Case: 20-2141 Document: 51 Page: 1 Filed: 07/14/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
FLASH-CONTROL, LLC,
Plaintiff-Appellant
v.
INTEL CORPORATION,
Defendant-Appellee
______________________
2020-2141
______________________
Appeal from the United States District Court for the
Western District of Texas in No. 1:19-cv-01107-ADA, Judge
Alan D. Albright.
______________________
Decided: July 14, 2021
______________________
DEREK DAHLGREN, Devlin Law Firm LLC, Wilmington,
DE, argued for plaintiff-appellant. Also represented by
TIMOTHY DEVLIN, JAMES MICHAEL LENNON.
SONAL NARESH MEHTA, Wilmer Cutler Pickering Hale
and Dorr LLP, Palo Alto, CA, argued for defendant-appel-
lee. Also represented by JENNIFER JASMINE JOHN; JOSHUA
D. FURMAN, JOSEPH TAYLOR GOOCH, San Francisco, CA.
______________________
Case: 20-2141 Document: 51 Page: 2 Filed: 07/14/2021
2 FLASH-CONTROL, LLC v. INTEL CORPORATION
Before HUGHES, MAYER, and WALLACH *, Circuit Judges.
HUGHES, Circuit Judge.
Flash-Control, LLC, appeals from the Western District
of Texas’s final judgment granting Intel Corporation’s mo-
tion for summary judgment and holding that the asserted
patents, U.S. Patent Nos. 8,531,880 and 8,817,537, were
invalid for lack of written description. Because we agree
that there was no triable issue of fact as to whether the ’880
and ’537 patents’ shared written description adequately
supported the patent claims, we affirm.
I
Flash-Control is the owner of the ’880 and ’537 patents,
both continuations of patent applications filed in 2010 and
2012, respectively. The ’880 and ’537 patents share a writ-
ten specification and are directed to computer memory sys-
tems, which can either be volatile or nonvolatile.
Nonvolatile memory—such as thumb drives, hard drives,
and compact discs—holds information after the system is
powered off. Volatile memory—such as static or dynamic
random-access memory—holds information only while the
system is powered. Flash memory is a type of nonvolatile
memory which organizes the data it stores in a hierarchy
of “blocks” composed of multiple “pages.” Flash memory is
used in memory cards, solid state drives, and similar prod-
ucts. Flash memory is technologically constrained in its
ability to read, write, or erase particular pages or blocks of
memory. In a flash memory system, data can be read at the
page level, but can only be erased at the block level. Thus,
an entire block of memory must be erased in order to over-
write a single page of data. The erasing and rewriting steps
needed to do so can be slow and, to compensate, some
*Circuit Judge Evan J. Wallach assumed senior sta-
tus on May 31, 2021.
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FLASH-CONTROL, LLC v. INTEL CORPORATION 3
memory systems will couple flash memory with volatile
memory for use as a temporary storage location or “buffer.”
The ’880 and ’537 patents claim a memory system that
reduces the number of writes to nonvolatile memory, en-
hancing performance. ’880 patent at 1:59–62. It is undis-
puted that claim 1 of the ’880 patent is representative of
the independent claims of both patents:
1. A memory system comprising:
a non-volatile memory organized to include a
plurality of blocks each having a plurality of
pages;
a volatile memory;
a first buffer capable of temporarily storing at
least one page;
a second buffer configured to receive information
associated with one or more write requests,
said write requests being associated with one
or more changes to one or more portions of a
page in said non-volatile memory, said one or
more portions being less than the entirety of
said page;
said system adapted to locate said page associ-
ated with said one or more write requests in
said non-volatile memory, and to selectively
write said page to said first buffer;
said system further adapted to locate in said
first buffer said one or more portions of said
page associated with said one or more write
requests. and to selectively write said one or
more portions to said volatile memory with-
out writing the entirety of said page in said
first buffer to said volatile memory;
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4 FLASH-CONTROL, LLC v. INTEL CORPORATION
said system further adapted to write said one or
more changes from said second buffer to said
volatile memory, thereby updating said one
or more updated portions from said volatile
memory to said first buffer, thereby updating
said page stored therein to include said one
or more changes associated with said one or
more write request; and
said system further adapted to write said up-
dated page from said first buffer to an erased
page in said nonvolatile memory.
