Unification Technologies LLC

Patent Trials and Appeals Board

Dec 15, 2021

IPR2021-00942 (P.T.A.B. Dec. 15, 2021)

Trials@uspto.gov Paper 14
571-272-7822 Entered: December 15, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

MICRON TECHNOLOGY, INC.,
MICRON SEMICONDUCTOR PRODUCTS, INC., and
MICRON TECHNOLOGY TEXAS LLC,
Petitioner,
v.
UNIFICATION TECHNOLOGIES LLC,
Patent Owner.

IPR2021-00942
Patent 9,632,727 B2

Before JUSTIN T. ARBES, TERRENCE W. McMILLIN, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
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I. INTRODUCTION
Petitioners Micron Technology, Inc., Micron Semiconductor Products,
Inc., and Micron Technology Texas LLC (collectively, “Micron” or “the
Micron parties”)1 filed a Petition (Paper 2, “Pet.”) under 35 U.S.C. §§ 311–
319 requesting inter partes review of claims 1–6 and 12–16 of U.S. Patent
No. 9,632,727 B2 (Ex. 1001, “the ’727 patent”). Patent Owner Unification
Technologies LLC (“UTL”)2 filed a Preliminary Response (Paper 11,
“Prelim. Resp.”).
Under the authority delegated to us by the Director under 37 C.F.R.
§ 42.4(a), we may institute an inter partes review when “the information
presented in the petition . . . and any response . . . shows that there is a
reasonable likelihood that the petitioner would prevail with respect to at least
1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also
37 C.F.R. § 42.108(c) (2020). However, the Board has discretion to deny a
petition for reasons independent of whether the petitioner meets that
threshold. See, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
(2016) (“[T]he agency’s decision to deny a petition is a matter committed to
the Patent Office’s discretion.”); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348,
1356 (2018) (“[Section] 314(a) invests the Director with discretion on the
question whether to institute review . . . .” (emphasis omitted)); Harmonic

1 According to the Petition, the real parties in interest are the named
Petitioners, but “[o]ut of an abundance of caution,” Micron also identifies
Dell Technologies Inc., Dell Inc., Denali Intermediate Inc. (“a corporate
parent entity of Dell Inc.”), and HP Inc. as real parties in interest. Pet. 63–64.
2 UTL identifies itself as the real party in interest, and states that it “is a
subsidiary of Acacia Research Group LLC.” Paper 5, 2.
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Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
permitted, but never compelled, to institute an IPR proceeding.”).
Having considered the parties’ submissions, we determine that it is
appropriate in this case to exercise our discretion to deny institution of inter
partes review, for the reasons explained below.
II. BACKGROUND
A. THE ’727 PATENT (EX. 1001)
The ’727 patent discloses a technique for managing a non-volatile
storage medium. See Ex. 1001, code (57). According to the patent, at the
time of the claimed invention there were at least two known strategies for a
file system to delete data in non-volatile storage media when that data is no
longer useful. First, it could issue an erase command that “deletes a directory
entry in the file system while leaving the data in place in the storage device
containing the data.” Id. at 1:32–35. “Typically, a data storage device is not
involved in this type of erase operation.” Id. at 1:35–36. According to UTL,
one drawback of this approach is that “the data storage device [will be]
unaware [when] data has become invalid.” Prelim. Resp. 9–10 (citing Ex.
1001, 1:35–36).
In the second strategy, the file system could “write zeros, ones, or
some other null data character to the data storage device to actually replace
the erased file.” Ex. 1001, 1:37–39. But according to the ’727 patent, “this is
inefficient because valuable bandwidth is used while transmitting” the
highly-redundant overwriting data, and the approach is ineffective when
used in solid-state storage devices, because these devices do not typically
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have the ability to overwrite previously stored blocks of data to erase them.
Id. at 1:39–60.
The ’727 patent attempts to overcome these drawbacks. See Ex. 1001,
1:64–2:6. In the claimed invention, data are represented by two types of
addresses: physical addresses which indicate the physical location of the
data on the storage medium, and logical addresses which identify data
logically while internally mapping the data to associated physical addresses.
See id. at 2:32–34. When a computer system deletes data corresponding to a
particular logical address, it sends a message to a storage controller for the
medium. Id., code (57). This “message may comprise a hint, directive, or
other indication that the data [associated with the logical address] has been
erased and/or deleted.” Id. In response to this message, “the storage
controller records an indication that the contents of a . . . physical address
associated with the logical [address] do not need to be preserved on the non-
volatile storage medium.” Id.
B. CHALLENGED CLAIMS AND ASSERTED GROUNDS OF
UNPATENTABILITY
Independent claim 1, which exemplifies the other challenged claims
of the ’727 patent, is as follows:
1. An apparatus, comprising:
a solid-state storage medium;
a solid-state storage controller configured to implement storage
operations on the solid state storage medium in response to
requests from a computer system, including storing data
pertaining to logical addresses of a logical address space at
respective physical addresses of the solid-state storage medium;
and
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an indexer, comprised within the solid-state storage controller,
wherein the indexer is configured to assign logical addresses of
the logical address space to physical addresses in use to store data
pertaining to the logical addresses on the solid-state storage
medium;
wherein the indexer is further configured to remove an assignment
between an identified logical address and a physical address of
the solid-state storage medium in response to a message received
from a host operating system, the message indicating that the
identified logical address is erased.
Ex. 1001, 53:22–40. Claims 2–6 depend directly from claim 1. See id. at
53:41–54:3. Independent claim 12 is directed to a non-volatile solid-state
storage system related to the apparatus of claim 1. See Ex. 1001, 54:42–64.
Claims 13–16 depend directly or indirectly from claim 12. See id. at 54:65–
55:11.
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Micron argues two grounds for inter partes review, as summarized in
the following table:
Pet. 25–26.
A. RELATED PROCEEDINGS
The parties identify a co-pending district court litigation between
Micron and UTL that challenges the ’727 patent: Unification Technologies

