Ex Parte 7289386 et alDownload PDFPatent Trials and Appeals BoardFeb 24, 201595000546 - (R) (P.T.A.B. Feb. 24, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/000,546 05/11/2010 7289386 19473-0052RX1 8688 79141 7590 08/27/2015 The Law Office of Jamie Zheng, Ph.D Esq. P.O. Box 60573 Palo Alto, CA 94306 EXAMINER PEIKARI, BEHZAD ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 08/27/2015 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/000,577 10/20/2010 7289386 17730-3 7888 79141 7590 08/27/2015 The Law Office of Jamie Zheng, Ph.D Esq. P.O. Box 60573 Palo Alto, CA 94306 EXAMINER PEIKARI, BEHZAD ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 08/27/2015 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ GOOGLE INC. ’546 Requester, 1 Respondent, and Cross-Appellant and SMART MODULAR TECHNOLOGIES ’577 Requester and Respondent v. NETLIST, INC. Patent Owner, Appellant, and Cross-Respondent ____________ Appeal 2014-007777 Inter partes Reexamination Control No. 95/000,546 & 95/000,577 (merged) United States Patent 7,289,386 Technology Center 3900 ____________ Before JOHN A. JEFFERY, MARC S. HOFF, 2 and KEVIN F. TURNER, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. 1 We identify each Requester in the manner indicated on page 1 of our decision dated February 25, 2015. 2 Judge Hoff replaces Judge Weinberg in the current panel. Appeal 2014-007777 Reexamination Control No. 95/000,546 & 95/000,577 (merged) Patent US 7,289,386 B2 2 DECISION ON REQUEST FOR REHEARING Patent Owner requests rehearing of the decision dated February 25, 2015 (“Dec.â€), where another panel of this Board affirmed the Examiner’s decision to reject claims 38, 48, and 56–58 in the above- identified inter partes reexamination. 3 Request for Rehearing filed March 26, 2015 (“Req.â€). Both Requesters challenge the asserted basis for the request in comments filed April 24, 2015 (“’577 Requester Commentsâ€) and April 27, 2015 (“’546 Requester Commentsâ€), respectively. For the reasons noted in Requesters’ comments, we deny the request to modify the earlier decision. In the Request, Patent Owner contends that we misapprehended and overlooked the evidentiary record and, specifically, that the Board allegedly overlooked (1) the standardized context of Amidi’s serial presence detect (SPD) and its underlying design considerations (Req. 2–5); (2) significant problems with the proposed solutions for modifying Amidi to handle back- to-back adjacent reads (Req. 5–8); and (3) significant differences between the claims and Dell (Req. 8–11). After reviewing the supporting arguments regarding these contentions in light of the earlier decision and the record as a whole, we are unpersuaded that the earlier panel misapprehended or overlooked these points in rendering its decision for the reasons indicated by the Requesters in their respective comments, which we adopt as our own. 3 Although the earlier panel also affirmed the Examiner’s decision declining to reject claims 56–58 on other grounds (Dec. 16–21), no rehearing request was filed in connection with that decision. Appeal 2014-007777 Reexamination Control No. 95/000,546 & 95/000,577 (merged) Patent US 7,289,386 B2 3 CONCLUSION For the foregoing reasons, we have granted Patent Owner’s request to the extent that we have reconsidered our decision of February 25, 2015, but we deny the request with respect to making any changes therein. Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. DENIED Patent Owner: The Law Office of Jamie Zheng, Ph.D., Esq. P.O. Box 60573 Palo Alto, CA 94306 Third Party Requesters: Fish & Richardson, P.C. P.O. Box 1022 Minneapolis, MN 55440-1022 Copy with citationCopy as parenthetical citation