NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

     INNOVATIVE MEMORY SYSTEMS, INC.,
                 Appellant

                           v.

          MICRON TECHNOLOGY, INC.,
                    Appellee
             ______________________

                      2018-1348
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
00320.
                 ______________________

             Decided: September 18, 2019
               ______________________

    EDWARD C. FLYNN, Eckert Seamans Cherin & Mellott,
LLC, Pittsburgh, PA, argued for appellant. Also repre-
sented by PHILIP LEVY; ROBERT WILLIAM MORRIS, White
Plains, NY.

   MELANIE L. BOSTWICK, Orrick, Herrington & Sutcliffe
LLP, Washington, DC, argued for appellee. Also repre-
sented by JARED BOBROW, JEREMY JASON LANG, Menlo
Park, CA; DOUGLAS WAYNE MCCLELLAN, Weil, Gotshal &
Manges LLP, Houston, TX.
2    INNOVATIVE MEMORY SYSTEMS, INC v. MICRON TECHNOLOGY,
                                                     INC.


                  ______________________

    Before PROST, Chief Judge, REYNA and STOLL, Circuit
                          Judges.
REYNA, Circuit Judge.
    Innovative Memory Systems, Inc. appeals a decision of
the Patent Trial and Appeal Board in an inter partes review
proceeding determining that claims 8–10 of the challenged
patent were unpatentable as obvious. Because the Board
did not err in concluding that the challenged claims are un-
patentable, we affirm.
                        BACKGROUND
                              I.
     Innovative Memory Systems, Inc. (“IMS”) owns U.S.
Patent No. 6,169,503 (“the ’503 patent”). The ’503 patent
relates generally to digital-to-analog converters (“DACs”)
and analog-to-digital converters (“ADCs”) that use conver-
sion arrays containing non-volatile memory cells. ’503 pa-
tent, Abstract. The ’503 patent involves the use of a
conversion array comprised of a plurality of transistors
(also referred to as reference or memory cells) with thresh-
old voltages that conduct in response to a digital or analog
input signal. 

ll. 34–50. The conversion array may
include read only memory cells that set the cells’ threshold
voltages or programmable non-volatile memory cells. 

ll. 60–66. The conversion array may consist of multi-
ple rows and columns of memory cells. 

ll. 14–16.
  Claims 8 and 9 are at issue in this appeal and relate to
ADCs:
     8. A converter comprising:
     an array of reference cells, the reference cells hav-
       ing a plurality of threshold voltages;
     a sense circuit coupled to the array; and
INNOVATIVE MEMORY SYSTEMS, INC v. MICRON TECHNOLOGY,         3
INC.


    an encoder coupled to the sense circuit, wherein the
      encoder generates a multi-bit digital output sig-
      nal that represents a value that depends on
      which of the reference cells conduct when an an-
      alog input signal is applied to a set of reference
      cells, wherein the encoder comprises a counter
      coupled to count pulses from the sense circuit,
      the multi-bit digital output signal being a count
      of the number of reference calls [sic] that con-
      duct.
    9. A converter comprising:
    an array of reference cells, the reference cells hav-
      ing a plurality of threshold voltages, wherein the
      array contains a plurality of rows;
    a sense circuit coupled to the array; and
    an encoder coupled to the sense circuit, wherein the
      encoder generates a multi-bit digital output sig-
      nal that represents a value that depends on
      which of the reference cells conduct when an an-
      alog input signal is applied to a set of reference
      cells; and
    a row decoder coupled to the array, the row decoder
       selecting a row of reference cells to which the an-
       alog signal is applied.

ll. 20–47.
                             II.
    Micron Technology, Inc. (“Micron”) filed a petition for
inter partes review of claims 1 and 8–10 of the ’503 patent.
The Patent Trial and Appeal Board (“Board”) instituted re-
view on all challenged claims and grounds. In its initial
Final Written Decision, the Board found that Micron had
shown by a preponderance of the evidence that claim 8 was
obvious based on the combination of U.S. Patent
No. 5,376,935 (“Seligson”) and U.S. Patent No. 4,591,825
4   INNOVATIVE MEMORY SYSTEMS, INC v. MICRON TECHNOLOGY,
                                                    INC.