3 35 U.S.C. § 103(a) (2006), amended by Leahy–Smith America Invents Act,
Pub. L. No. 112-29 § 103, sec. (n)(1), 125 Stat. 284, 287, 293 (2011)
(effective Mar. 16, 2013). The ’727 patent claims priority, among other
applications, to a provisional application filed on September 22, 2007, which
is before the effective date of this amendment to § 103. See Ex. 1001, code
(60); Pet. 1 & n.1 (alleging that September 22, 2007 is the correct priority
date for the ’727 patent).
4 Shu et al., US 9,207,876 B2, filed Feb. 12, 2008, issued Dec. 8, 2015 (Ex.
1003). Micron alleges that Shu is prior art under 35 U.S.C. §§ 102(a) and
(e), based on a provisional application filed April 19, 2007. Pet. 26.
5 Frank Shu, Notification of Deleted Data Proposal for ATA8-ACS2, rev. 0
(Apr. 21, 2007) (Ex. 1017); Frank Shu & Nathan Obr, Data Set Management
Commands Proposal for ATA8-ACS2, rev. 1 (July 26, 2007) (Ex. 1018)
(collectively, “Trim Proposals”). Micron alleges that the Trim Proposals
qualify as prior art under 35 U.S.C. § 102(a). Pet. 28–29.
6 Jenett, US 6,014,724, issued Jan. 11, 2000 (Ex. 1033). Micron alleges that
Jenett qualifies as prior art under 35 U.S.C. §§ 102(a), (b), and (e). Pet. 29.
7 Ban, US 5,404,485, issued Apr. 4, 1995 (Ex. 1025). Micron alleges that
Ban is prior art under 35 U.S.C. §§ 102(a), (b), and (e). Pet. 29. Micron also
alleges that Jenett incorporates Ban by reference in its entirety. See Pet. 29–
30.
Claims Challenged 35 U.S.C. § Reference(s)
1–6, 12–16 103(a)3 Shu,4 Trim Proposals,5 Jenett6
1–6, 12–16 103(a) Shu, Trim Proposals, Jenett, Ban7
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LLC v. Micron Technology, Inc., No. 6:20-cv-500-ADA (W.D. Tex. filed
June 5, 2020) (“the related district court case”). Pet. 64–65; Paper 5, 2.
Micron challenges the same claims of the ’727 patent that it also
challenges in co-pending inter partes review IPR2021-00345. See Pet. 65;
Paper 5, 2–3; IPR2021-00345, Paper 4, 9–10. Micron and other petitioners
(not part of this proceeding) filed the IPR2021-00345 petition on December
22, 2020, challenging claims 1–6 and 12–16 of the ’727 patent as
unpatentable based on different prior art. See IPR2021-00345, Paper 4, 9–
10. UTL filed its preliminary response for that proceeding on April 22, 2021.
IPR2021-00345, Paper 8. We then instituted inter partes review on July 19,
2021. See IPR2021-00345, Paper 9. Thus far in that case, UTL has filed its
Patent Owner Response and Micron has served notice to depose UTL’s
declarant, Dr. Vijay K. Madisetti, in January 2022. See IPR2021-00345,
Papers 21, 22.
Micron filed its Petition in the current proceeding on June 4, 2021,
which is after UTL filed its preliminary response in IPR2021-00345 and
before we instituted inter partes review. See Paper 2.
III. DISCRETION TO DENY INSTITUTION
UNDER § 314(A)
A. GENERAL PLASTIC FACTORS
The Board has recognized a number of factors that may merit denial
of institution under § 314(a) when a party files a “follow-on” petition
challenging the same patent as a previous petition. See General Plastic Co.,
Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15–16 (PTAB
Sept. 6, 2017) (precedential as to § II.B.4.i). These factors are as follows:
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1. whether the same petitioner previously filed a petition
directed to the same claims of the same patent;
2. whether at the time of filing of the first petition the
petitioner knew of the prior art asserted in the second
petition or should have known of it;
3. whether at the time of filing of the second petition the
petitioner already received the patent owner’s preliminary
response to the first petition or received the Board’s decision
on whether to institute review in the first petition;
4. the length of time that elapsed between the time the
petitioner learned of the prior art asserted in the second
petition and the filing of the second petition;
