       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

                   NETLIST, INC.,
                     Appellant

                           v.

          DIABLO TECHNOLOGIES, INC.,
                     Appellee
              ______________________

           2016-1742, 2016-1743, 2016-1744
               ______________________

   Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2014-00882, IPR2014-00883, IPR2014-01011.
                ______________________

                Decided: July 25, 2017
                ______________________

    SETH W. LLOYD, Morrison & Foerster LLP, Washing-
ton, DC, argued for appellant. Also represented by BRIAN
ROBERT MATSUI; MEHRAN ARJOMAND, Los Angeles, CA.

    FABIO E. MARINO, McDermott, Will & Emery LLP,
Menlo Park, CA, argued for appellee. Also represented by
BARRINGTON EARL DYER; NATALIE A. BENNETT, Wash-
ington, DC.
                ______________________
2                NETLIST, INC.   v. DIABLO TECHNOLOGIES, INC.



    Before DYK, TARANTO, and HUGHES, Circuit Judges.
HUGHES, Circuit Judge.
    Netlist, Inc. appeals from the final written decisions
of the Patent Trial and Appeal Board finding that claims
15-17, 22, 24, 26, and 31-33 of U.S. Patent No. 7,881,150
and claims 1, 16, 17, 24, and 30-31 of U.S. Patent No.
8,081,536 are unpatentable. Because the Board errone-
ously construed the terms “selectively electrically cou-
pling” and “selectively isolating/isolate,” we vacate the
Board’s decisions and remand for further proceedings.
                            I
    U.S. Patent Nos. 7,881,150 and 8,081,536 cover de-
signs for a memory module in a computer system. A
memory module is a computer board that holds random-
access memory (“RAM”) devices and associated circuitry.
Computer systems use RAM devices for short-term data
storage to run active programs, such as the operating
system or an Internet browser. Within each memory
module, individual memory devices are organized into
ranks. Each memory rank is in turn connected to a
circuit that interfaces with the rest of the computer.
    The total capacity of the memory module can be ex-
panded by increasing the number of memory devices on
the module. At the time of invention, however, many
computers only supported one or two rank modules, thus
limiting the total capacity of the module. Adding more
memory devices also increases the electrical load on the
computer system, which can degrade overall performance.
    The ’150 and ’536 patents claim to solve this problem
by providing a circuit that only activates memory devices
the computer is accessing, while electrically isolating
memory devices that are not being accessed. This allows
higher capacity memory modules (i.e. those with more
ranks) to interact with computer systems that would
otherwise only support modules with fewer ranks. More-
NETLIST, INC.   v. DIABLO TECHNOLOGIES, INC.                  3



over, isolating inactive ranks of memory also reduces
electrical load, which allows the computer system to “run
faster and with improved signal integrity.”
    The ’150 and ’536 patents share the same specifica-
tion and overlapping claim terms. Claim 15 of the ’150
patent recites, in relevant part,
    A circuit configured to be mounted on a memory
    module so as to be electrically coupled to a first
    double-data-rate (DDR) memory device having a
    first data signal line and a first data strobe line,
    to a second DDR memory device having a second
    data signal line and a second data strobe line, and
    to a common data signal line . . .
    wherein the circuit is configurable to be respon-
    sive to the set of input signals by selectively elec-
    trically coupling the first data signal line to the
    common data signal line and selectively electrical-
    ly coupling the second data signal line to the
    common data signal line . . . .
Claim 22 of the ’150 patent recites, in relevant part,
    A circuit configured to be mounted on a memory
    module . . .
    wherein the circuit is configurable to be respon-
    sive to the set of input signals by selectively isolat-
    ing one or more loads of the DDR memory devices
    from the computer system . . . .
Claim 1 of the ’536 patent recites, in relevant part,
    A circuit configured to be mounted on a memory
    module . . . the circuit including at least one con-
    figuration in which the circuit is configured to . . .
    selectively isolate a load of the DDR memory cir-
    cuits of at least one rank of the first number of
    ranks . . . .
4                 NETLIST, INC.   v. DIABLO TECHNOLOGIES, INC.



    Diablo filed two petitions against the ’150 patent and
a third petition against the ’536 patent. The Board insti-
tuted review on all three IPRs. The Board construed
various terms, including “circuit configured to be mounted
on a memory module,” “selectively isolating/isolate,” and
“selectively electrically coupling.”
    Based on its constructions, the Board found that
claims 15-17, 22, 24, 26, and 31-33 of the ’150 patent and
claims 1, 16, 17, 24, and 30-31 of the ’536 patent were
unpatentable over the prior art. Netlist timely appealed,
and we have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
                             II
    On appeal, Netlist argues the Board incorrectly con-
strued “selectively electrically coupling,” “selectively
isolating/isolate,” and “circuit configured to be mounted
on a memory module.”
    “We review the Board’s ultimate claim constructions
de novo and its underlying factual determinations involv-
ing extrinsic evidence for substantial evidence.” Microsoft
Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297 (Fed. Cir.
2015). In an IPR for an unexpired patent, the Board must
construe terms according to their broadest reasonable
construction. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
2131, 2144 (2016).
                             A
     We start with the term “circuit configured to be
mounted on a memory module,” which appears in both the
’150 and ’536 patents. The Board construed this term as
“circuitry configured to be mounted on at least a portion of
a memory module,” which encompasses “at least a portion
of circuitry configured to be mounted on at least a portion
of a memory module.” J.A. 13, 66, 108.
    Netlist argues that a “circuit configured to be mount-
ed on a memory module” means the entire circuit must be
NETLIST, INC.   v. DIABLO TECHNOLOGIES, INC.              5