(“Bucklen”), or Seligson, U.S. Patent No. 5,187,483
(“Yonemaru”), and Bucklen. The Board also found that Mi-
cron had shown that claims 9 and 10 were obvious based
on the combination of Seligson and Yonemaru. 1 At the
same time, the Board denied a motion filed by IMS to ex-
clude portions of a declaration submitted by Micron’s ex-
pert, Dr. Baker (“the Baker Reply Declaration”), in support
of Micron’s reply brief.
     IMS then filed a request for rehearing, which the Board
granted. The Board withdrew its initial Final Written De-
cision and authorized IMS to file a sur-reply to respond to
Micron’s reply brief. After IMS filed its sur-reply, the
Board issued its Final Written Decision After Rehearing,
maintaining its determination that claims 8, 9, and 10
were unpatentable and its denial of IMS’s motion to ex-
clude. J.A. 74.
    The Board’s conclusion that claim 8 was obvious de-
pended on its construction of the recited “counter” term.
The Board construed the claim term “counter . . . to count
pulses” to mean an “accumulator, circuit, or device that cal-
culates the number of pulses” according to the plain mean-
ing of its words under the broadest reasonable
interpretation standard. J.A. 22–29. The Board rejected
IMS’s contention that “[o]ne of ordinary skill in the art
would understand that a ‘counter’ is something that uses
sequential logic to count individual pulses, not a transition
detection circuit that uses combinational logic to locate the
transition point from which the ultimate count may be de-
termined.” J.A. 22–23 (quoting Patent Owner’s Response)
(emphasis added by Board). The Board considered the lan-
guage of the claim and the specification and determined



    1  During the course of proceedings, IMS disclaimed
claim 1 of the ’503 patent, so it was not part of the Final
Written Decision.
INNOVATIVE MEMORY SYSTEMS, INC v. MICRON TECHNOLOGY,       5
INC.


that claim 8 does not require the counter to count each
sensed pulse individually as IMS argued. See J.A. 23–25.
    To ascertain the plain meaning of “counter,” the Board
considered extrinsic evidence, including expert testimony
and dictionaries. The Board found that the record evidence
supported that the plain meaning of “counter . . . to count
pulses” means an “accumulator, circuit, or device that cal-
culates the number of pulses.” J.A. 26. After considering
whether the specification deviated from this plain mean-
ing, the Board determined that the specification did not
clearly limit the claimed “counter” to a sequential counter
and instead contemplated counters more broadly. J.A. 26–
28. Based on its resolution of the claim construction dis-
pute over the “counter” phrase and IMS’s concession that
Bucklen disclosed such a device, the Board concluded that
claim 8 was obvious. See J.A. 56–58, 62.
    As noted above, the Board also determined that the
combination of Seligson and Yonemaru rendered claims 9
and 10 obvious. 2 J.A. 54. The Board found that claim 9
was obvious under its adopted construction of “the row de-
coder selecting a row of reference cells to which the analog
signal is applied” to mean “the row decoder selecting one or
more rows of reference cells to receive the analog input sig-
nal, or selecting one or more rows that already have the
analog signal.” J.A. 22, 38. The Board also found that even
under IMS’s narrower proposed claim construction, which
“require[d] the row decoder [to] select a row of reference
cells to receive the analog input signal,” the combination of
Seligson and Yonemaru rendered claims 9 and 10 obvious.
J.A. 38.




    2   IMS did not present any arguments individually di-
rected to claim 10 before the Board and does not do so on
appeal.
6   INNOVATIVE MEMORY SYSTEMS, INC v. MICRON TECHNOLOGY,
                                                    INC.