’880 patent 4:62–5:27. In other words, claim 1 of the
’880 patent describes a five-step technique for modifying
data that is already stored on the memory in response to a
write request: (1) the nonvolatile memory reads out a page
of memory onto the first buffer; (2) the first buffer copies a
subset of the page to the volatile memory for modification;
(3) data from a write request stored on a second buffer is
used to modify the subset of the page in the volatile
memory; (4) the volatile memory writes the updated subset
into the page in the first buffer where it is combined with
the unmodified portions of the original page of memory;
(5) the first buffer writes the updated page back to an
erased page on the nonvolatile memory. Id.; Flash-Control,
LLC v. Intel Corp., No. 1:19-CV-01107,
2020 WL 4561591,
at *1 (W.D. Tex. July 21, 2020) (Decision).
Flash-Control filed suit against Intel in the Western
District of Texas on July 3, 2019. J.A. 33. Under the origi-
nal case schedule, a claim construction hearing was sched-
uled for April 1, 2020. J.A. 431. On February 5, 2020, after
notice to Flash-Control, Intel filed a “Motion for Summary
Judgment and Opening Claim Construction Brief.”
J.A. 432. Intel sought both summary judgment for lack of
written description and a determination that claim 1 of the
’880 patent is indefinite. J.A. 436 n.1. Flash-Control filed
its opening claim construction brief pursuant to the
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FLASH-CONTROL, LLC v. INTEL CORPORATION 5
original case schedule on February 5, 2020. Flash-Control
subsequently sought an extension to the summary judg-
ment briefing that would decouple summary judgment
from claim construction. The district court denied the re-
quest to separate claim construction from summary judg-
ment. J.A. 632. The parties agreed on a schedule to brief
both issues and submitted a “Joint Motion to Enter
Amended Markman Scheduling Order.” J.A. 618. On
March 15, 2020, the court granted the motion and ordered
the stipulated schedule for the combined proceeding, in-
cluding briefing and related discovery. J.A. 39.
On June 4, 2020, following expert discovery and full
briefing and a day before the scheduled hearing, the dis-
trict court issued a “Preliminary Determination and Con-
struction in Advance of MSJ/Markman Hearing” by email,
finding the claims invalid for lack of written description.
J.A. 410. On June 5, 2020, the court heard argument on the
motion for summary judgment. J.A. 203–54. At the end of
the hearing, the district court adopted its preliminary de-
termination and advised the parties that it would prepare
a written order providing the reasoning for its ruling. J.A.
249–52.
The district court’s written opinion issued on July 21,
2020. The court considered the ’880 patent’s specification
and found that there is no written description for the as-
serted claims. Decision at *8. In particular, the court found
that Flash-Control had failed to identify any disclosure,
with or without the testimony of its expert, that “shows a
second buffer that can store a write request,” as required
by step 3, or “the writing of a portion of a page to volatile
memory,” as required by step 2. Id. at *4. In ruling that
Flash-Control had failed to raise a genuine issue of mate-
rial fact, the court rejected the testimony of Flash-Control’s
expert, Dr. Bagherzadeh, because he “improperly relied on
the claims for written description support.” Id. at *8. The
district court also rejected Flash-Control’s arguments com-
bining multiple embodiments to derive written description
Case: 20-2141 Document: 51 Page: 6 Filed: 07/14/2021
6 FLASH-CONTROL, LLC v. INTEL CORPORATION
support as incorrect as a matter of law. Id. This appeal fol-
lowed.
II
We review a summary judgment decision in accordance
with the law of the appropriate regional circuit. Ineos USA
LLC v. Berry Plastics Corp.,
783 F.3d 865, 868 (Fed. Cir.
2015). The Fifth Circuit reviews a district court’s grant of
summary judgment de novo.
Id. (citing Triple Tee Golf, Inc.
v. Nike, Inc.,
485 F.3d 253, 261 (5th Cir. 2007)). Summary
judgment is appropriate when there is no genuine issue of
material fact and the moving party is entitled to judgment
as a matter of law. Fed. R. Civ. P. 56(a).
“The essence of the written description requirement is
that a patent applicant, as part of the bargain with the pub-
lic, must describe his or her invention so that the public
will know what it is and that he or she has truly made the
claimed invention.” AbbVie Deutschland GmbH & Co. v.
