citing Ex. 2004 ¶ 38). Thus, Patent Owner concludes that, “[i]n
all of Slonczewski’s devices, the switching current only flows through good
conductors, and not through any insulator.” Id. at 9 (emphasis omitted,
italics added; citing Ex. 2004 ¶ 45). Therefore, Patent Owner contends that
reflection mode devices, such as those taught by Slonczewski’s Figure 6,
would not be operated in a transmission mode, as taught by Redon’s
Figure 2. Id. at 17–21, 26–28.
Nevertheless, Petitioner argues that claim 14 of the ’469 patent does
not specify whether the layer between the free magnetic layer and the read-
out magnetic layer is a conducting layer or an insulating layer. Pet.
Reply 4–5; Tr. 8:13–23; 16: 11–18; but see Tr. 16:19–17:4 (Patent Owner
asserts that the second non-magnetic layer “could not be an insulator”
because final clause of claim 14 requires that the current traverses the
magnetic device.). As explained by Petitioner’s declarant,
IPR2014-00047
Patent 6,980,469 B2
24
Solids are characterized by what is known as the conductivity
of the material, or the reciprocal of that, which is called the
resistivity of the material. So if you categorize all solid, at one
extreme you have very conductive materials, such as metals
with a very low resistivity, and at the other extreme you have
very low conductive materials which is a very high resistivity.

Ex. 2005, 24:7–15. Thus, according to Petitioner’s declarant, insulators
have conductive properties, and “this distinction between metals, normal
metals, and insulators in this context is really a difference of degree of the
amount of conductance of the material.” Id. at 27:7–10; see id. at 25:2–26:3.
Furthermore, Petitioner’s declarant states that insulators are designed with a
thickness that allows for quantum mechanical tunneling, which results in
conductance through the insulator. See id. at 27:1728:4. These
explanations are consistent with Slonczewski’s teaching that electrons pass
through insulating layer D and magnet F3 of the magnetic device, and are
detected in conducting layer E, as a result of magnetic tunneling valve
(“MTV”) or giant magnetoresistance (“GMR”). Ex. 1008, col. 8, ll. 56–62.
Therefore, we are not persuaded that Slonczewski’s Figure 6 teaches that all
current must be reflected from insulating layer, such as insulating layer D.
b. Different problems
Patent Owner further contends that Slonczewski teaches that its
magnetic devices seek to achieve low energy dissipation. PO Resp. 10–11
(citing Ex. 1008, col. 8, ll. 1–25); see Ex. 2004 ¶ 45. Patent Owner contends
that utilizing an insulating layer in the switching current’s path, for example,
as the second non-magnetic layer between the free magnetic layer and the
IPR2014-00047
Patent 6,980,469 B2
25
read-out magnetic layer, would increase the level of energy dissipation. PO
Resp. 10–12. In particular, Slonczewski teaches that, unless the layer is
sufficiently thick, conventional exchange coupling may occur between the
free magnetic layer and the read-out magnetic layer. Ex. 1008, col. 8, ll. 13–
21. Because using an insulating layer in a magnetic device operating in the
transmission mode would increase the resistance R, the power dissipation
measured by the equation: P=I
2
R would be increased by adding an insulating
layer for a constant current I (PO Resp. 13–14 (citing Ex. 2002, 6996; Ex.
2004 ¶ 57)) and “would not be practiced in any of the devices made possible
by [Slonczewski’s] invention” (Ex. 1008, col. 8, ll. 23–25). See PO Resp.
11 (citing Ex. 2004 ¶¶ 54, 66); see also Ex. 1008, col. 11, l. 65–col. 12, l. 4
(discussing transmission mode and reflection mode applications).
Independent claim 14 does not describe that the “second non-
magnetic layer” as a layer comprised of a metal (a conductor) or an
insulator. See supra Sec. II.A.1.; Ex. 1001, col. 13, ll. 19–23; Tr. 8:13–23.
Petitioner relies on Slonczewski to teach that either a conducting layer or an
insulating layer of appropriate thickness would cause a minimization of
mutual magnetic interaction. Pet. Reply 2; Tr. 7:21–23; 10:15–20.
Petitioner further argues that Redon, as modified in view of
Slonczewski, does not eliminate the benefit of low power dissipation. Pet.
