Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 33
`Entered: December 10, 2013
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTELLECTUAL VENTURES MANAGEMENT, LLC
`Petitioner,
`
`v.
`
`XILINX, INC.
`Patent Owner.
`____________
`
`Case No. IPR2012-00023
`Patent 7, 994,609
`Case No. IPR2012-00020
`Patent 8,058,897
`____________
`
`Held: November 7, 2013
`____________
`
`Before SALLY C. MEDLEY, JUSTIN T. ARBES and KARL D.
`EASTHOM, Administrative Patent Judges.
`
`
`RECORD OF ORAL HEARING
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`LORI A. GORDON, ESQUIRE
`
`
`ROBERT GREENE STERNE, ESQUIRE
`
`
`OMAR AMIN, ESQUIRE
`
`
`Sterne Kessler Goldstein Fox
`
`
`571-272-7822
`
`
`
`
`Paper 33
`Entered: December 10, 2013
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTELLECTUAL VENTURES MANAGEMENT, LLC
`Petitioner,
`
`v.
`
`XILINX, INC.
`Patent Owner.
`____________
`
`Case No. IPR2012-00023
`Patent 7, 994,609
`Case No. IPR2012-00020
`Patent 8,058,897
`____________
`
`Held: November 7, 2013
`____________
`
`Before SALLY C. MEDLEY, JUSTIN T. ARBES and KARL D.
`EASTHOM, Administrative Patent Judges.
`
`
`RECORD OF ORAL HEARING
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`LORI A. GORDON, ESQUIRE
`
`
`ROBERT GREENE STERNE, ESQUIRE
`
`
`OMAR AMIN, ESQUIRE
`
`
`Sterne Kessler Goldstein Fox
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`
`
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`DAVID M. O’DELL, ESQUIRE
`
`
`DAVID L. McCOMBS, ESQUIRE
`
`
`Haynes and Boone, LLP
`
`
`2323 Victory Avenue, Suite 700
`
`
`Dallas, Texas 75219
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`
`16
`
`17
`
`
`
`The above-entitled matter came on for hearing on Thursday,
`November 7, 2013, commencing at 1:30 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`
`
`
`
`P R O C E E D I N G S
`
`- - - - -
`
`JUDGE MEDLEY: Good afternoon, everyone. This
`
`18
`
`is the hearing for IPR2012 -0020 and IPR2012-00023. So, we'll
`
`19
`
`proceed first with the hearing in IPR2012 -00020, and then we're
`
`20
`
`going to take a short break and let everybody reconvene and get
`
`21
`
`situated, and then we'll begin with the case for 00023.
`
`22
`
`So, at this time we would like the parties to please
`
`23
`
`introduce themselves, starting with the petitioner.
`
`24
`
`MS. GORDON: I'm Lori Gordon, I'll be arguing
`
`25
`
`today on behalf of the petitioner, Intellectual Ventures
`
`26
`
`Management. With me today is Robert Sterne, also from the law
`
` 2
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`firm of Sterne Kessler, and Omar Amin from the law firm of
`
`Sterne Kessler.
`
`JUDGE MEDLEY: Ms. Gordon, will you also be
`
`arguing for 00023?
`
`MS. GORDON: Yes.
`
`JUDGE MEDLEY: For patent owner?
`
`MR. O'DELL: Hello, my name is David O'Dell, I'm
`
`with the law firm Haynes and Boone, I'll be representing the
`
`patent owner XILINX. With me today is my co -counsel, David
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`McCombs, also with Haynes and Boone. Mr. McCombs will be
`
`11
`
`arguing for the first one, matter 00020, and then I will be
`
`12
`
`arguing for the second one, matter 00023.
`
`13
`
`14
`
`JUDGE MEDLEY: Great. Okay, thank you.
`
`So, as you recall from the order, each party gets 20
`
`15
`
`minutes total for the first case, for 00020, and each party may
`
`16
`
`reserve rebuttal time if they wish to.
`
`17
`
`So, we'll begin with the petitioner, and just let us
`
`18
`
`know would you like to reserve rebuttal ti me?
`
`19
`
`MS. GORDON: Yes, we would like to reserve ten
`
`20
`
`minutes.