     The Board found that “Seligson’s transistors include
reference voltages and inputs, which function similarly to
the reference resistors and inputs in Yonemaru, and
Yonemaru discloses select switches ultimately to provide
different selected rows of voltage references for compari-
sons.”    J.A. 38–39. It further found that “modifying
Yonemaru’s decoder and select switches to select at least
one row of programmable reference transistors in Selig-
son’s circuit to attach an input voltage to a row would have
been obvious for the purpose of sensing different analog
ranges, while providing a known array configuration for
utilizing available chip space.” Id.; see also J.A. 40 (“Selig-
son and Yonemaru would have suggested employing
Yonemaru’s decoder to control switches SW (via signals
SE) to connect an input voltage to a selected row of refer-
ence cells and thereby satisfy Patent Owner’s narrower
claim construction.”). Relying on Micron’s expert Dr.
Baker’s testimony, the Board rejected IMS’s arguments
that a person of ordinary skill in the art would lack moti-
vation to combine Seligson and Yonemaru. See J.A. 40–54.
    IMS appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
                         DISCUSSION
    The Board’s ultimate claim construction is a question
of law that we review de novo; we review its underlying
factual findings for substantial evidence. Monsanto Tech.
LLC v. E.I. DuPont de Nemours & Co., 

, 1341
(Fed. Cir. 2018). In IPR proceedings, claims in an unex-
pired patent are given their broadest reasonable interpre-
tation in light of the specification. 3 Cuozzo Speed Techs.,



    3   Despite the U.S. Patent and Trademark Office’s
change to the claim construction standard, the broadest
reasonable interpretation standard applies in this case be-
cause the petition was filed before November 13, 2018. See
INNOVATIVE MEMORY SYSTEMS, INC v. MICRON TECHNOLOGY,       7
INC.


LLC v. Lee, 

, 2146 (2016). Accordingly, the
words of the claim are construed according to their plain
meaning, unless such a meaning conflicts with the specifi-
cation or prosecution history. Trivascular, Inc. v. Samuels,

, 1062 (Fed. Cir. 2016).
    Obviousness is a question of law with underlying fac-
tual findings. Hamilton Beach Brands, Inc. v. f’real Foods,
LLC, 

, 1341 (Fed. Cir. 2018). We review the
ultimate obviousness determination de novo and underly-
ing factual findings for substantial evidence. Harmonic
Inc. v. Avid Tech., Inc., 

, 1363 (Fed. Cir.
2016). Underlying factual findings include the scope and
content of the prior art and whether a person of ordinary
skill in the art would have been motivated to combine ref-
erences. Apple Inc. v. Samsung Elecs. Co., 

,
1051 (Fed. Cir. 2016). “Substantial evidence . . . means
such relevant evidence as a reasonable mind might accept
as adequate to support a conclusion.” Consol. Edison Co.
of N.Y. v. N.L.R.B., 

, 229 (1938).
                             I.
     With respect to claim 8, IMS asserts that the Board’s
construction of “counter . . . to count pulses” as “accumula-
tor, circuit, or device that calculates the number of pulses”
was unreasonable in light of the specification. According
to IMS, the broadest reasonable interpretation of the
“counter” term is “a sequential circuit that goes through a
prescribed sequence of states upon the application of input
pulses from the sense circuit.” Appellant Br. 24. We disa-
gree.
   Beginning with the language of the claim, “a counter
coupled to count pulses from the sense circuit” does not


Changes to the Claim Construction Standard for Interpret-
ing Claims in Trial Proceedings Before the Patent Trial and
Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018).
8   INNOVATIVE MEMORY SYSTEMS, INC v. MICRON TECHNOLOGY,
                                                    INC.


require a counter that counts pulses in any particular way.
’503 patent col. 12 ll. 30–31. Turning to the written de-
scription, there is no dispute that it does not “clearly set
forth a definition” of “counter,” and the patentee has not
“act[ed] as [his] own lexicographer” here. Bradium Techs.
LLC v. Iancu, 

, 1044 (Fed. Cir. 2019) (quoting
Thorner v. Sony Comput. Entm’t Am. LLC, 

,
1365 (Fed. Cir. 2012)).
     IMS points to an embodiment in the specification dis-
closing a sequential counter as depicted in Figure 5B. Yet
it is well established that “it is not enough for a patentee to
simply disclose a single embodiment or use a word in the
same manner in all embodiments, the patentee must
‘clearly express an intent’ to redefine the term.” Id.; Ac-
umed LLC v. Stryker Corp., 

