PTAB

IPR2017-01420

SanDisk LLC v. Memory Technologies LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Extended Utilization Area for a Memory Device
  • Brief Description: The '850 patent discloses a memory device with predefined "access profiles" that govern access operations. The device includes a controller configured to receive a first command to activate an access profile and a second command to configure memory access in accordance with the activated profile.

3. Grounds for Unpatentability

Ground 1: Anticipation over CompactFlash - Claims 10, 12, and 18 are unpatentable under 35 U.S.C. §102 over CompactFlash.

  • Prior Art Relied Upon: CompactFlash (CF+ and CompactFlash Specification Revision 3.0).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the CompactFlash specification inherently discloses every limitation of claim 10. The various MultiWord DMA and Ultra DMA modes were asserted to be the claimed "predefined access profiles," as they determine how the memory device is configured for a specific usage (DMA transfer). The "first command" to activate a profile was mapped to the SET FEATURES command, which a host uses to select a specific DMA mode. The "second command" to configure access was mapped to a subsequent READ DMA or WRITE DMA command, which instructs the controller to initiate the DMA-specific protocol for the previously selected mode, thereby configuring a portion of the memory for the data transfer. Dependent claims 12 (default profile) and 18 (plurality of profiles) were also allegedly taught, as CompactFlash specifies a default DMA mode on power-up and supports multiple distinct DMA modes.

Ground 2: Obviousness over Ziv and Vogt - Claims 10, 12, and 18 are obvious over Ziv in view of Vogt.

  • Prior Art Relied Upon: Ziv (Patent 7,478,248) and Vogt (Patent 6,681,304).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Ziv taught a memory device with a predefined access profile for a secure memory area, comprising a password hash, address offset, and encryption key. Activation of this profile occurred upon entry of a valid password, which remounted the memory to make the secure area accessible. A subsequent read or write request served as the second command to configure the device for on-the-fly encryption or decryption. Petitioner argued that if the Board considered Ziv’s password entry not to be a "command," it would have been obvious to modify Ziv with Vogt. Vogt explicitly taught using a "password verify" command to send the password from a host to a memory device, thereby activating a secure access mode.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to combine the references as a simple substitution of one known element for another. Replacing Ziv's general password entry mechanism with Vogt's explicit command-based mechanism was presented as an obvious design choice to achieve a more reliable and structured method for communicating passwords, a predictable improvement. Both patents were in the analogous art of securing data on non-volatile memory in the early 2000s.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in implementing Vogt's command-based password verification into Ziv's system to yield a predictable result: a memory device that receives an entered password via a structured command.

Ground 3: Anticipation over Sinclair - Claims 10, 12-13, and 16-18 are unpatentable under §102 over Sinclair.

  • Prior Art Relied Upon: Sinclair (Patent 7,409,489).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Sinclair disclosed various selectable memory reclaim modes (e.g., "Reclaim Normal," "Reclaim On," "Reclaim Off") that functioned as the claimed "predefined access profiles." These profiles determined how the device configured the interleaving of write operations and background memory management (reclaim) operations. The "first command" was mapped to host commands used to select the desired reclaim mode, such as the "Reclaim_normal" command. The "second command" was mapped to other host commands, such as a "delete" command, which triggered the memory controller to re-calculate the interleave ratio and reconfigure memory access according to the active profile, thereby making the system adaptive to changing circumstances. Sinclair also allegedly taught interleaving operations (claim 16) and using a MultiMediaCard, which could be embedded (claim 13).

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of CompactFlash with Henkel (Application # 2004/0243900) to add simultaneous/interleaved access operations; Sinclair with Henkel; and Ziv/Vogt with Henkel and/or eMMC (an embedded memory standard).

4. Key Claim Construction Positions

  • "command": Petitioner argued that the term "command" should be construed to mean "an instruction." This construction was based on the patent's specification and its prosecution history, particularly that of the parent '180 patent. During prosecution, the applicant distinguished a "command" from passive information (like a caller ID) by stating a command "suggests some type of authoritative direction or instruction to do/not to do something." This construction was asserted to be critical in differentiating the claimed invention from prior art that relied on passive triggers rather than explicit instructions from a host.

5. Relief Requested

  • Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 10 and 12-18 of the '850 patent as unpatentable.