`
`21
`
`JUDGE MEDLEY: Ten minutes, okay, great. You
`
`22
`
`may begin.
`
`23
`
`MS. GORDON: So, we've prepared demonstratives
`
`24
`
`that we may use to aid the discussion. We uploaded them, per
`
` 3
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`the order yesterday, to PRPS. We have extra copies if you need
`
`them.
`
`JUDGE MEDLEY: I think we're okay.
`
`MS. GORDON: Okay, great, thank you.
`
`So, there's two disputes that remain in this proceeding
`
`between the parties. The first is whether dependent claims 2
`
`through 7 are obvious over the Wennekamp reference. And the
`
`second issue in dispute is whether independent claim 8 is
`
`obvious over the combination of Wennekamp and Miller. Both
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`these issues are dispositive for all claims under review in this
`
`11
`
`proceeding.
`
`12
`
`So, turning to the first issue, whether claims 2
`
`13
`
`through 7 are obvious over Wennekamp. Claims 2 through 7
`
`14
`
`depend from claim 1. We'll put claim 1 up here for reference.
`
`15
`
`Patent owner does not dispute that claim 1 is unpatentable, based
`
`16
`
`on the grounds instituted for t his trial; however, the only
`
`17
`
`distinction that patent owner is raising relative to dependent
`
`18
`
`claims 2 through 7 is that Wennekamp does not teach or suggest
`
`19
`
`a multi-die IC, and this is a limitation that's only recited in
`
`20
`
`independent claim 1, a claim that pat ent owner does not dispute
`
`21
`
`is unpatentable over either Wennekamp or the combination of
`
`22
`
`Wennekamp and Miller.
`
`23
`
`JUDGE MEDLEY: So, just let me interrupt you real
`
`24
`
`quickly. So, how should we reconcile that? So, we've read in
`
`25
`
`your papers that patent owner ca ncels claim 1 and then perhaps
`
` 4
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`they concede that claim 1 is unpatentable, but then they argue
`
`that claims 2 through 7, which depend on 1, are patentable over
`
`the prior art, based on a feature that is in the cancelled claim 1.
`
`So, how is the Board to recon cile that?
`
`MS. GORDON: Right, and we also struggle with how
`
`to reconcile that. We note that claim 1, there were two grounds
`
`of rejection to claim 1, whether it was obvious over Wennekamp,
`
`standing alone, or obvious over Wennekamp in view of Miller.
`
`Our only way we can make this have any sense is that patent
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`owner may be conceding that the combination of Wennekamp
`
`11
`
`and Miller renders claim 1 unpatentable; however, that they don't
`
`12
`
`believe that Wennekamp standing on its own renders claim 1
`
`13
`
`unpatentable.
`
`14
`
`JUDGE MEDLEY: Okay, and we'll, of course, have
`
`15
`
`an opportunity to ask patent owner their position on that. Thank
`
`16
`
`you.
`
`17
`
`MS. GORDON: So, we're proceeding to address the
`
`18
`
`substance of patent owner's position. So, as we said, the patent
`
`19
`
`owner isn't individu ally arguing any of the features of the
`
`20
`
`dependent claims 2 through 7.
`
`21
`
`The evidence of record in this case, both from
`
`22
`
`Intellectual Ventures Management's expert, Morgan Johnson, and
`
`23
`
`patent owner's expert establishes, in fact, that a person of
`
`24
`
`ordinary skill in the art would have and could have modified the
`
`25
`
`Wennekamp reference as set forth by the petitioner. So, there's
`
` 5
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`no dispute between the parties that Wennekamp teaches multiple
`
`dies. The only dispute is really a person of ordinary skill in the
`
`art would have taken these dies and placed them on the same
`
`substrate in the same IC.
`
`So, as petitioner set forth, multiple die ICs were well
`
`known by the time the '897 patent was filed. IVM's expert not
`
`only said they were well known, he said they were in full bloom
`
`by 2010 when the '897 patent was filed. Patent owner's own
`
`expert, when asked at deposition, agreed that multiple ICs were
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`known for decades, as early as the 1980s or even earlier.