5. whether the petitioner provides adequate explanation for the
time elapsed between the filings of multiple petitions
directed to the same claims of the same patent;
6. the finite resources of the Board; and
7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
determination not later than 1 year after the date on which
the Director notices institution of review.
General Plastic, Paper 19 at 16. The General Plastic factors “are not
dispositive, but part of a balanced assessment of all relevant circumstances
in the case, including the merits.” Consolidated Trial Practice Guide 58
(Nov. 2019) (“Trial Practice Guide”), https://go.usa.gov/xpvPF (citing
General Plastic, Paper 19 at 15).
UTL contends that the General Plastic factors weigh heavily in favor
of denying institution in this case. See Prelim. Resp. 19–24. We agree.
Below, we address each of these factors as they apply to the circumstances
of this case.
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1. Whether the Same Petitioner Previously Filed a Petition
Directed to the Same Claims of the Same Patent
The Micron parties in this proceeding are also among the petitioners
in IPR2021-00345. The petitioners in the earlier proceeding also include
Dell Technologies Inc., Dell Inc., and HP Inc., which were defendants in
district court actions by UTL asserting the ’727 patent. IPR2021-00345,
Paper 4 at 67, caption. Micron states that “those [district court] cases were
dismissed before the filing of this Petition,” but Micron still identifies these
entities as real parties in interest for this proceeding “[o]ut of an abundance
of caution.” Pet. 64.
UTL contends that “[t]here is no dispute that the same Petitioners who
filed the IPR2021-00345 Petition also filed the present Petition,” and that the
two petitions challenge “the exact same claims: claims 1–6 and 12–16 of the
’727 Patent.” Prelim. Resp. 20.
We agree with UTL that Micron is the same Petitioner that filed the
earlier petition, and that there is complete overlap as to the challenged
claims. Therefore, this factor weighs in favor of denying institution.
2. Whether at the Time of Filing of the First Petition the
Petitioner Knew of the Prior Art Asserted in the Second
Petition or Should Have Known of It
UTL contends that Micron knew of the prior art cited in this Petition
at the time it filed its petition in IPR2021-00345. Prelim. Resp. 20. UTL
points out that in the related district court litigation, Micron listed all four of
the asserted references in its Preliminary Invalidity Contentions dated
October 16, 2020, before Micron filed its first petition on December 22,
2020. Prelim. Resp. 21 (citing Ex. 2006, 7–9, 26 (listing Jenett, Shu, and the
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Trim Proposals)); see also Ex. 2006, 11 (listing Ban). UTL also notes that
Micron included Ban and the Trim Proposals as exhibits for its petition in
IPR2021-00345. Prelim. Resp. 20 (citing IPR2021-00345, Exs. 1017, 1018,
1035). And UTL points out that Shu and Jenett appear on the face of the
patent issuing from the ’727 patent’s parent application. Id. at 20–21 (citing
Ex. 1011 (US 8,762,658 B2)).
The record is clear that Micron was aware of Shu, the Trim Proposals,
Jenett, and Ban when it filed its first petition. See Ex. 2006, 7–8, 11, 26;
IPR2021-00345, Exs. 1017, 1018, 1035. Thus, we agree with UTL that at the
time of its first petition, Micron was aware of each reference asserted in the
present Petition. Under the circumstances, the second factor weighs strongly
in favor of denying institution.
3. Whether at the Time of Filing of the Second Petition the
Petitioner Already Received the Patent Owner’s
Preliminary Response to the First Petition or Received
the Board’s Decision on Whether to Institute Review in
the First Petition
UTL argues that Micron “already received Patent Owner’s
preliminary response to the first petition on April 13, 2021. This gave