Janssen Biotech, Inc.,
759 F.3d 1285, 1298 (Fed. Cir. 2014).
“To satisfy the written description requirement, the appli-
cant must convey with reasonable clarity to those skilled in
the art that, as of the filing date sought, he or she was in
possession of the invention, and demonstrate that by dis-
closure in the specification of the patent.” Centocor Ortho
Biotech, Inc. v. Abbott Labs.,
636 F.3d 1341, 1348 (Fed. Cir.
2011) (internal quotations omitted). While the written de-
scription requirement does not require that the specifica-
tion recite the claimed invention in any particular way,
pointing to an “amalgam of disclosures” from which an ar-
tisan could have created the claimed invention does not
satisfy this requirement. Novozymes A/S v. DuPont Nutri-
tion Biosciences APS,
723 F.3d 1336, 1349 (Fed. Cir. 2013);
accord Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d
1336, 1352 (Fed. Cir. 2010). Instead, the specification must
present each claim as an “integrated whole.” Novozymes,
723 F.3d at 1349. Whether the written description ade-
quately supports a patent claim is a question of fact.
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FLASH-CONTROL, LLC v. INTEL CORPORATION 7
Vasudevan Software v. MicroStrategy, Inc.,
782 F.3d 671,
682 (Fed. Cir. 2015).
Flash-Control challenges the district court’s grant of
summary judgment on several grounds. We address each
in turn.
First, Flash-Control urges us to review the district
court’s exclusion of the testimony of its expert, Dr. Bagher-
zadeh, as unreliable. Appellant’s Br. 41. But we do not re-
view the exclusion of expert testimony de novo. District
courts have “broad discretion” in deciding whether to ex-
clude expert testimony. Guy v. Crown Equip. Corp.,
394 F.3d 320, 325 (5th Cir. 2004) (citing General Electric
Co. v. Joiner,
522 U.S. 136, 141–42 (1997)). Flash-Control
argues only that the district court should have credited
their expert. Appellant’s Br. 41–49. We detect no abuse of
discretion in the district court’s determination that
Dr. Bagherzadeh’s testimony was based on unreliable
methodology.
Next, Flash-Control argues that the district court con-
fused the differing legal standards governing summary
judgment and claim construction in its summary judgment
decision. Appellant’s Br. 49. But we discern no such error
in the district court’s decision. Flash-Control additionally
suggests that because various docket items and hearings
were not labeled with “summary judgment,” Flash-Control
was surprised by the resolution of the summary judgment
issue in the combined proceeding. Id. at 42, 50. Given the
procedural history detailed above, however, we find it im-
plausible that Flash-Control was surprised by the com-
bined proceeding. 1
1 To the extent that Flash-Control challenges the
district court’s decision to combine the issues of summary
judgment and claim construction in a single proceeding,
Flash-Control fails to address the standard of review
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8 FLASH-CONTROL, LLC v. INTEL CORPORATION
Flash-Control repeatedly asserts that the district court
“sid[ed] with Intel” and improperly viewed the evidence in
the light most favorable to Intel. See, e.g., Appellant’s
Br. 14. But Flash-Control does not explain what specific
reasonable inferences that court failed to draw in its favor,
and we find none in the district court’s decision. Viewing
the evidence in the light most favorable to Flash-Control,
we agree with the district court that Flash-Control has
failed to identify any disclosure that “shows a second buffer
that can store a write request,” as required by step 3, or
“the writing of a portion of a page to volatile memory,” as
required by step 2. Decision at *4. While Figures 6 and 9 of
the ’880 patent show one or two buffers being paired with
“NAND memory” (a type of nonvolatile memory) there is
nothing in the figures or text description of the figures to
indicate whether those buffers act as the second buffer—
i.e., whether they can store a write request to modify a por-
tion of a page as required by step 3. J.A. 514–16 ⁋ 60. Flash-
Control’s arguments concerning Figures 3 and 12 of the
’880 patent similarly point to items that could, with more,
be the second buffer but fail to point to anything specifying
that those items perform the second step of the claim. The
specification language referring to two “new commands”—
“[r]ead byte out of page” and “[w]rite byte out of page”—
comes the closest to supporting the claimed technique of
operating on a portion of a page as required by step 2. ’880
patent 4:30–36. But the specification never elaborates on
these “new commands” and does not indicate whether they
interact with any buffer or volatile memory.
governing that issue, abuse of discretion. Nuance
Commc’ns, Inc. v. Abbyy USA Software House, Inc.,
813 F.3d 1368, 1372 (Fed. Cir. 2016). We find no abuse of
the district court’s discretion here in combining these pro-
ceedings.