`
`11
`
`Multi-die ICs were well known by the time '897 was filed. Both
`
`12
`
`experts agree that it was within the routine abilities of a person
`
`13
`
`with ordinary skill in the art to make the multi -dies of
`
`14
`
`Wennekamp and put them on the same substrate or the same IC.
`
`15
`
`And Wennekamp provides ample motivation for a
`
`16
`
`person skilled in the art to do so. As petitioner pointed out,
`
`17
`
`Wennekamp describes a situation where long wires or circuits
`
`18
`
`degrades signal quality, and also limit clock frequency. And this
`
`19
`
`is an issue that Wennekamp recognized.
`
`20
`
`At deposition, patent owner's own expert, when
`
`21
`
`explaining what would motivate a designer to use a multi -die IC,
`
`22
`
`focused on these same issues that were presented in Wennekamp,
`
`23
`
`the fact that signal quality was important, and you wanted to
`
`24
`
`maximize clock speed. So, it appears that there's no dispute
`
`25
`
`between the experts from both sides that Wennekamp not only
`
` 6
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`could have been modified to place its multiple dies on a single
`
`substrate, that is in a single IC, but would have been modified by
`
`a person of ordinary skill in the art.
`
`So, moving on to the second i ssue, whether claim 8 is
`
`unpatentable over the combining --
`
`JUDGE MEDLEY: Can we go back to the first issue
`
`first?
`
`MS. GORDON: Sure.
`
`JUDGE MEDLEY: It seems to me that reading their
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`papers, patent owner's papers, that really what they're saying is
`
`11
`
`it's improper to go -- that perhaps we or the petitioner, or
`
`12
`
`whomever, are going beyond the statutory requirements of
`
`13
`
`311(b), 35 USC 311(b), it's not clear to us that really it's patent
`
`14
`
`owner's position that the claims are nonobvious over
`
`15
`
`Wennekamp, they haven't positively come out and said that,
`
`16
`
`they're just saying that the scope of the trial went beyond what
`
`17
`
`was allowed per statute. And I just want to hear your response
`
`18
`
`on that.
`
`19
`
`MS. GORDON: Right. So, in our reply, we addressed
`
`20
`
`patent owner's issue, the single reference 103 accommodation, or
`
`21
`
`single reference 103 rejections are allowed, and we provided
`
`22
`
`some case law from the Federal Circuit, particularly, you know,
`
`23
`
`in the Leapfrog versus Fisher -Price case, which didn't deal with
`
`24
`
`a single reference 103, but dealt with a situation where a
`
`25
`
`reference didn't teach a reader element. And the District Court
`
` 7
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`found that even though neither of the references taught a reader,
`
`that was such a well -known piece of circuitry that a person of
`
`skill in the art would have known that it was part or would have
`
`modified the references to include it. And the Federal Circuit
`
`affirmed, saying that that was, indeed, sufficient to establish a
`
`case of obviousness.
`
`We also supplied additional case law In Re:
`
`O'Farrell, where it supported a single reference 103 where the
`
`Patent Office supplied a missing teaching based on what was
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`well known and within the routine scale of a person of ordinary
`
`11
`
`skill in the art at the time the patent was filed. So, we disagree
`
`12
`
`with the patent owner 's legal position here.
`
`13
`
`JUDGE MEDLEY: And one other question I have
`
`14
`
`before we move on to claim 8 and those claims that depend from
`
`15
`
`claim 8. I believe you said earlier that the patent owner
`
`16
`
`concedes that Wennekamp does show dies, just not multiple dies.
`
`17
`
`18
`
`MS. GORDON: Correct.
`
`JUDGE MEDLEY: On an IC. I didn't understand that
`
`19
`
`that was their position. I thought that they were saying that
`
`20
`
`Wennekamp does not teach dies at all.
`
`21
`
`22
`
`23
`
`MS. GORDON: Yeah, and that --
`
`JUDGE MEDLEY: Is that correct?