on a single memory module. Netlist also contends that
allowing any portion of the circuit to be mounted else-
where would undermine the ability to easily swap out
memory modules in the computer system.
    We disagree. Nothing in the claim language or speci-
fication requires the “entire circuit” to be mounted on the
memory module. As the Board correctly noted, the pa-
tents broadly define circuit as a term that includes “a
configuration of electrical components or devices.” And
although Netlist argues the claim term “mounted” indi-
cates the entire circuit must be mounted on a single
memory module, Netlist fails to show why “mounted”
must refer to the entire circuit, rather than a portion of
the circuitry. Similarly, although Netlist asserts the
ability to swap out memory modules is one advantage of
the claimed invention, Netlist does not provide any com-
pelling reason why the claim is limited to embodiments
with that feature. Accordingly, we agree with the Board’s
construction of “circuit configured to be mounted on a
memory module.”
                               B
    Next, we turn to “selectively electrically coupling,”
which appears in the ’150 patent. The Board construed
“selectively electrically coupling” as “making a selection
between at least two components so as to transfer power
or signal information from one selected component to at
least the other selected component.”
    Netlist contends the construction should be “coupling
in response to a selection.” According to Netlist, the
Board’s construction is incorrect because it would be
satisfied if the circuit selected among multiple compo-
nents without electrically coupling or decoupling the
identified data signal lines. Netlist also contends that
“selectively electrically coupling” cannot occur in circuits
where the first/second signal data lines share a hard-
wired connection with the common data signal line.
6                 NETLIST, INC.   v. DIABLO TECHNOLOGIES, INC.



     We agree that “selectively electrically coupling” refers
to coupling or decoupling specific data lines, and not the
overall process of selecting components. Accordingly, we
adopt Netlist’s construction of this term as “coupling in
response to a selection.” Notably, “the context in which a
term is used in the asserted claim can be highly instruc-
tive” for claim construction. Phillips v. AWH Corp., 415
F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). Here, the
context of “selectively electrically coupling” makes clear
that the term refers to the connection between the
first/second data signal line and the common data signal
line. Claim 15, for example, recites a circuit that re-
sponds to input signals by “selectively electrically coupling
the first data signal line to the common data signal line.”
(emphasis added). Because the claims call out exactly
which two data lines must be coupled, the term “selective-
ly electrically coupling” cannot be reasonably interpreted
as “making a selection between at least two components.”
Stated otherwise, the “selection” is to couple or uncouple
the first/second data signal line to the common signal line,
not to select among multiple components.
    Diablo contends the Board’s construction is correct be-
cause the circuit necessarily selects between memory
devices. At a high level, we agree the circuit activates
some memory devices and not others. But the claim term
is directed to how the circuit performs that function,
which is by coupling or decoupling specific data signal
lines. In that context, the term “selectively electrically
coupling” refers to the connection between the specific
data signal lines, not the overall selection process.
    To be clear, we do not limit “selectively electrically
coupling” to a switch or other specific component. Nor do
we hold that “selectively electrically coupling” necessarily
precludes a hard-wired connection. Indeed, the parties
below raised factual disputes about whether prior art
circuits perform selective electrical coupling, even under
Netlist’s construction. See, e.g., J.A. 1273. But because
NETLIST, INC.   v. DIABLO TECHNOLOGIES, INC.              7



the Board based its conclusions of obviousness and antici-
pation on an erroneous construction, the Board must
assess these factual issues on remand.
                               C
    Finally, we turn to “selectively isolating/isolate,”
which appears in both the ’150 and ’536 patents. Alt-
hough the same term is used in both patents, the Board
construed them differently. For the ’150 patent, the
Board construed “selectively isolating” as “making a
selection between at least two components and not trans-
ferring power or signal information from one selected
component to the other selected component.” But for the
’536 patent, the Board construed “selectively isolate” as
“electrical separation of a selected component from anoth-
er component” 1 Netlist contends the term should be
construed as “isolate/isolating in response to a selection.”
      Netlist argues the Board’s constructions are wrong
because its analysis is based on a flawed interpretation of
“selectively electrically coupling.” We agree. The specifi-
cation uses the terms “coupling” and “isolating” in a
similar fashion. With respect to the ’150 patent, the
Board’s construction of “selectively isolating” seems to be
based on its erroneous construction of “selectively electri-
cally coupling.” The Board simply changed “making a
selection . . . to transfer power” into “making a selection
. . . and not transferring power.” Because we find the
Board’s analysis of “selectively electrically coupling” was
flawed, we also conclude the Board’s construction of
“selectively isolating/isolate” was erroneous.



    1    There appears to be a typographical error in the
Board’s final written decision for the ’536 patent. This
construction is taken from the Board’s institution deci-
sion, which the Board stated that it intended to adopt for
its final written decision.
8                 NETLIST, INC.   v. DIABLO TECHNOLOGIES, INC.



    Although the Board adopted a different construction
for the ’536 patent, it is unclear if the Board intended to
give this term a different meaning. Indeed, the Board
applied both constructions in a similar fashion to the prior
art. Because the record is unclear as to how the Board
actually interpreted and applied “selectively isolat-
ing/isolate,” we also vacate the Board’s invalidity findings
with respect to the ’536 Patent. On remand, the Board
must construe “selectively isolating/isolate” in view of the
correct construction for “selectively electrically coupling,”
as discussed in the previous section.
                             D
    Because we find the Board’s claim constructions were
erroneous, we vacate the Board’s opinions with respect to
the ’150 and ’536 patents. We remand for further pro-
ceedings consistent with this opinion.
             VACATED AND REMANDED
    Costs to Appellant.
