Silicon Motion Technology Corp. v Phison Electronics Corp.

Patent Trial and Appeal Board

Apr 8, 2014

12210406 (P.T.A.B. Apr. 8, 2014)

Trials@uspto.gov Paper 14
Tel: 571-272-7822 Entered: April 8, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SILICON MOTION TECHNOLOGY CORP.
Petitioner

v.
PHISON ELECTRONICS CORP.
Patent Owner
____________

Case IPR2013-00473
Patent 8,176,267
____________

Before KEVIN F. TURNER, JONI Y. CHANG, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION
Request for Rehearing
37 C.F.R. §§ 42.71

Case IPR2013-00473
Patent 8,176,267
2
INTRODUCTION
Silicon Motion Technology Corp. (“Silicon Motion”) filed a Request for
Rehearing (Paper 10, “Req.”) of the Decision on Institution (Paper 7, “Dec.”),
which instituted inter partes review of claims 1, 3-7, 9-11, 13-17, 21, 22, 24, and
25 of Patent 8,176,267 (the ’267 Patent). In its request, Silicon Motion argues
essentially that the Board should have included alternative grounds covering
claims 1, 2, 8, 11, 12, 22, and 23 in the institution over Sharon and other
references, cited in the Petition (Paper 1). Req. 1-2. The request for rehearing is
denied.
ANALYSIS
When rehearing a decision on institution, the Board will review the decision
for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be
determined if a decision is based on an erroneous interpretation of law, if a factual
finding is not supported by substantial evidence, or if the decision represents an
unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S.,
393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338,
1340 (Fed. Cir. 2004); and In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir.
2000).
Silicon Motion argues that the claim construction espoused in the Decision
is inconsistent because it unnecessarily imparts limitations to the claim term
“predetermined data.” Req. 4. Silicon Motion argues that “predetermined data”
should be interpreted according to its plains and ordinary meaning, i.e., as “data
having a predetermined value.” Req. 6. Based on this construction, Silicon
Case IPR2013-00473
Patent 8,176,267
3
Motion argues that additional grounds over Sharon and other references should
have been adopted at institution of this proceeding. Req. 8-11. Thus, all of Silicon
Motion’s non-instituted grounds, save one, turn on the Board adopting Silicon
Motion’s modified construction. We are not persuaded that the claim construction
adopted in the Decision was made in error.
First, we note that this is the first time that Silicon Motion has attempted to
construe “predetermined data” in the instant proceeding. As we wrote in the
Decision: “Silicon Motion does not construe specifically this limitation
[‘predetermined data’], but does allege that its use in the claims does not raise a
point of novelty at the time of the invention. Pet. 12-13. Phison, on the other
hand, has provided a specific construction of the subject limitation.” Dec. 6. As
discussed therein, Silicon Motion did not construe “predetermined data” in its
Petition and now argues that the plain, ordinary meaning does not comport with the
construction adopted in the Decision. Req. 4-7. However, as we also indicated in
the Decision, in discussing Patent Owner’s (“Phison’s”) argument that the Petition
improperly lacks proposed claim constructions: “Silicon Motion may gain no
benefit that it might have had from a more specific construction.” Dec. 8. We
continue to be persuaded that Silicon Motion should not benefit from providing a
specific claim construction only after the institution decision has been made.
Second, as we wrote in the Decision, we reviewed the examples of use of the
term in the Specification of the ’267 Patent and we are persuaded that
“predetermined data” would have been understood as “replacement data.” Dec. 6.
Silicon Motion’s dictionary definition (Req. 4) cannot take the place of the term’s
use in the specification and claims. “In most situations, an analysis of the intrinsic
Case IPR2013-00473
Patent 8,176,267
4
evidence alone will resolve any ambiguity in a disputed claim term. In such
circumstances it is improper to rely on extrinsic evidence.” Vidtronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). We are persuaded, from
the intrinsic evidence, that “predetermined data” would have been understood as
“replacement data.”
Lastly, Silicon Motion provides several annotated examples from the
Specification of the ’267 Patent, but we are not persuaded that these examples are
availing of Silicon Motion’s arguments that the wrong construction has been
adopted. Req. 6-7. For example, a portion of the Specification of the ’267 Patent,
namely Ex. 1001 3:4-9, is cited by both Silicon Motion (Req. 6) and Phison (Patent
Owner’s Preliminary Response 13) in attempting to argue for a construction of
“predetermined data.” In each example cited by Silicon Motion (Req. 6-7) it is
clear that the data read are changed such that the predetermined data are provided,
and that this provision is made in place of the read data being provided. As we
determined in the Decision, the “predetermined data” are “replacement data,” and
this would have been understood in the context of the Specification and claims of
the ’267 Patent. While there is nothing intrinsically wrong with Silicon Motion’s
definition of “data having a predetermined value,” we are persuaded that
“replacement data” provides a construction more consistent with its
aforementioned use.
As such, we are not persuaded that we have misconstrued the definition of
“predetermined data” as provided and used in the Decision. The grounds discussed
in the Request for Rehearing, namely anticipation by Sharon (Req. 8-9),
unpatentability by Sharon and Bennett (Req. 9), and unpatentability by Sharon and
Case IPR2013-00473
Patent 8,176,267
5
Bennett (Req. 10-11), all rely on the alternative construction of “predetermined
data” which we have not been persuaded should have been adopted. As such, we
are not persuaded that those grounds should have been adopted in the Decision on
Institution for the instant proceeding.
In addition, Silicon Motion argues that Bennett describes replacement data,
where data are not read and the host is sent replacement data, per claims 2, 12, and
23. Req. 9-10. Silicon Motion argues that the combination of Sharon and Bennett
should suggest claims 2, 12, and 23 under the claim construction for
“predetermined data” adopted in the Decision. Id. However, as discussed in the
Decision (Dec. 14-15) the sections of the Petition discussing the application of
Bennett to claims 2, 12, 18-20, and 23, namely Pet. 34, 40, 42-43, and 45, all cite
to paragraphs 155 and 157 of Bennett, whereas Silicon Motion’s Request for
Rehearing cites to paragraph 161. Req. 9-10. We cannot have overlooked or
misapprehended sections of Bennett that were not presented in the Petition. As
such, we are not persuaded that we misapprehended or overlooked the application
of Sharon and Bennett to claims 2, 12, and 23 in the Decision.
For the foregoing reasons, Silicon Motion has not shown that the Board
abused its discretion in instituting the instant proceeding on the grounds specified
in the Decision.

ORDER
Accordingly, it is

ORDERED that Silicon Motion’s request for rehearing is denied.
Case IPR2013-00473
Patent 8,176,267
6
For PETITIONER:
Melvin D. Chan
AKA CHAN LLP
mel@akachanlaw.com

For PATENT OWNER:
Joshua A. Griswold
David M. Hoffman
FISH & RICHARDSON P.C.
griswold@fr.com
hoffman@fr.com