Micron Technology Inc v. Innovative Memory Systems Inc

1. Case Identification

• Case #: IPR2016-00325
• Patent #: 7,000,063
• Filed: December 14, 2015
• Petitioner(s): Micron Technology, Inc.
• Patent Owner(s): Innovative Memory Systems, Inc.
• Challenged Claims: 42-44

2. Patent Overview

• Title: Write-Many Memory Device and Method for Limiting a Number of Writes to the Write-Many Memory Device
• Brief Description: The ’063 patent relates to a method and system for limiting the number of writes to a write-many memory device, such as flash memory. The technology allows a user or manufacturer to configure a standard write-many device to function as a "write-N" device (e.g., write-once, write-five) by using sideband fields to track and enforce a maximum write count for memory blocks.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 42 and 44 - Claims 42 and 44 are anticipated by Kasa under 35 U.S.C. §102(e).

• Prior Art Relied Upon: Kasa (Patent 6,662,262).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kasa disclosed every limitation of claims 42 and 44. Kasa described a flash memory device (a "write-many memory device") containing an array of memory sectors, where at least one sector is designated as a one-time programmable (OTP) sector. According to Petitioner, this meets the independent claim 42 limitation of creating a write-once device from a write-many device. The method is achieved by programming a write-protect content addressable memory (CAM), which permanently "locks" the OTP sector and prevents further writes, thereby "rendering" the write-many cells of that sector into write-once cells. For dependent claim 44, Petitioner asserted Kasa explicitly stated that "memory manufacturers" have a need to include such OTP sectors, and that programming and locking of the OTP sector occurs during fabrication, thus meeting the limitation that the rendering is performed "by a manufacturer."

Ground 2: Obviousness of Claim 43 - Claim 43 is obvious over Kasa in view of Dipert under 35 U.S.C. §103.

• Prior Art Relied Upon: Kasa (Patent 6,662,262) and Dipert (Brian Dipert and Markus Levy, Designing with Flash Memory, 2d ed. 1994).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Kasa taught all elements of base claim 42. Dependent claim 43 adds the limitation that "the memory device comprises a modular memory device that is removably couplable with a host device." While Kasa disclosed its flash memory could be used with host devices like computers and personal digital assistants, it did not explicitly state the memory was on a removable card. Dipert, a well-known textbook on flash memory, was cited to supply this teaching, as it described that placing flash memory devices on removable memory cards (e.g., PCMCIA cards) was a common, well-known practice for data exchange.
  • Motivation to Combine: A POSITA, knowing of Kasa’s memory device, would combine its teachings with the established use of removable memory cards as taught by Dipert. The motivation would be to achieve the predictable and well-understood advantages of portability and easy data transfer between host devices, which was a simple design choice at the time.
  • Expectation of Success: A POSITA would have a high expectation of success because implementing flash memory on removable media was a standard, widely used, and well-documented practice, presenting no technical challenges.

Ground 3: Anticipation of Claim 42 - Claim 42 is anticipated by Naura under 35 U.S.C. §102(b).

• Prior Art Relied Upon: Naura (Patent 5,999,447).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Naura, an alternative to Kasa, also disclosed all limitations of claim 42. Naura described an electrically erasable and programmable non-volatile memory device (a "write-many memory device") that can include a one-time programmable (OTP) row. This OTP row contains write-many cells that are rendered write-once by setting an associated "OTP bit" after the initial programming. Once the OTP bit is set, the device's circuitry prevents any subsequent write or erase operations to that specific row. Petitioner asserted this system of providing a write-many device and using a state bit to permanently prevent more than one write to a portion of its memory cells constituted the claimed method.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 43 is obvious over Naura in view of Dipert, and claim 44 is obvious over Naura. These grounds relied on reasoning similar to that presented for the Kasa-based grounds, arguing that it would have been obvious to place Naura's memory on a removable card (as taught by Dipert) and that a manufacturer would be the entity to implement the OTP functionality.

4. Key Claim Construction Positions

• "write-many memory device" / "write-many memory cell": Petitioner proposed these terms be construed to mean "an electronic storage device/cell to which data can be written more than once." This construction was central to establishing that the flash memory and other electrically erasable devices described in the Kasa and Naura prior art references met the initial limitations of the challenged claims.
• "manufacturer": Petitioner argued this term should be construed as defined in the ’063 patent’s specification: "any party who handles the memory device before it is sold or distributed to an end user," including parties involved in manufacturing, assembly, or packaging. This broad construction was critical to its argument that Kasa anticipated claim 44, as Kasa described the OTP sector being programmed during fabrication before distribution to an end-user.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 42-44 of the ’063 patent as unpatentable.