Ex Parte 7289386 et al

Patent Trials and Appeals Board

Feb 24, 2015

95000546 - (R) (P.T.A.B. Feb. 24, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,546 05/11/2010 7289386 19473-0052RX1 8688
79141 7590 08/27/2015
The Law Office of Jamie Zheng, Ph.D Esq.
P.O. Box 60573
Palo Alto, CA 94306
EXAMINER
PEIKARI, BEHZAD
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/27/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,577 10/20/2010 7289386 17730-3 7888
79141 7590 08/27/2015
The Law Office of Jamie Zheng, Ph.D Esq.
P.O. Box 60573
Palo Alto, CA 94306
EXAMINER
PEIKARI, BEHZAD
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/27/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE INC.
’546 Requester,
1
Respondent, and Cross-Appellant

and

SMART MODULAR TECHNOLOGIES
’577 Requester and Respondent

v.

NETLIST, INC.
Patent Owner, Appellant, and Cross-Respondent
____________

Appeal 2014-007777
Inter partes Reexamination Control No. 95/000,546 & 95/000,577 (merged)
United States Patent 7,289,386
Technology Center 3900
____________

Before JOHN A. JEFFERY, MARC S. HOFF,
2
and KEVIN F. TURNER,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

1
We identify each Requester in the manner indicated on page 1 of our
decision dated February 25, 2015.
2
Judge Hoff replaces Judge Weinberg in the current panel.
Appeal 2014-007777
Reexamination Control No. 95/000,546 & 95/000,577 (merged)
Patent US 7,289,386 B2

2

DECISION ON REQUEST FOR REHEARING
Patent Owner requests rehearing of the decision dated
February 25, 2015 (“Dec.”), where another panel of this Board affirmed the
Examiner’s decision to reject claims 38, 48, and 56–58 in the above-
identified inter partes reexamination.
3
Request for Rehearing filed March
26, 2015 (“Req.”). Both Requesters challenge the asserted basis for the
request in comments filed April 24, 2015 (“’577 Requester Comments”) and
April 27, 2015 (“’546 Requester Comments”), respectively. For the reasons
noted in Requesters’ comments, we deny the request to modify the earlier
decision.
In the Request, Patent Owner contends that we misapprehended and
overlooked the evidentiary record and, specifically, that the Board allegedly
overlooked (1) the standardized context of Amidi’s serial presence detect
(SPD) and its underlying design considerations (Req. 2–5); (2) significant
problems with the proposed solutions for modifying Amidi to handle back-
to-back adjacent reads (Req. 5–8); and (3) significant differences between
the claims and Dell (Req. 8–11).
After reviewing the supporting arguments regarding these contentions
in light of the earlier decision and the record as a whole, we are unpersuaded
that the earlier panel misapprehended or overlooked these points in
rendering its decision for the reasons indicated by the Requesters in their
respective comments, which we adopt as our own.

3
Although the earlier panel also affirmed the Examiner’s decision declining
to reject claims 56–58 on other grounds (Dec. 16–21), no rehearing request
was filed in connection with that decision.
Appeal 2014-007777
Reexamination Control No. 95/000,546 & 95/000,577 (merged)
Patent US 7,289,386 B2

3

CONCLUSION
For the foregoing reasons, we have granted Patent Owner’s request to
the extent that we have reconsidered our decision of February 25, 2015, but
we deny the request with respect to making any changes therein.
Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

DENIED

Patent Owner:

The Law Office of Jamie Zheng, Ph.D., Esq.
P.O. Box 60573
Palo Alto, CA 94306

Third Party Requesters:

Fish & Richardson, P.C.
P.O. Box 1022
Minneapolis, MN 55440-1022