`
`MS. GORDON: Yeah, that was not our understanding
`
`24
`
`from the patent owner's response. They never challenged that, or
`
`25
`
`didn't dispute the fact that Wennekamp showed dies. In fact, if
`
` 8
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`we look at, for example, figure 3 of Wennekamp, and it's hard to
`
`read, but page 11 o f our demonstratives, you can see that in each
`
`of these devices here, we have a CSB, which is a chip select
`
`block, or a chip select signal, indicating that each one of these is
`
`an individual chip or a die.
`
`So, our understanding from the briefing was that the
`
`parties didn't have a dispute that Wennekamp, indeed, disclosed
`
`individual dies.
`
`JUDGE MEDLEY: Just not showing how they're
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`arranged on a particular --
`
`11
`
`12
`
`MS. GORDON: Correct.
`
`JUDGE MEDLEY: I see. Okay, thank you. Please
`
`13
`
`proceed, then, with cla im 8 and those claims that depend on
`
`14
`
`claim 8.
`
`15
`
`MS. GORDON: So, in patent owner's response, patent
`
`16
`
`owner argued that Wennekamp did not disclose three specific
`
`17
`
`limitations found in claim 8 of the '897 patent. Specifically,
`
`18
`
`they argued that Wennekamp did n ot determine whether the
`
`19
`
`configuration data comprises segment of configuration data for
`
`20
`
`an additional IC, and they also argued that Wennekamp did not
`
`21
`
`disclose a first die configured to distribute the second segment of
`
`22
`
`the configuration data to the second d ie through the
`
`23
`
`configuration bus, and also that Wennekamp did not disclose that
`
`24
`
`the first die sent the segment of configuration data for the
`
`25
`
`additional IC through the first die configuration data output.
`
` 9
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`Now, these limitations actually correspond to
`
`identical limitations of claim 1, and patent owner did not dispute
`
`on the record that claim 1, that Wennekamp disclosed these
`
`elements when they're present in claim 1.
`
`So, again, I'm not sure how to reconcile that, but we'll
`
`address the merits as to claim 8. So, for the purposes of
`
`argument, we can deal with the distributing and the sending
`
`limitations together, and patent owner's argument for these two
`
`elements is really based on a misinterpretation of the explicit
`
`10
`
`language of claim 8.
`
`11
`
`So, patent owner's position in its response is that we
`
`12
`
`can see that the second segment of configuration data is set on
`
`13
`
`one bus, whereas the segment of configuration data there in the
`
`14
`
`last limitation is set on another bus. But if we look at the
`
`15
`
`explicit language of the claim s, that is not what is claimed.
`
`16
`
`What we see in the claims, instead, is the segment --
`
`17
`
`second segment is sent on a configuration bus, and the segment
`
`18
`
`of configuration data for the additional IC is sent through the
`
`19
`
`configuration data output.
`
`20
`
`The claims do not require two buses, nor do they
`
`21
`
`require two outputs. And when you look at the specification of
`
`22
`
`the '897 patent, they make it clear that a bus and an output are
`
`23
`
`two different things. In fact, when it talks about an output in the
`
`24
`
`context of figure 5, it talks about an output port. So, the output
`
`25
`
`is part of the die, whereas the bus is the transmission path
`
` 10
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`between two die. And the claim does not require two buses, nor
`
`does it require two outputs.
`
`And if we look at claim 8, relative to Wennekamp, we
`
`can see how Wennekamp discloses claim 8, which is broadly
`
`claimed. So, claim 8 requires, again, distributing the second
`
`segment of configuration data, through the configuration bus.
`
`And we see here in Wennekamp, a bus connecting in the first die
`
`and the second die. And the claim says that the configuration
`
`data output of the first die is coupled to the output of the IC.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`And you have to read this in the context of the '897
`
`11
`
`patent, which defines coupling very broadly. Coupling, they
`
`12
`
`explain, is not just a direct connection, it can be indirect through
`
`13
`
`intervening elements.
`
`14
`
`So, we see here, Wennekamp has an output that's part
`
`15
`
`of the die, your PN0, and that's actually coupled to the output of
`
`16
`
`the IC, which would be where that demarcated dashed line is.
`
`17
`
`And the last limitation sends the segment of configuration data
`
`18
`
`for the additional IC through the configuration data output, well
`
`19
`
`that gets sent through the output, which is here.
