PTAB

IPR2019-00638

Kingston Technology Company, Inc. v. Memory Technologies, LLC

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1. Case Identification

2. Patent Overview

  • Title: Write-Protecting a Peripheral Memory Card
  • Brief Description: The ’370 patent discloses a method and apparatus for permanently write-protecting a specific portion of a memory device, such as a multimedia card (MMC). The invention purports to improve on existing standards by redefining a standard write-protect command to make it permanent, an effect triggered by setting a specific bit in a data register.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-3, 5-6, 12-15, and 25 under 35 U.S.C. §102 by Chevallier

  • Prior Art Relied Upon: Chevallier (Application # 2004/0083346).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Chevallier discloses every element of the challenged claims. Chevallier describes a flash memory device with both a temporary "lock" function and a permanent "secure" function. Crucially, a single command can perform either function depending on the state of a "secure function bit" in a control register. When this bit is set to '1', executing the command permanently secures memory blocks against write/erase operations. This directly teaches the core of independent claims 1, 12, and 25: setting a bit in a data register to redefine a command, causing it to confer permanent write protection on a part of the memory that cannot be unprotected by another command.
    • Key Aspects: Chevallier explicitly states that the "secure command ... is the same as the lock command" and that the permanent secure function "cannot be cleared once it is set," directly mapping to the ’370 patent’s claimed functionality. Dependent claims are also met, as Chevallier's secure function bit is reprogrammable (claim 3) and its control data word defines the size of the memory blocks to be protected (claim 5).

Ground 2: Obviousness of Claims 1-3, 5-7, 12-15, 19, and 25 under 35 U.S.C. §103 over Chevallier in view of Toombs

  • Prior Art Relied Upon: Chevallier (’346 application) and Toombs (Patent 6,279,114).
  • Core Argument for this Ground:
    • Prior Art Mapping: Chevallier provides the fundamental teaching of using a configurable bit to toggle a command between temporary and permanent write protection. Toombs discloses a more advanced memory hierarchy for MMCs, including a Card Specific Data (CSD) register that defines memory in terms of groups and sectors. Toombs' CSD register includes bits like WP_GRP_ENABLE to control write protection on a group-by-group basis and WP_GRP_SIZE to define the size of these groups. This combination allegedly renders claims obvious, including those not fully anticipated by Chevallier alone, such as claim 7 (memory on an MMC) and claim 19 (apparatus is an MMC).
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine these references to improve the flexibility and efficiency of permanent write protection. A POSITA would be motivated to implement Chevallier’s permanent protection feature within the structured memory group architecture of Toombs. This would allow a user to permanently protect entire groups of memory (e.g., critical system files) as defined in Toombs' CSD register, rather than just individual blocks, which is a more practical and efficient approach for managing data on an MMC.
    • Expectation of Success: The combination would yield a predictable result. Integrating Chevallier's control bit concept into the well-defined CSD register structure of Toombs was a straightforward design choice for implementing granular, permanent write protection on a standard MMC device.

Ground 3: Obviousness of Claim 25 under §103 over the Chevallier-Toombs-Estakhri Combination

  • Prior Art Relied Upon: Chevallier (’346 application), Toombs (’114 patent), and Estakhri (Patent 6,262,918).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground specifically targets claim 25, which recites a memory device with stored instructions that, when executed, perform the claimed method. While the combination of Chevallier and Toombs teaches the method itself, Estakhri is introduced to explicitly disclose the means for storing and executing the necessary control instructions. Estakhri discloses a memory device comprising a flash controller (microprocessor circuit) and a storage unit for the controller's firmware (instructions).
    • Motivation to Combine: A POSA would have found it obvious to combine the method derived from Chevallier and Toombs with Estakhri’s teaching of an on-device controller and firmware. Storing the control logic for the write-protection functionality on the memory device itself is a conventional and necessary step to create an autonomous, operable product.
    • Expectation of Success: This combination was entirely predictable. The result would be a memory card capable of performing the permanent write-protection functions of Chevallier/Toombs using an on-board controller as taught by Estakhri.

  • Additional Grounds: Petitioner asserted that claims 1-3, 5-6, 12-15, and 25 are also obvious over Chevallier in view of the knowledge of a POSA, arguing that even without a secondary reference, any minor differences between Chevallier and the claims would have been obvious design choices.

4. Key Claim Construction Positions

  • "a data register": Petitioner argued this term should be construed as "a portion of memory containing information about a memory card." This construction is broad enough to encompass Chevallier’s "control register" and Toombs’ "CSD register," which is critical for mapping those references to the claims. Petitioner noted the Patent Owner agreed to this construction in co-pending litigation.
  • "redefine the command to allow permanent write protection": Petitioner proposed this phrase means "to cause a command that would not result in permanent write protection to result in permanent write protection." This construction is central to the argument that Chevallier anticipates the claims, as Chevallier’s single "lock command" has its function redefined from temporary to permanent protection by the setting of a "secure function bit."

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3, 5-7, 12-15, 19, and 25 of the ’370 patent as unpatentable.