Petitioner approximately two months to review any potential shortcomings
in its first petition to address in its second petition.” Prelim. Resp. 21.
Although the Board had not yet instituted an inter partes review on
the first petition when Micron filed the current Petition, Micron did have
access to UTL’s preliminary response to the first petition, and Micron would
have been able to take UTL’s arguments into consideration in shaping its
strategy for the present Petition. Thus, we agree with UTL that the third
General Plastic factor weighs in favor of denial.
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4. The Length of Time that Elapsed Between the Time the
Petitioner Learned of the Prior Art Asserted in the
Second Petition and the Filing of the Second Petition
For the fourth General Plastic factor, UTL argues that Micron “listed
each of the asserted references in its Preliminary Invalidity Contentions it
served on October 16, 2020, but then waited ten months to file the present
Petition on June 4, 2021.” Prelim. Resp. 21 (citing Ex. 2006, 7–9, 26).
We agree with UTL that ten months is a substantial delay between
learning of potential prior art references and asserting them in a petition,
particularly because in this case, Micron had not only learned of the
references as of October 16, 2020, but had analyzed them sufficiently by that
date to include them in its Preliminary Invalidity Contentions (and then
relied on three of them as evidence in its IPR2021-00345 petition). Thus,
this factor weighs in favor of denying institution.
5. Whether the Petitioner Provides Adequate Explanation
for the Time Elapsed Between the Filings of Multiple
Petitions Directed to the Same Claims of the Same Patent
Micron contends that, when it filed its first petition, “investigation
into the . . . Trim Proposals remained ongoing, and Petitioners did not
uncover relevant materials, such as Frank Shu’s presentations (Exs. 1022,
1024) until recently.” Pet. 31. Micron also contends that in the related
district court case, “UTL . . . delayed providing its priority contentions until
late April 2021.” Id. (citing Ex. 1019). Also, according to Micron, “[t]he
earlier IPR petition dealt with different prior art and assumed a different
priority date.” Id. (citing Trial Practice Guide 59 (stating that “a dispute
about priority date requiring arguments under multiple prior art references”
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can be a potential reason for the Board to institute trial on multiple petitions
challenging the same patent)).
UTL argues that Micron’s explanation for the delay is inadequate. See
Prelim. Resp. 21–23. According to UTL, the later-discovered Frank Shu
presentations (Exs. 1022 and 1024) “are irrelevant to the asserted Ground[s]
in the present Petition because they are not part of the asserted Ground[s].”
Id. at 22. UTL also argues that the disputed priority date of the ’727 patent
does not justify multiple petitions because “Petitioners were well aware of
Patent Owner’s position with respect to the priority date of the ’727 Patent
before Patent Owner provided its detailed Interrogatory response in April
2021 and before Petitioner filed its first Petition.” Id. (citing Ex. 2005, 5
(UTL’s Initial Infringement Contentions, served August 21, 2020)). And
according to UTL, Micron “was free to argue that the ’727 Patent was only
entitled to a later priority date in IPR2021-00345—but it chose not to.” Id.
We agree with UTL that Micron’s explanation for the delay between
the two petitions is inadequate. Because Micron does not assert the Frank
Shu presentations (Exs. 1022, 1024) as prior art, the timing of their
discovery is not relevant to the delay in asserting Shu, the Trim Proposals,
Jenet, and Ban in the present Petition. We also agree with UTL that Micron
should have known UTL’s position on the priority date of the ’727 patent