, 805 (Fed. Cir.
2007) (“[A]lthough the specification often describes very
specific embodiments of the invention, we have repeatedly
warned against confining the claims to those embodi-
ments.” (quoting Phillips v. AWH Corp., 

,
1323 (Fed. Cir. 2005))). The patentee expressed no such
clear intent here.
    Further, in the embodiment relied on by IMS, the pa-
tentee specified that the counter counts sequentially from
zero. See ’503 patent col. 6 ll. 12–15 (“Counter 532 provides
the address signal to select circuits 524 in bias and sense
circuits. For signal conversion, a clock signal causes coun-
ter 532 to sequentially count up from zero.”). This suggests
that the broader meaning of the term as used in the patent
encompasses a wider scope of counters. See 

(declining to construe “transverse holes” as lim-
ited to perpendicular holes despite every description in the
patent contemplating a perpendicular hole).
    Thus, the Board did not err in rejecting IMS’s narrower
proposed construction. Further, the Board properly relied
on extrinsic evidence to confirm that the broadest reasona-
ble interpretation of the term “counter” tracks the plain
INNOVATIVE MEMORY SYSTEMS, INC v. MICRON TECHNOLOGY,       9
INC.


meaning of the claim language. We discern no error in the
Board’s construction of “counter . . . to count pulses” as
“accumulator, circuit, or device that calculates the number
of pulses.” There is no dispute that Bucklen discloses a
“counter” and that the Board properly found there was suf-
ficient motivation to combine the references under this con-
struction. We therefore affirm the Board’s determination
that Micron showed by a preponderance of the evidence
that claim 8 is obvious in view of Seligson and Bucklen, or
Seligson, Yonemaru, and Bucklen.
                             II.
    With respect to claim 9, IMS asserts that the combina-
tion of Seligson and Yonemaru does not render the claim
obvious under the proper construction of “row decoder se-
lecting a row of reference cells to which the analog signal
is applied.” IMS argues that the “row decoder” must “select
a row of reference cells to receive the analog input signal,
not a row of reference cells to which the analog input signal
is already being applied.” Appellant Br. 46. Relying on a
hand-drawn figure that Dr. Baker drew during his deposi-
tion, IMS asserts that Dr. Baker conceded that the combi-
nation circuitry of Seligson and Yonemaru would
determine the output of the transistors, where “the analog
input signal was applied to all rows at the same time.” Ap-
pellant Br. 52. According to IMS, this combination fails to
satisfy the limitations of claim 9.
    As noted above, the Board made alternative factual
findings that the combination of Seligson and Yonemaru
discloses the “row decoder” limitation under IMS’s nar-
rower construction of the term and that a person of ordi-
nary skill in the art would have been motivated to combine
the references. We therefore do not address IMS’s claim
construction arguments because substantial evidence sup-
ports these alternative findings.
    As a preliminary matter, the teachings of the prior art
are not limited by what Dr. Baker’s deposition drawing
10 INNOVATIVE MEMORY SYSTEMS, INC v. MICRON TECHNOLOGY,
                                                   INC.


purportedly shows, and the Board correctly observed that
Dr. Baker was not required to sketch out all the circuit de-
tails of the combination of Seligson and Yonemaru to pro-
vide sufficient evidence of obviousness. See J.A. 53 (citing
In re Keller, 

, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary ref-
erence may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention
must be expressly suggested in any one or all of the refer-
ences. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary
skill in the art.”).
     The Board cited to Figure 4 of Seligson, which discloses
a circuit diagram of an ADC circuit with a plurality of elec-
trically programmable transistors with reference voltages
coupled to an analog voltage input INA. J.A. 38; see also
Seligson Fig. 4, col. 7 ll. 16–34. The Board also cited to
Figure 1 of Yonemaru, which discloses a similar ADC cir-
cuit with reference resistors and inputs and switches for
selectively applying voltage references for comparison.
J.A. 38; see also Yonemaru Fig. 1, col. 5 l. 52–col. 6 l. 35.
The Board further cited to the Baker Reply Declaration,
explaining Dr. Baker’s view that the row decoder disclosed
by Yonemaru “connects a respective row to the analog-to-
digital path” and Seligson’s disclosure of the row of “refer-
ence cells that accept the analog signal on their gates” such
that they together disclose the “row decoder” limitation,
which “could include selecting only one row” to which the
analog signal could be applied and is consistent with IMS’s
construction. J.A. 1839–40 (Baker Reply Decl.). Citing to
the Petition and Yonemaru, the Board explained how it
would be obvious for the purpose of sensing different ana-
log ranges to modify Yonemaru’s decoder and “SW
switches” to select one or more rows of reference transistors
in the Seligson circuit to connect the input voltage.
J.A. 38–39. The Board also found that Yonemaru teaches
using “switches SW to select input reference voltages” to
INNOVATIVE MEMORY SYSTEMS, INC v. MICRON TECHNOLOGY,       11
INC.


