Eliyahou Harari v. Shane C. Hollmer

I'll research this case, but first note a significant framing issue I need to verify: the metadata describes an interference appeal, not an infringement suit. Let me confirm the details.

Now let me pin down the parties' affiliations, the '601 patent's subject matter, and the priority chain.

Now let me check the assignments, the interference particulars, counsel, and how the '601 patent was used commercially.

Correction to the framing (important)

The metadata describes a patent interference appeal, not a patent infringement action. Harari v. Hollmer, 602 F.3d 1348 (Fed. Cir. 2010) (Appeal No. 2009-1406), is a decision reviewing the Board of Patent Appeals and Interferences ("BPAI") in Interference No. 105,606, a pre-AIA 35 U.S.C. § 135 priority contest between two pending claims to flash-memory technology. There is no accused product, no infringement plaintiff/defendant, no district court, no venue analysis, and no damages case — jurisdiction rested on 28 U.S.C. § 1295(a)(4)(A) (appeal from a Board decision in an interference). Everything below is framed accordingly; I flag the litigation-template items that simply do not exist here rather than inventing them.

Parties and technology

The contest pitted Eliyahou Harari and Sanjay Mehrotra — co-founders of SanDisk Corporation (Harari was SanDisk's co-founder/CTO and the named inventor on foundational floating-gate and multi-state flash patents; Mehrotra later became SanDisk's CEO) — against Shane C. Hollmer and Lee E. Cleveland, the inventors of U.S. Patent No. 5,828,601, "Programmed Reference," issued October 27, 1998, and assigned on its face to Advanced Micro Devices, Inc. of Sunnyvale, California (patent PDF). So both sides were operating-company semiconductor manufacturers, not NPEs — this is a contest between two competing flash-memory patent portfolios. (One litigation-support CV indexed in a later PTAB filing lists this interference as work "retained by Spansion," consistent with AMD's 2003 spin-off of its flash business into Spansion, but I could not verify the '601 assignment chain in USPTO assignment records from the sources available, so treat the Spansion real-party-in-interest point as unconfirmed.)

On the merits the two inventions are adjacent but distinct. The '601 patent claims a "programmable reference" for sensing multi-level or low-Vcc flash EEPROM cells: reference cells with programmed floating-gate thresholds, biased identically to array cells during read so the threshold delta stays constant as V_CC varies, programmed at test time by the manufacturer. The SanDisk side was application serial no. 09/310,880 (the "'880 application"), "Flash EEPROM System," which claims priority through a chain of continuations/divisionals back to application 07/337,566 (filed April 13, 1989) — the application family behind SanDisk's foundational multi-state flash and selective-sector-erase patents (the '338, '517, '752, '747 family; see, e.g., US 6,373,747 and the ITC's Pub. 3046). Interference No. 105,606 therefore decided priority: whether SanDisk's claims reached back to April 1989 (predating Hollmer's conception) or only to a December 1996 filing.

What was actually litigated, and the posture

The disputed issue was not infringement but priority and written description. Application '880 was filed with a photocopy of the '566 application, a transmittal sheet, and a preliminary amendment that fixed an incorporation-by-reference statement. The original '566 text had incorporated a co-pending application, 07/337,579 ("the '579 application"), only as "filed on the same day as the present application," plus title and inventors — no serial number, because none had yet issued. The examiner and then the BPAI held that statement too ambiguous to incorporate the '579 application, treated the preliminary amendment as new matter under § 132, granted Hollmer's § 112 ¶ 1 motion, entered judgment against Harari, and dismissed Harari from the interference as the junior party. The Federal Circuit reversed, holding that at the "initial filing stage," the test is "whether the identity of the incorporated reference is clear to a reasonable examiner in light of the documents presented" — and that a reasonable examiner, with the transmittal sheet and preliminary amendment in hand, would have understood the reference. 602 F.3d at 1352–54; opinion PDF; CourtListener.

Two points about posture matter for accuracy. First, the "terminated 2010-04-19 / reversed BPAI" metadata captures only the first appeal; the dispute continued. On remand the Board applied Harari I and ruled for Harari (2011), Hollmer appealed again, and in Hollmer v. Harari, 681 F.3d 1351 (Fed. Cir. 2012) (opinion by Judge Prost), the court reversed again, holding that the "reasonable examiner" standard was confined to amendments at the initial filing stage, and that for § 120 continuity across the unamended intervening '838 and '768 applications the correct test is whether one of ordinary skill in the art could identify the incorporated material — which the "same day as the present application" language failed. (opinion; NLJ summary). Net effect: Hollmer's '601 side ultimately prevailed on priority. Second, there is no "venue" to discuss — the only forum choices were the USPTO (Alexandria, Virginia) and the Federal Circuit, which has exclusive appellate jurisdiction over Board decisions; no judge or division assignment exists in the district-court sense, and I could not confirm the Harari I panel composition from the sources I reached.