when UTL served its Initial Infringement Contentions on August 21, 2020,
well before Micron filed its first petition. See Ex. 2005, 5 (contending that
“claims [1–6 and 12–16] of the ’727 Patent are entitled to a priority date no
later than December 6, 2006.”). Thus, any delay in UTL’s interrogatory
responses in April 2021 does not adequately explain Micron’s delay in filing
the current Petition.
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The Board recognizes that “more than one petition may be necessary
. . . when there is a dispute about priority date requiring arguments under
multiple prior art references.” Trial Practice Guide 59. But when the Board
has accepted such multiple petitions, they are usually parallel petitions filed
“at or about the same time (e.g., before the first preliminary response by the
patent owner).” Id. Micron’s argument that it needs a second petition to
address a different priority date assumption still does not adequately explain
the delay in filing the current Petition.
Thus, we agree with UTL that the fifth General Plastic factor weighs
in favor of denying institution.
6. The Finite Resources of the Board; and the Requirement
Under 35 U.S.C. § 316(a)(11) to Issue a Final
Determination Not Later than 1 Year After the Date on
Which the Director Notices Institution of Review
Micron contends that if we institute on its current Petition, “[t]he
limited resources of the Board will be put to efficient use because the Board
is already familiar with the technology and mainly needs to decide a priority
date challenge to prevent . . . UTL from unfairly using hindsight to capture
Frank Shu’s invention.” Pet. 31.
In response, UTL argues that under Micron’s reasoning, “every
follow-on IPR on the same patent would then somehow be an efficient use
of the Board’s resources because ‘the Board is already familiar with the
technology.’” Prelim. Resp. 24 (citing General Plastic, Paper 19 at 21
(“[M]ultiple, staggered petition filings, such as those here, are an inefficient
use of the inter partes review process and the Board’s resources.”)).
We agree with UTL that instituting trial on the present Petition would
not be an efficient use of the Board’s resources. In the IPR2021-00345 case,
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we already instituted trial about five months ago on all the claims challenged
in this Petition, and UTL has already filed its Patent Owner Response. See
IPR2021-00345, Paper 21. If we were also to institute an inter partes review
on the current Petition, it would be too late for us to consolidate the two
cases on the same schedule, while still issuing a final written decision by
July 19, 2022 as required under 35 U.S.C. § 316(a)(11). Thus, the two cases
would be on different schedules in entirely separate proceedings, and have
different evidentiary records.
Thus, General Plastic factors 6 and 7 weigh in favor of denying
institution.
B. CONCLUSION AS TO THE GENERAL PLASTIC FACTORS
For the reasons above, we weigh all seven General Plastic factors in
favor of denying institution. Although no single factor is dispositive, the
evidence and circumstances as a whole weigh strongly in favor of denying
institution on the present Petition.
IV. CONCLUSION
We have considered the evidence and circumstances before us in view
of the General Plastic factors and the guidance provided in the Consolidated
Trial Practice Guide. For the above reasons, we exercise our discretion to
deny institution of inter partes review.
V. ORDER
In consideration of the foregoing, it is
ORDERED that the Petition is denied, and no trial is instituted.
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For PETITIONER:
Katherine A. Vidal
Qi Tong
WINSTON & STRAWN LLP
kvidal@winston.com
ptong@winston.com

For PATENT OWNER:
Robert A. Delafield II
Justin B. Kimble
NELSON BUMGARDNER ALBRITTON P.C.
bobby_delafield@yahoo.com
justin@nbafirm.com