`
`20
`
`So, we can see that claim 8 is very broadly claimed,
`
`21
`
`and Wennekamp discloses these elements of claim 8, which
`
`22
`
`patent owner argued were not present.
`
`23
`
`JUDGE MEDLEY: So, are you saying that the same
`
`24
`
`elements meet the bus and the output?
`
` 11
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`MS. GORDON: No, they're actually two different
`
`elements, and you can think of it this way: The output is part of
`
`the die, and the bus is actually part of the substrate, that's the
`
`transmission path.
`
`JUDGE MEDLEY: That connects it.
`
`MS. GORDON: So, if you lifted the die out, the
`
`output would come with it, but the bus would remain on the
`
`substrate.
`
`JUDGE MEDLEY: Okay, thank you.
`
`10
`
`JUDGE ARBES: Counsel, does the specification of
`
`11
`
`the '897 patent refer to a configuration data output in that
`
`12
`
`manner?
`
`13
`
`MS. GORDON: It refers to a configuration -- it refers
`
`14
`
`to a data output port, and in the disc ussion of figure 5. And a
`
`15
`
`separate configuration bus.
`
`16
`
`JUDGE MEDLEY: Okay, I think a few more minutes
`
`17
`
`to wrap up, we asked a lot of questions.
`
`18
`
`MS. GORDON: Just one more point related to patent
`
`19
`
`owner's final argument that Wennekamp doesn't teach
`
`20
`
`determining whether the configuration data comprises a segment
`
`21
`
`intended for the additional IC. So, here we see the disclosure
`
`22
`
`from Wennekamp, and it's talking about this circuit, and this is
`
`23
`
`its parallel daisy chain configuration, where there is the first die,
`
`24
`
`and this is the second die. And Wennekamp clearly states that
`
`25
`
`either the first die or the second die could be implemented using
`
` 12
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`the device of 400. So, let's assume that the device of 400 is
`
`implementing the first die. When we look at the device 400,
`
`Wennekamp very explicitly describes its operation, and it
`
`describes that certain instructions indicate that the device should
`
`enable its output register, POUT, and this enable instruction
`
`means that the data being received by the first die is not targeted
`
`for that device, instead, it's intended for a downstream device.
`
`So, what does this mean? It means that the die in
`
`Wennekamp, the first die, determines whether the data is
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`intended for itself, or it's intended for an additional device
`
`11
`
`downstream, in this case the additional IC.
`
`12
`
`JUDGE MEDLEY: So, what in the first die makes
`
`13
`
`that determination?
`
`14
`
`MS. GORDON: Right. There's controlled logic in the
`
`15
`
`first die that when it receives this enable signal will make the
`
`16
`
`determination, based on the status of the s ignal, whether the data
`
`17
`
`is configured to be -- to stay with it or to go outside the die.
`
`18
`
`JUDGE MEDLEY: And is it correct, because I looked
`
`19
`
`through their papers, and it didn't seem to me that they addressed
`
`20
`
`this embodiment, they seemed to be focused main ly on the
`
`21
`
`embodiment of figure 3. Did they discuss -- I mean, I just
`
`22
`
`didn't -- maybe this is a question for patent owner when they get
`
`23
`
`up, but --
`
` 13
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`
`MS. GORDON: We don't believe they directly
`
`addressed this, but this is the embodiment that was in our
`
`petition, so they had the opportunity to address.
`
`JUDGE MEDLEY: Okay, thank you.
`
`MS. GORDON: Thank you.
`
`JUDGE MEDLEY: Patent owner, please? And,
`
`Counsel, would you like to reserve time?
`
`MR. McCOMBS: I would like to reserve five
`
`minutes, please.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`JUDGE MEDLEY: Five minutes, okay, great. You
`
`11
`
`may begin.
`
`12
`
`MR. McCOMBS: Thank you, good afternoon, Your
`
`13
`
`Honors, I'm David McCombs here for XILINX, and our first
`
`14
`
`issue that we would like to address concerns claims 2 through 7,
`
`15
`
`and whether they are obvious based on the Wennekamp reference
`
`16
`
`alone. You had asked some questions about this procedurally, I
`
`17
`
`would like to first address some procedural points concerning
`
`18
`
`claim 1.