Why the case is notable

• It is the leading modern authority on incorporation by reference and § 120 priority chains — a doctrine that decides patent life or death in IPRs. Harari I's "reasonable examiner" gloss and its footnote 2 (ordinary-skill standard for issued patents) are still briefed to the PTAB today; I found petitions citing Harari I directly on priority-chain disputes (e.g., a PTAB petition quoting 602 F.3d at 1353 n.2).
• It illustrates the "clerical drafting" risk that destroys portfolio value: a single "same day as the present application" phrase in a 1989 application nearly cost SanDisk seven years of priority. That is why the case is standard reading in patent-prosecution practice (see McDermott's practice note and the Lexology/IPO Report commentary).
• Commercial stakes were large even without damages. Both sides were flash-memory operating companies at the center of the 2000s NAND/NOR wars; SanDisk's 1989 priority family underpinned its licensing and enforcement campaigns (including the SanDisk–STMicroelectronics litigation and ITC investigations referenced in the ITC's Pub. 3046), while AMD's flash patent estate moved to Spansion. Priority in this interference bore directly on which company's flash reference/sensing claims dominated.
• It is a companion to a cluster of related SanDisk incorporation-by-reference appeals, including Harari v. Lee, 656 F.3d 1331 (Fed. Cir. 2011), cited in Harari II — useful context if you are tracing the doctrine rather than the commercial dispute.

Sourcing caveats: the party names, court, appeal number, holding, and the 2012 sequel are well documented (Federal Circuit opinions; CourtListener; FindLaw; National Law Review; Willamette Law Online). Items I could not verify from accessible sources and would not assert: trial-level counsel of record, the exact declaration date of Interference No. 105,606, whether Spansion (rather than AMD) was the named real party in interest, and the ultimate disposition of the '880 application after 2012. If you need those, they would come from PAIR/Patent Center, USPTO assignment records, and the Board's interference file rather than from any opinion.

I'll research this matter. Note up front: the docket metadata describes an interference appeal, not a district-court infringement suit — so several of the beats you asked about (Markman, IPR stays) may not exist. Let me verify.

Now let me dig into the interference record, the second appeal, and any parallel proceedings.

Threshold correction: this was never an infringement suit

The metadata is accurate about the Federal Circuit appeal, but the framing in your request doesn't fit the record. Harari v. Hollmer is a pre-AIA patent interference appeal under 35 U.S.C. § 141, not a district-court infringement action. There was:

• No complaint, answer, or counterclaims (the interference analogue is a party's motion — Hollmer's § 112 motion vs. Harari's priority motion);
• No Markman/claim construction (the only "construction"-type issue was the legal sufficiency of an incorporation-by-reference statement);
• No discovery milestones in the FRCP sense (interference motions practice and priority testimony, not document production);
• No trial, verdict, JMOL, fees, or settlement;
• No IPR/PGR — impossible on these dates. IPRs only became available 2012-09-16; this dispute was already on its second Federal Circuit appeal by then.

What follows traces the real chronology. Note also that the metadata's "Terminated: 2010-04-19" captures only the first appeal; the dispute continued through a second appeal in 2012 and back to the Board.

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The parties and the technology

• Hollmer side: Shane C. Hollmer and Lee E. Cleveland, inventors of U.S. Patent No. 5,828,601 ("Programmed Reference," a programmable reference cell scheme for multi-density / low-Vcc flash EEPROM arrays), issued 1998-10-27, assigned to Advanced Micro Devices, Inc. (patent PDF). Hollmer was the senior party (patentee).
• Harari side: Eliyahou Harari and Sanjay Mehrotra, inventors on Application No. 09/310,880 ("the '880 application"), the junior party.
• Technology overlap: both sides claimed subject matter tracing to Harari's April 1989 flash-memory work; the '880 application tried to reach back to the 1989-04-13 filing date of Application No. 07/337,566 ("the '566 application") through a four-link chain: '566 (1989-04-13) → '838 → '768 → '708 (1996-12-20) → '880.
• The pivot for everything: the '566 application incorporated by reference a same-day Harari application, No. 07/337,579 ("the '579 application"), identified only by title, inventors, and the phrase "filed on the same day as the present application."