compare the input reference voltages to the analog input
signal “thereby effectively switching compared input . . .
values into the encoder to create digital outputs.” J.A. 40
(citing Yonemaru Fig. 1, Abstract, col. 6 ll. 11–49). Dr.
Baker also opined that adding a switch would be easy to do
for someone wanting to connect the analog input signal to
one row. J.A. 42 (citing J.A. 3142 (Baker Dep. Tr.)).
    The Board further credited Dr. Baker’s testimony that
his modification of using switches to connect a row of refer-
ence cells would involve additional transistors but would
generally reduce the overall footprint compared to a long
single row. J.A. 41 (citing J.A. 1846–47 (Baker Reply.
Decl.)). It further credited Dr. Baker’s testimony that a
person of ordinary skill would have been motivated to com-
bine Seligson and Yonemaru such that the analog signal
was applied to as few transistors and rows as possible (e.g.,
one row) to reduce load and power requirements and in-
crease speed. J.A. 42 (citing J.A. 1847–48 (Baker Reply
Decl.)).
    In summary, the Board analyzed the references, made
detailed fact findings regarding their disclosures and the
motivation of a person of ordinary skill to combine them,
including specific citations to the references and the record,
and addressed, in detail, the expert testimony. The bulk of
IMS’s arguments are disagreements with the Board’s fac-
tual findings and expert credibility determinations, which
warrant our deference. E.g., Yorkey v. Diab, 

,
1284 (Fed. Cir. 2010) (“We defer to the Board’s findings
concerning the credibility of expert witnesses.”). Thus, we
discern no error in the Board’s determination that claims 9
and 10 are unpatentable as obvious under IMS’s narrower
proposed construction.
                             III.
    We briefly address IMS’s procedural arguments re-
garding the Board’s reliance on the Baker Reply Declara-
tion. IMS argues that the Board erred by relying on the
12 INNOVATIVE MEMORY SYSTEMS, INC v. MICRON TECHNOLOGY,
                                                   INC.


Baker Reply Declaration in its Final Written Decision Af-
ter Rehearing. Appellant Br. 52–56. IMS’s argument is
based on its assertion that the Baker Reply Declaration
was improper rebuttal because it purportedly expanded on
what Dr. Baker stated in his original declaration. Despite
disagreeing with IMS that the Baker Reply Declaration
was improper rebuttal, the Board granted IMS’s request
for rehearing, withdrew its initial Final Written Decision,
and gave IMS leave to file a sur-reply, even though IMS did
not request further briefing or the opportunity to submit
additional evidence. J.A. 66. IMS also did not request the
opportunity to provide an expert declaration or additional
pages of briefing after the Board granted the sur-reply. Ad-
ditionally, the Board credited IMS’s arguments as being
endorsed by its expert, declining to dismiss any arguments
as mere attorney argument. We do not determine whether
the Baker Reply Declaration exceeded the scope of proper
rebuttal, because even if it did, the sur-reply afforded IMS
sufficient additional opportunity to be heard. Accordingly,
the Board did not abuse its discretion in denying IMS’s mo-
tion to exclude portions of the Baker Reply Declaration.
                       CONCLUSION
    We have considered IMS’s remaining arguments and
find them unpersuasive. For the foregoing reasons, we af-
firm the Board’s decision.
                       AFFIRMED
                          COSTS
   Each party shall bear its own costs.