`
`19
`
`And if we look at the institution decision, there were
`
`20
`
`two grounds of challenge that were raised with respect to claim
`
`21
`
`1. First was whether claim 1 was obvious over Wennekamp, and
`
`22
`
`second was whether claim 1 was obvious over Wennekamp in
`
`23
`
`view of Miller. In response to this, on May 7th, what we did was
`
`24
`
`the patent owner submitted its motion to amend, and in our
`
`25
`
`motion to amend, we requested that claim 1 be cancelled, and I
`
` 14
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`understand that you all have not ruled on our motion, but it's our
`
`position that the cancellation of claim 1 renders moot the need to
`
`decide whether claim 1 is patentable in light of the references
`
`that were cited against it.
`
`But what that does is then brings us to claims 2
`
`through 7, and with respect to claims 2 through 7, the only issue
`
`that's pending there, these are dependent claims from claim 1, is
`
`whether those claims are obvious based on Wennekamp alone.
`
`And again, with respect to claim 2, we think that that
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`claim is representative of all of 2 through 7, and the issue there
`
`11
`
`really does boil down to obviousness of the multi -die IC
`
`12
`
`limitation in its base claim, clai m 1. And, so, as we've identified
`
`13
`
`here, the issue is with respect to claim 2, does Wennekamp teach
`
`14
`
`a first IC comprising the master die and the slave die, that's part
`
`15
`
`of claim 2 through its base claim.
`
`16
`
`JUDGE MEDLEY: And I'll ask you the question that
`
`17
`
`I asked petitioner, counsel for petitioner, is the patent owner
`
`18
`
`then conceding that Wennekamp does teach dies, just not
`
`19
`
`multi-die IC, multi-die IC is not taught, which is in the claim,
`
`20
`
`but which everyone understands the claims to mean?
`
`21
`
`MR. McCOMBS: No, that is not our position. Our
`
`22
`
`position is that Wennekamp teaches ICs, it never discusses
`
`23
`
`specifically dies, and our view is that claim 2 is not obvious over
`
`24
`
`Wennekamp. Wennekamp doesn't discuss multi -die ICs at all, it
`
`25
`
`discusses specific IC configurations, in and of themselves. And
`
` 15
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`we believe that claim 2 is patentable over Wennekamp, and we
`
`believe this to be the correct conclusion even when you take into
`
`account the petitioner's evidence of the level of skill in the art
`
`that's been present ed.
`
`We're also well aware of the Federal Circuit's October
`
`30th decision in Randall Manufacturing versus Rea, where the
`
`Federal Circuit was criticizing a failure to take into account
`
`evidence of the state of the art in an obviousness analysis. In
`
`Randall Manufacturing, that case, in particular, all of the art was
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`present, or all of the elements of the claim, that is, were present
`
`11
`
`in the prior art references that were used there, and it was the
`
`12
`
`state of the art was a question having to do with whether tho se
`
`13
`
`references were combinable.
`
`14
`
`So, if we look at this situation, in our case, we want
`
`15
`
`to take with the guidance of Randall Manufacturing, we want to
`
`16
`
`take an unblinkered focus on Wennekamp, and in doing so,
`
`17
`
`consider the evidence of what is the state of th e art and what is
`
`18
`
`ordinary level of skill in the art.
`
`19
`
`And in doing so, we believe that you still don't get
`
`20
`
`there to defeat claim 2. And this is why: First, if you look at
`
`21
`
`the Board's institution decision, the Board was clear there that
`
`22
`
`Wennekamp does n ot describe programmable devices in the
`
`23
`
`context of dies on an IC. There was no discussion of multiple
`
`24
`
`die ICs in Wennekamp. We agree with that. That was stated in
`
` 16
`
`25
`
`the decision.
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`But, it is true, yes, there is evidence in the state of the
`
`art that multi-die ICs generally are known. The Board
`
`recognized this in the institution decision, there was a discussion
`
`of a publication evolution of CPU packaging technology and
`
`future challenges by an author named Oh, and we also have, in
`
`the testimony in this case , we also have our own expert,
`
`Dr. Blanchard, and he recognizes that the general idea of
`
`multi-die ICs is out there, it's in the art.