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Chronological developments

1989–1999 — The facts that generated the dispute (pre-litigation)

Sourcing note: the '880 filing date is consistently given only as serial 09/310,880; I did not independently confirm the exact 1999 filing day.

Interference No. 105,606 — pleadings analogue

BPAI decision (first instance), circa early 2009 (exact date unconfirmed; appeal docketed as No. 2009-1406): The Board agreed with the examiner that "one could not tell from the original disclosure whether the incorporation language referred to an application filed on the same day as the '566 application, or on the same day as the '880 application." It granted Hollmer's motion, held Harari's claims unpatentable, and entered judgment against Harari, then dismissed Harari's priority motion for lack of standing to proceed further in the interference.

First Federal Circuit appeal — Harari v. Hollmer, No. 2009-1406 (602 F.3d 1348)

• Decided 2010-04-19; jurisdiction under 28 U.S.C. § 1295(a)(4)(A). (opinion PDF; CourtListener)
• Holding: reversed the BPAI. "[T]he '880 application as filed adequately incorporates the '579 application by reference, and does not constitute new matter."
• Two legal errors identified:

1. The Board failed to compare the preliminary amendment's content against the initial parent application, as MPEP 201.07 requires — the amendment was cut-and-paste from '579, so nothing "would constitute new matter if inserted in the original application."
2. The Board applied the wrong standard. The correct test at the initial filing stage is whether "the identity of the incorporated reference is clear to a reasonable examiner in light of the documents presented" — i.e., whether a reasonable examiner "would be so befuddled … that he could not determine what document was intended to be incorporated."

• Critical footnote 1: Hollmer conceded that if the '579 application was properly incorporated, the '880 application as amended contained no new matter. That concession collapsed the § 112 defense once the incorporation question was resolved.
• The court also rejected the Board's policy suggestions (file a new declaration; don't file continuations as photocopies) as not legally required.
• **Dis

Threshold note on framing

This was not a patent‑infringement action. It was an appeal from Patent Interference No. 105,606 between Harari/Mehrotra (junior party, application 09/310,880) and Hollmer/Cleveland (senior party, U.S. Patent No. 5,828,601). Harari was the appellant, not a plaintiff. Treating "plaintiff" as Harari, the counsel of record on the 2009‑1406 appeal were:

Counsel of record for Eliyahou Harari (and co‑appellant Sanjay Mehrotra)

No local counsel (the Federal Circuit has no local‑counsel requirement) and no in‑house counsel appeared of record. The prosecution‑side firm Fliesler Meyer LLP (Martin C. Fliesler and Joseph P. O'Malley, San Francisco) appears in the 2012 appeal as of counsel on the Hollmer/Cleveland side, not Harari's — so it should not be listed for Harari.

Sourcing and confidence

• Confirmed: Timothy R. Volpert's appearance in No. 09‑1406 — Justia Federal Circuit docket, https://dockets.justia.com/docket/circuit-courts/cafc/09-1406 ("Represented By: VOLPERT, TIMOTHY R.").
• Confirmed for the same client team, one appeal later: William A. Birdwell (arguing), Timothy R. Volpert, and Scott E. Warnick for appellees Harari/Mehrotra — Hollmer v. Harari, No. 2011‑1276 (Fed. Cir. June 7, 2012), counsel block reproduced at FindLaw, https://caselaw.findlaw.com/summary/opinion/us-federal-circuit/2012/06/07/[259237](/patent/259237).html; opinion at https://www.courtlistener.com/opinion/[615437](/patent/615437)/hollmer-v-harari/.
• Not independently verified: the counsel block printed in the 2010 slip opinion itself (602 F.3d 1348) was not retrievable in the search results I could access; Birdwell's and Warnick's participation in 09‑1406 specifically is inferred from the continuous Davis Wright Tremaine representation of Harari across both appeals and from Volpert's confirmed 09‑1406 appearance. I could not pull the PACER docket sheet for 09‑1406 directly, so I cannot quote individual appearances (e.g., entry numbers for notices of appearance). If you need entry‑level citations, the PACER docket for No. 2009‑1406 should be pulled.
• No sealed filings are implicated in counsel identification; Federal Circuit dockets of this era list counsel publicly.

I'll dig into this, but I have to flag the premise up front: there is no "defendant" in this matter — it's an interference appeal, not an infringement action. I'll research counsel of record for the appellees/respondents (the Hollmer side) instead, and note where records are unavailable.

Now let me get the 2010 Harari I counsel listing and verify firm affiliations.

Now the key gap: counsel for the Hollmer/Cleveland side in the 2010 appeal (No. 2009-1406), where they were appellees.