Reply 12–14; but see PO Resp. 26 (“Redon’s devices eliminate the benefit
of low power dissipation that Slonczewski was seeking.”). Patent Owner’s
declarant testifies, however, that Slonczewski describes the situation in
which current is unchanged, but resistance is reduced. Ex. 1038, 96:8–
IPR2014-00047
Patent 6,980,469 B2
26
97:16; see also PO Resp. 14 (“With constant current, the resistance of the
device governs power dissipation.”). Each party’s declarant agrees,
however, that the two variable equation, P=I
2
R, quantifies power dissipation.
Ex. 1038, 96:8–15; Ex. 2005, 73:13–19; see Ex. 1008, col. 8, ll. 6–9.
Redon discloses that its magnetic device employs a low current
density and describes how this low current density affects power dissipation
in Redon’s device. Pet. Reply 13 (citing Ex. 1009 ¶¶ 25, 27, 35, 36).
Moreover, Redon also teaches the benefits of reducing resistance for
reducing power dissipation. In particular, Redon teaches that, in known
magnetic devices, “the stacking is formed by all electrically conducting
layers, in order to limit power dissipated.” Ex. 1009, ¶ 9 (emphasis added);
see Ex. 2005, 24:7–15 (discussing the relationship between conductivity and
resistivity). Petitioner argues that because power dissipation is determined
by both current I and resistance R, a reduction in current or a reduction in
resistance, both of which are taught by Redon, may lower power dissipation.
Id.; see Tr. 14:1–10 (changes in current have a greater effect on power
dissipation than proportional changes in resistance). We agree.
Consequently, we are not persuaded by Patent Owner that Redon and
Slonczewski are directed to different problems in the area of power
dissipation.
c. Teaching away
As Patent Owner correctly notes, “[a] reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
IPR2014-00047
Patent 6,980,469 B2
27
in a direction divergent from the path that was taken by the applicant.” PO
Resp. 23 (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). In
particular, Patent Owner argues (1) that Slonczewski teaches away from its
combination with Redon, as proposed by Petitioner; (2) that the teachings of
Redon are not an improvement on the teachings of Slonczewski; and (3) that
the teachings of Slonczewski, upon which we relied in our Decision to
Institute, are not applicable to Redon. Id. at 23–29. For the reasons that
follow, we are not persuaded that Slonczewski teaches away from Redon.
As discussed above, Patent Owner contends that Slonczewski teaches
that the switching current flowing in a magnetic device, such as that depicted
in Slonczewski’s Figure 6, does not flow through an insulating layer, such as
insulating layer D. Id. at 23. In particular, Patent Owner contends that low
energy dissipation is a goal of Slonczewski’s claimed magnetic devices and
that Slonczewski teaches that such low energy dissipation is achieved by
allowing the switching current to flow “only through conducting layers.” Id.
at 24 (citing Ex. 2004 ¶ 47). Further, Patent Owner contends that
Slonczewski teaches that, because inserting an insulating layer into a stack
of otherwise conducting layers would result in large energy dissipation, this
structure “would not be practiced in any devices made possible by the
[Slonczewski’s] invention.” Id. (emphasis omitted; quoting Ex. 1008, col. 8,
ll. 24–25); see Ex. 2004 ¶¶ 45–67.
It is not enough for Patent Owner to demonstrate that there are
differences between Redon and Slonczewski to show that the references
teach away from Petitioner’s proposed combination. See In re Beattie, 974
IPR2014-00047
Patent 6,980,469 B2
28
F.2d 1309, 1312–13 (Fed. Cir. 1992). Nevertheless, Patent Owner
misunderstands Petitioner’s reliance on the teachings of Slonczewski in
combination with those of Redon.
Petitioner is not relying on the modification of Redon to include an
insulating layer, as taught by Slonczewski, in order to achieve the magnetic
devices, memory cells, and methods for making memory cells recited in the
challenged claims of the ’469 patent. Pet. Reply 9–10. Instead, Petitioner is
relying on Slonczewski “for the limited teaching that a non-magnetic layer
(like the first and second non-magnetic layers of Redon) would minimize the
mutual magnetic interaction between any two magnetic layers (including the
free magnetic layer, the read-out magnetic layer, and the pinned magnetic
layer in the device of Redon).” Id. (citing Pet. 18–21, 22, 26–28, 50–51);
see id. at 2–4; see also Tr. 6:4–15 (“We’re only really here to discuss one
issue and I’d like to talk about that issue in reference to Claim 14 . . . , and
that one issue is this fundamental concept that when a non-magnet is placed
between two magnets, you minimize the mutual magnetic interaction
between those two magnets.”).