`
`And, of course, we've heard from the petitioner's
`
`10
`
`expert, Morgan Johnson, who asserts numerous times that
`
`11
`
`multi-die ICs are definitely something within the ability of the
`
`12
`
`skilled artisan, but our view is that that doesn't -- that doesn't get
`
`13
`
`you there. What's missing here is the particularized teaching in
`
`14
`
`the claim of an IC configuration, where you have a configureable
`
`15
`
`master die and a configureable slave die. And as we see here --
`
`16
`
`17
`
`18
`
`JUDGE MEDLEY: Can I interrupt you?
`
`MR. McCOMBS: Yes?
`
`JUDGE MEDLEY: It seemed to me in your response,
`
`19
`
`though, that your argument really was that with respect to claims
`
`20
`
`2 through 7, that r eliance on expert testimony showing what was
`
`21
`
`known by a person of ordinary skill in the art isn't proper and is
`
`22
`
`going beyond 35 USC 311(b).
`
`23
`
`So, it's sort of, it didn't seem to us that the paper,
`
`24
`
`your paper, really went out and said that the claims are
`
` 17
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`nonobvious over Wennekamp, showing why they were
`
`nonobvious.
`
`MR. McCOMBS: Well, Your Honor, let me address
`
`that. We don't believe that Wennekamp discusses multi -die ICs
`
`at all, it certainly doesn't discuss the specific implementation in
`
`the claims. Figure 4 of the '897 patent shows the specifically
`
`claimed implementation of an IC having a configureable master
`
`and a configureable slave. What we were also of the view is that
`
`the -- any of this discussion that's in the record of what is -- of
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`what someone of ordinary skill in the art would know, that
`
`11
`
`doesn't get you there. And I am concerned, Your Honor, that this
`
`12
`
`is a situation where it may be very easy under section 311(b) to
`
`13
`
`get into a situation where we're talking about items that are
`
`14
`
`known and used by others, which would be a 102(a) issue, which
`
`15
`
`in this instance would not be the proper scope of a proceeding
`
`16
`
`here, and what we don't want is that this analysis on what is the
`
`17
`
`level of skill in the art to stray into that area.
`
`18
`
`I think that to the extent t hat we have testimony as to
`
`19
`
`what a skilled artisan would know, I don't think that that goes far
`
`20
`
`enough in terms of providing evidence of the specific limitations
`
`21
`
`in these claims. Wennekamp alone does not teach multi -die ICs,
`
`22
`
`it certainly doesn't teach a m ulti-die IC as shown in figure 4
`
`23
`
`here, and the evidence --
`
`24
`
`JUDGE MEDLEY: Well, it's not in anticipation,
`
` 18
`
`25
`
`though.
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`
`MR. McCOMBS: It is not.
`
`JUDGE MEDLEY: It's obviousness. So, if you could
`
`talk to us in that respect, from the obviousness respect.
`
`MR. McCOMBS: Yes.
`
`JUDGE MEDLEY: As opposed to -- because we know
`
`that it's, you know, it's not anticipation. So, we know that.
`
`MR. McCOMBS: Yes. So, if we're looking at the
`
`Wennekamp reference, again, no discussion of multi -die ICs, to
`
`supply the obviousness component of that, by looking at what
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`one of skill in the art would know, the general teaching of
`
`11
`
`multi-die ICs, our view is that that doesn't get you there in terms
`
`12
`
`of the specifics of the claim. To do that goes too far, and would
`
`13
`
`be based on a hindsight reconstruction, using our patent as a
`
`14
`
`guide to get there.
`
`15
`
`16
`
`JUDGE MEDLEY: Did you argue hindsight?
`
`MR. McCOMBS: We argued -- no, Your Honor, we
`
`17
`
`argued that Wennekamp does not teach it.