Bottom line up front: the question doesn't fit this case

There are no "defendants" and no infringement docket to pull counsel from. As covered in the earlier sections, this is an interference appeal — Interference No. 105,606, SanDisk-side inventors (Harari/Mehrotra, application 09/310,880) versus AMD-side patentees (Hollmer/Cleveland, U.S. Patent No. 5,828,601). There is no PACER civil docket, no complaint, no answer, no appearances, and no local-counsel rule (the Federal Circuit has no local-counsel requirement). The functional analogue of "defense counsel" is counsel for the Hollmer/Cleveland side — appellees in the 2010 appeal (No. 2009-1406, where Harari appealed) and appellants in the 2012 sequel (No. 2011-1276).

Below is what I could actually verify, and what I could not.

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1. Hollmer / Cleveland side (the "defense" side) — counsel of record in Hollmer v. Harari, No. 2011-1276 (Fed. Cir. 2012)

This is the only counsel block I could source verbatim. Per the opinion's counsel listing (FindLaw, No. 2011-1276; mirrored at eLawyers, 681 F.3d 1351):

Structural read: the Hollmer side split the work — a Washington appellate firm (MoFo) on the brief and argument, with the patent boutique that knew the prosecution record (Fliesler Meyer) as of counsel. That is a common division in Federal Circuit appeals from the Board.

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2. Harari / Mehrotra side (appellees in 2012; the "plaintiff-side" analogue)

From the same counsel block:

So the SanDisk side (Harari/Mehrotra) was represented by Davis Wright Tremaine, and the AMD/Spansion side by MoFo + Fliesler Meyer. That is a useful data point given the earlier section's unresolved question about which entity was the real party in interest — the counsel configuration is consistent with an operating-company defense, but I did not locate a filing confirming whether AMD or Spansion was the named RPI.

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3. The 2010 appeal (No. 2009-1406) — counsel NOT verified

This is the appeal the metadata describes, and I could not retrieve its counsel block. The CourtListener PDF of the opinion, the Patent Case Watch reproduction, the eLawyers/Cetient/Midpage mirrors, and the vLex record I reached all reproduce the opinion text without the "Counsel" front matter, and FindLaw's page for the 2010 decision did not surface in my searches before I ran out of research steps. I therefore decline to guess who argued for Hollmer in 2010.

What can be inferred (and labeled as inference, not fact): given that Fliesler Meyer appears as of counsel on the 2012 appellant brief and MoFo handled the 2012 opening brief, it is plausible that the Hollmer side's 2010 appellee brief was principally a Fliesler Meyer product, with MoFo added for the 2012 appeal after the Board ruled against them. That is unconfirmed and should be verified against the 2009-1406 docket (CAFC docket via PACER) or the bound joint appendix.

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4. BPAI / interference-level counsel — not available in accessible sources

Counsel of record before the Board in Interference No. 105,606 (i.e., the attorneys who filed the substantive motions, the § 112 ¶ 1 motion, and the priority motion) appear in the Board's papers and the interference file, not in the Federal Circuit opinions. I did not locate that record. Note one earlier lead: a litigation-support CV indexed in a later PTAB filing reportedly lists this interference as work "retained by Spansion" — consistent with the AMD→Spansion transition, but I could not tie that to a named attorney of record.

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5. Explicit "not found / do not assert" list

• No PACER civil docket exists — nothing is sealed, because there are no district-court filings at all.
• 2010 appeal counsel block: not retrieved. Unverified.
• Gregory W. Reilly's employer and title: unverified.
• Whether Fliesler Meyer or MoFo was counsel of record at the Board: unverified.
• Whether SanDisk in-house counsel appeared: no in-house attorney is named in either opinion.
• Post-2012 counsel (e.g., any further Board proceedings or the disposition of the '880 application): no counsel identified in the sources I reached.

6. Sources relied on

• Hollmer v. Harari, No. 2011-1276 (Fed. Cir. June 7, 2012) counsel listing — FindLaw; eLawyers; opinion text at Cetient; Finnegan, Last Month at the Federal Circuit (July 2012) PDF.
• Harari v. Hollmer, 602 F.3d 1348 (Fed. Cir. 2010) — opinion PDF; Patent Case Watch; Chisum CPLRG 0053 (panel: Prost, Bryson, Archer).
• Chordia/IPO Report commentary on Harari II — Lexology.

Recommended next step if you need the 2010 counsel confirmed: pull the CAFC docket for No. 2009-1406 and the appellee brief's cover page from PACER (Briefs/Documents tab), and pull the Board's file for Interference No. 105,606 via the USPTO's interference records.