Petitioner makes clear that this teaching does not depend on whether
the non-magnetic layer is a conductor or an insulator. Pet. Reply 4; Tr.
7:21–23. Moreover, Patent Owner does not identify any persuasive
evidence in Slonczewski or elsewhere that shows that a person of ordinary
skill in the art would be discouraged or diverted from applying this teaching
of Slonczewski to the teaching of Redon. Pet. Reply 10; see In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004) (If a reference discloses a different
IPR2014-00047
Patent 6,980,469 B2
29
solution to a similar problem, it does not teach away from the claimed
subject matter unless the reference also criticizes, discredits or otherwise
discourages the solution claimed.). Although Slonczewski might not use an
insulating layer in its claimed transmission mode embodiments, this is not
sufficient evidence that a person of ordinary skill in the art would not apply
other teachings of Slonczewski to those of Redon. See PO Resp. 24–25; Pet.
Reply 10–11.
Patent Owner’s other teaching away contentions equally are
unpersuasive. Patent Owner contends that Redon does not suggest that one
of its goals is to improve upon the devices taught by Slonczewski. PO Resp.
25–26. Nevertheless, as Petitioner points out, Redon identifies
“inconveniences” resulting from the design of Slonczewski’s magnetic
devices. Pet. 51 (citing Ex. 1009 ¶ 9); Pet. Reply 9. We are persuaded that,
based on the statement regarding Slonczewski in Redon, a person of
ordinary skill in the art would have sufficient reason to consider and
combine relevant teachings of Slonczewski to the teachings of Redon. Pet.
Reply 9.
Patent Owner also contends that the teachings of Slonczewski, upon
which we relied in our Decision to Institute, are inapplicable to Redon. PO
Resp. 26–30. In particular, Patent Owner contends that the magnetic
exchange coupling between two magnetic layers separated by a non-
magnetic layer produces an oscillating and declining function with respect to
the increasing thickness of a non-magnetic, conducting layer (PO Resp. 29
(citing Ex. 2007, Fig. 4)) and an exponentially declining function with
IPR2014-00047
Patent 6,980,469 B2
30
respect to the increasing thickness of a non-magnetic, insulating layer (id.
(citing Ex. 2007, Fig. 5)). Patent Owner contends that a person of ordinary
skill in the art would understand that these functions differ based on the
composition of the separating layer. Id.
Nevertheless, Petitioner relies on the decline in the mutual magnetic
interaction, rather than whether it is oscillating or exponential, in combining
the teachings of Redon and Slonczewski. Pet. 18, 50–51; Pet. Reply 2–4.
Further, we note that the challenged claims do not specify either the
composition of the second non-magnetic layer (see supra Sec. II.A.1) or
whether the mutual magnetic interaction is minimized exponentially or as a
result of oscillations (see supra Sec. II.A.2). Therefore, we are not
persuaded by Patent Owner’s teaching-away arguments.
In view of the foregoing discussion, we are persuaded that Petitioner
has demonstrated by a preponderance of the evidence that Redon and
Slonczewski would have rendered obvious claims 2–4, 6, 14–20, 23–26, 34,
and 35 of the ’469 Patent.
C. Obviousness Over Redon, Slonczewski, and Huai
Petitioner argues that claims 7, 8, 11, 12, 27, 30, and 31 are
unpatentable under 35 U.S.C. § 103(a) as rendered obvious over Redon,
Slonczewski, and Huai. Pet. 51–57. We have reviewed Petitioner’s claim
charts demonstrating that all of the additional limitations of claims 7, 8, 11,
12, 27, 30, and 31 are taught or suggested by Huai. See Pet. 54–57. Further,
we have reviewed Petitioner’s arguments that a person of ordinary skill in
the relevant art would have had reason to combine the teachings of Huai
IPR2014-00047
Patent 6,980,469 B2
31
with those of Redon and Slonczewski to achieve the apparatus and methods
of the’469 patent recited in claims 7, 8, 11, 12, 27, 30, and 31. Id. at 52–54;
see KSR, 550 U.S. at 417.