`
`18
`
`JUDGE ARBES: Counsel, how do you address the
`
`19
`
`petitioner's argument that Wennekamp itself provides a
`
`20
`
`suggestion to have these devices be multi -die ICs? I mean, you
`
`21
`
`obviously have a master device and a slave device, petitioner has
`
`22
`
`argued in their briefing that the reference itself provides a
`
`23
`
`suggestion, and you obviously disagree with that, but is that
`
`24
`
`improper by itself for this reference to disclose certain things
`
`25
`
`and suggest that it could be a multi -die IC?
`
` 19
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`MR. McCOMBS: That's a good question, Your
`
`Honor, and our position on that is that there is a disc ussion in the
`
`Wennekamp reference of a number of circuit configurations, and
`
`we did address that in the record, and it's our view that the idea
`
`of discussing a number of circuit configurations is just that, it's
`
`just a matter of whether there's intermediat e components or
`
`whether there are not intermediate components, and that has
`
`nothing to do with the form factor, whether multi -die ICs are
`
`disclosed or even taught by the reference.
`
`10
`
`And I would direct you to Dr. Blanchard's declaration
`
`11
`
`on that point.
`
`12
`
`JUDGE ARBES: Okay, so the argument isn't that it's
`
`13
`
`improper for this reference to disclose certain things and suggest
`
`14
`
`others for an obviousness analysis, you just disagree as to
`
`15
`
`whether there actually is a suggestion in the reference?
`
`16
`
`MR. McCOMBS: I disagree that there's a suggestion
`
`17
`
`in the reference. I think that discussion of circuit configurations
`
`18
`
`only would be -- only would suggest multi -die ICs if you had our
`
`19
`
`patent in front of you.
`
`20
`
`JUDGE EASTHOM: So, do they just disclose a single
`
`21
`
`die, is that what you're saying, in Wennekamp? Is it a single die
`
`22
`
`IC?
`
`23
`
`MR. McCOMBS: The Wennekamp reference, let me
`
`24
`
`go to a different picture for that. Each of these -- each of these
`
`25
`
`are ICs. I think within the level of skill in the art, as from the
`
` 20
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`testimony in the record, that each one of those ICs could have
`
`multiple dies in it. We don't know. It's not discussed. Certainly
`
`that's within -- certainly within the realm of possibility.
`
`But each of these is a separate IC, and --
`
`JUDGE EASTHOM: Each is a separat e die?
`
`MR. McCOMBS: Each is a separate IC.
`
`JUDGE EASTHOM: Each is a separate IC.
`
`MR. McCOMBS: In Wennekamp.
`
`JUDGE EASTHOM: Each is a separate IC and has
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`separate dies?
`
`11
`
`MR. McCOMBS: Each of these ICs in Wennekamp
`
`12
`
`and could have multiple dies inside of it. There's no disclosure
`
`13
`
`of that.
`
`14
`
`JUDGE EASTHOM: So, the conglomeration would be
`
`15
`
`multiple dies, right? Each one has multiple dies?
`
`16
`
`MR. McCOMBS: Each of these ICs could have
`
`17
`
`multiple dies in them, we don't know.
`
`18
`
`JUDGE EASTHOM: So, they could either be multiple
`
`19
`
`dies or it could be a single die, is that what -- I'm just trying to
`
`20
`
`figure out what --
`
`21
`
`MR. McCOMBS: I think there's a confusion between
`
`22
`
`what a die is and what an IC is.
`
`23
`
`JUDGE EASTHOM: That's what I'm trying to figure
`
`24
`
`out, what you think the difference is, or what is the disclosure in
`
` 21
`
`
`
`
`
`
`
`Case Nos. IPR2012-00023 & IPR2012-00020
`Patents 6,653,215 & 8,058,897
`
`Wennekamp? Is it one die, multiple dies? Let's just answer that,
`
`is it one die or multiple dies?
`
`MR. McCOMBS: Well, each of those are just
`
`discussed as specific devices, and there's, again, there's no
`
`discussion here about placing multiple dies in any separately
`
`packaged IC, other than the particular identified master device,
`
`slave device, et cetera, each of which is an IC, and they're not
`
`put together on a single -- this is not a situation that's disclosing
`
`a single IC comprised of separate dies. It's a disclosure of
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