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FLASH-CONTROL, LLC v. INTEL CORPORATION 9
Flash-Control also argues that the district court en-
gaged in improper factfinding by stepping into the role of
an artisan in its analysis of what an artisan would under-
stand about the specification. Appellant’s Br. 26–28. The
district court stated that it drew upon its own knowledge
in its opinion, and while that would ordinarily constitute
legal error, here the district court did so only after finding
that Flash-Control had failed to show a triable issue of fact
as to written description on the evidence of record. Deci-
sion at *8 n.1. The district court expressly drew on its own
knowledge only in order to expound upon additional rea-
sons for rejecting Flash-Control’s arguments. Although the
better course would have been to omit that additional rea-
soning, the court’s separate findings made under the
proper summary judgment standard are sufficient to sup-
port the judgment. And because we review judgments, not
opinions, Stratoflex, Inc. v. Aeroquip Corp.,
713 F.2d 1530,
1540 (Fed. Cir. 1983), and the judgment in this case was
based upon the evidence of record, we conclude that the in-
clusion of that additional reasoning was not reversible er-
ror.
Flash-Control next argues that the district court im-
properly required it to show that a single embodiment of
the ’880 patent “disclose[d] all claim limitations for written
description.” Appellant’s Br. 25, 54. Flash-Control’s reli-
ance on LizardTech, Inc. v. Earth Resource Mapping, Inc.,
424 F.3d 1336, 1345 (Fed. Cir. 2005), to support the propo-
sition that combining disparate embodiments may properly
demonstrate written description support is misplaced. This
court held in LizardTech that “[a] claim will not be invali-
dated on section 112 grounds simply because the embodi-
ments of the specification do not contain examples
explicitly covering the full scope of the claim language,”
and that the written description is viewed from the per-
spective of an artisan who brings “the knowledge of what
has come before.”
Id. But that holding did not alter this
court’s precedent stating that “enough must be included [in
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10 FLASH-CONTROL, LLC v. INTEL CORPORATION
the specification] to convince a person of skill in the art that
the inventor possessed the invention.”
Id. A patent owner
cannot show written description support by picking and
choosing claim elements from different embodiments that
are never linked together in the specification. In Novo-
zymes, we explained that the elements of a claim must be
treated as an “integrated whole rather than as a collection
of independent limitations.” 723 F.3d at 1349. The written
description requirement is not met when, as here, the spec-
ification provides at best disparate disclosures that an ar-
tisan might have been able to combine in order to make the
claimed invention. Ariad Pharms.,
598 F.3d at 1352. We
consequently conclude that the district court did not err in
finding that no reasonable juror could find that the written
description, including its various embodiments, supported
all elements of claim 1 of the ’880 patent. 2
Finally, Flash-Control argues that the district court
improperly considered arguments raised for the first time
in Intel’s summary judgment reply brief, which Flash-Con-
trol did not have the opportunity to respond to. Appellant’s
Br. 28–29. We disagree. The scope of Intel’s summary judg-
ment reply brief is limited to issues raised in its opening
brief and Flash-Control’s opposition brief. The portions of
Intel’s reply brief cited by the district court in its opinion
were rebuttal arguments only. See Decision at *8. Specifi-
cally, Intel’s reply brief responds to Flash-Control’s reli-
ance on its expert’s testimony and Flash-Control’s
combination of different embodiments and examples to de-
rive support for the claims without any evidence to show
that an artisan would have understood these pieces to
2 Indeed, even Flash-Control’s expert conceded that
combining the relevant elements of Figures 3 and 9 to ar-
rive at the second buffer capable of storing a write request
would be “an engineering feat.” J.A. 314–15 (236:19–
237:7).
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FLASH-CONTROL, LLC v. INTEL CORPORATION 11
teach the claims as a whole. J.A. 133–38. Flash-Control’s
opposition brief included both points. J.A. 88–90. Flash-
Control also relied in its opposition brief on Dr. Bagher-
zadeh’s testimony. See, e.g., J.A. 92. It was appropriate for
Intel to respond to Flash-Control’s reliance on both types
of evidence in its reply brief. Additionally, Flash-Control
asserts that it was unfairly surprised by Intel’s reply argu-
ments concerning the requirement that the written de-
scription support the claims as an “integrated whole.”
Appellant’s Reply Br. 8. We find this unpersuasive. Intel’s
citation to Novozymes and its “integrated whole” language
was in direct response to Flash-Control’s attempt to derive
written support by piecemeal support for elements of claim
1, rather than all the elements of claim 1 together.
III
We have considered Flash-Control’s remaining argu-
ments and find them unpersuasive. The district court’s de-
cision granting summary judgment for lack of written
description is affirmed.
AFFIRMED