Patent Owner relies only on its arguments and evidence contesting the
combination of Redon and Slonczewski to overcome Petitioner’s arguments
and evidence with respect to this ground for unpatentability.
5
Pet. Reply 14.
Therefore, in view of the foregoing discussion of the combination of the
teachings of Redon and Slonczewski, we are persuaded that Petitioner has
demonstrated by a preponderance of the evidence that Redon, Slonczewski,
and Huai would have rendered obvious claims 7, 8, 11, 12, 27, 30, and 31 of
the ’469 patent.
D. Obviousness Over Redon, Slonczewski, and Covington
Petitioner argues that claims 9, 10, 19, 28, and 29 are unpatentable
under 35 U.S.C. § 103(a) as rendered obvious over Redon, Slonczewski, and
Covington. Pet. 57–60. We have reviewed Petitioner’s evidence that
Covington teaches of suggests all of the additional limitations of claims 9,
10, 19, 28, and 29. Pet. 57–60. We also have reviewed Petitioner’s
evidence and arguments that a person of ordinary skill in the relevant art
would have had reason to combine the teachings of Covington with those of
Redon and Slonczewski to achieve the apparatus and methods of the’469

5
In our Scheduling Order (Paper 9, 2), we cautioned Patent Owner that
any arguments for patentability not raised in the Patent Owner Response will
be deemed waived.
IPR2014-00047
Patent 6,980,469 B2
32
patent recited in claims 9, 10, 19, 28, and 29. Pet. 60; see KSR, 550 U.S. at
417.
Patent Owner relies only on its arguments and evidence contesting the
combination of Redon and Slonczewski to overcome Petitioner’s arguments
and evidence with respect to this ground for unpatentability. Pet. Reply 14.
Therefore, in view of the foregoing discussion of the combination of the
teachings of Redon and Slonczewski, we are persuaded that Petitioner has
demonstrated by a preponderance of the evidence that Redon, Slonczewski,
and Covington would have rendered obvious claims 9, 10, 19, 28, and 29 of
the ’469 patent.
IV. CONCLUSION
As noted above, we grant Patent Owner’s Motion to Amend
requesting cancellation of claims 1, 5, 22, and 33 of the ’469 patent. Based
on the foregoing discussion, we conclude that Petitioner has demonstrated
by a preponderance of the evidence that claims 2–4, 6–12, 14–20, 23–31, 34,
and 35 are unpatentable under 35 U.S.C. § 103(a) over Redon and
Slonczewski, alone or in combination with Huai or Covington.
V. ORDER
In consideration of the foregoing, it is
ORDERED that Patent Owner’s Motion to Amend cancelling claims
1, 5, 22, and 33 is granted;
FURTHER ORDERED that Petitioner has shown by a preponderance
IPR2014-00047
Patent 6,980,469 B2
33
of the evidence that claims 2–4, 6–12, 14–20, 23–31, 34, and 35 of the
’469 patent are unpatentable on the following grounds:
A. Claims 2–4, 6, 14–20, 23–26, 34, and 35 under 35 U.S.C. § 103(a) as
unpatentable over Redon and Slonczewski;
B. Claims 7, 8, 11, 12, 27, 30, and 31 under 35 U.S.C. § 103(a) as
unpatentable over Redon, Slonczewski, and Huai; and
C. Claims 9, 10, 19, 28, and 29 under 35 U.S.C. § 103(a) as unpatentable
over Redon, Slonczewski, and Covington; and
FURTHER ORDERED that, because this is a final decision, parties to
the proceeding seeking judicial review of the decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

IPR2014-00047
Patent 6,980,469 B2
34
PETITIONER:

John M. Caracappa
Rose Acoraci
Scott Richey
STEPTOE & JOHNSON LLP
jcaracap@steptoe.com
racoraci@steptoe.com
srichey@steptoe.com
469IPR@steptoe.com

PATENT OWNER:
George E. Quillin
Troy D. Smith
FOLEY & LARDNER LLP
gquillin@foley.com
tdsmith@foley.com