Trials@uspto.gov
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`571-272-7822
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`Paper No. 49
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`Entered: March 3, 2015
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`RECORD OF ORAL HEARING
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`- - - - - -
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`- - - - - -
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`INTERNATIONAL BUSINESS MACHINES CORPORATION,
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`Petitioner,
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`v.
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`INTELLECTUAL VENTURES II LLC,
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`Patent Owner.
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`- - - - - - -
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`Case IPR2014-00180
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`Patent 7,634,666
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`- - - - - -
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`Oral Hearing Held: Tuesday, January 13, 2015
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`
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`Before MIRIAM QUINN (via video conference), DAVID McKONE (via
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`video conference), and JAMES TARTAL, Administrative Patent Judges.
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`
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`The above-entitled matter came on for hearing on Tuesday, January 13,
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`2015, at 1:31 p.m., in Hearing Room B, taken at the U.S. Patent and
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`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`
`
`571-272-7822
`
`Paper No. 49
`
`Entered: March 3, 2015
`
`RECORD OF ORAL HEARING
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`- - - - - -
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`- - - - - -
`
`
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION,
`
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`
`Patent Owner.
`
`- - - - - - -
`
`Case IPR2014-00180
`
`Patent 7,634,666
`
`- - - - - -
`
`Oral Hearing Held: Tuesday, January 13, 2015
`
`
`
`Before MIRIAM QUINN (via video conference), DAVID McKONE (via
`
`video conference), and JAMES TARTAL, Administrative Patent Judges.
`
`
`
`The above-entitled matter came on for hearing on Tuesday, January 13,
`
`2015, at 1:31 p.m., in Hearing Room B, taken at the U.S. Patent and
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`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`Case IPR2014-00180
`Patent 7,634,666
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`APPEARANCES:
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`ON BEHALF OF PETITIONER:
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`KENNETH R. ADAMO, ESQ.
`EUGENE GORYUNOV, ESQ.
`JOEL R. MERKIN, ESQ.
`Kirkland & Ellis LLP
`300 North LaSalle
`Chicago, Illinois 60654
`312-862-2000
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`ON BEHALF OF PATENT OWNER:
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`HERBERT D. HART, III, ESQ.
`PETER J. McANDREWS, ESQ.
`McAndrews Held & Malloy Ltd.
`500 West Madison Street
`34th Floor
`Chicago, Illinois 60661
`312-775-8000
`
`DON COULMAN, PhD, ESQ.
`Intellectual Ventures
`3150 139th Avenue SE
`Bellevue, Washington 98005
`425-677-2973
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`P R O C E E D I N G S
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`(1:31 p. m.)
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`JUDGE QUINN: This is the h e aring, oral
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`argu ment , on IPR 2014 -00180 concerning U. S. Paten t
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`7,634,666, IBM C orporation versus Intellectual Vent ures II
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`LLC.
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`The Judges presid ing on this Panel are Judge David
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`McKone, presiding over our satellit e office in Detroi t; Judge
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`Ja mes Tartal , wh o is present in the courtroo m in Ale xandria;
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`and myself , Judge Miria m Quinn, presiding over fro m our
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`satellite office in Dallas.
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`At this point I wo uld like the partie s to state your
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`na mes for the r ec ord and appearan ce in the hearing starting
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`with Petit ioner.
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`MR. ADAMO: Good afternoon, Your Honor. Ken
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`Ada mo, lead counsel for IBM . Wit h me he re toda y i s Eugene
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`Gor yunov, who is backup counsel, and also Joel Mer kin.
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`JUDGE QUINN: Would Patent Owner proceed to
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`the podium and st ate an appearance for the re cord.
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`MR. HAR T: Yes, Your Honor. Thi s is Herb Hart ,
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`lead counsel for Patent Owner . With me toda y ar e backup
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`counsels Peter M cAndre ws and Do n Coul man .
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`JUDGE QUINN: Have the parties s ub mitted a cop y
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`of the de monstrat ives to the court r eporter?
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`MR. ADAMO: Yes, Your Honor, both parties
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`have.
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`JUDGE QUINN: Oka y. Just a couple of
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`instructions that were sub mitted in our order for the request of
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`oral hearing: The parties will have each 40 minutes for their
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`argu ment ti me. P etitioner will go f irst an d ma y reser ve ti me
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`for rebuttal.
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`Patent Owner will respond to Petit ioner's case . No
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`rebuttal ti me ma y be allotted at this ti me for Pat ent Owne r.
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`This hearing is o pen to the public. So , ther efore , I
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`don't think that there was confidential infor mation to discuss,
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`but the parties ar e alerted that this hearing is open t o the
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`public.
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`All objections to de monstratives ar e waived. I f
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`there ar e an y issu es with de monstr atives that need t o be
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`addressed during the argu ment, we ask that the parti es do so
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`durin g their ti me that the y are allotted for their argu ment .
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`Are there an y que stions regarding these
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`instructions?
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`MR. ADAMO: Your Honor, ma y I ask several
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`housekeeping questions; would that be all right with the
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`Court? This is Ken Ada mo for IB M.
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`JUDGE QUINN: Yes.
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`MR. ADAMO: No questions as to the Court's
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`instruction about an y ob jections be ing stated during one's
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`ti me .
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`The question wou ld beco me, if duri ng opposing
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`counsel's argu me nt there is an objection, would you prefe r that
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`we state it during their ti me or hol d it for rebuttal? Various
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`panels of the Boa rd have done it different wa ys. Wh at is the
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`Court's prefe renc e toda y, if I might ask you?
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`JUDGE QUINN: There will be no speaking
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`objections that interrupt the other side's argu ment. If you
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`have an objection to make or so met hing you want to note
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`regarding the other side's de monst ration and argu ment, you
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`need to do so dur ing your own arg u ment.
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`MR. ADAMO: Thank you, Your Honor.
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`A further housekeeping matte r: Th ere are several
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`motions to exclude pending. As I u nderstand the Boa rd's usual
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`practice, you will rule on those mo tions as part of your final
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`decision.
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`Is it ac ceptable to the Court that we don't, even
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`during our own ti me , repeat an y ob jections to the exhibits that
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`are in issue in those motions to exc lude, and the und erstanding
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`would be there is no waiving of an y objections si mply be cause
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`it is not repeated during the trial h ere toda y?
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`JUDGE QUINN: That's correct . Whatever
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`objections you ha ve made in your motion to exclude are
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`preserv ed in those papers. No nee d to raise those d uring the
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`argu ment .
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`MR. ADAMO: One last point and then I will sit
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`down: I had disc ussed with opposing counsel, as a wa y to
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`mini mize ti me us age, that it would -- we suggest to the Board
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`that, both of the decks of Po werPo ints, if I could use that,
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`have got an exhibit nu mber on it, a marked for ident ification
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`nu mber . It is 1040 is the nu mb er f or the I BM Power Points and
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`it is 2018 for I V's deck.
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`To save ti me, if we state that all o f the opening
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`presentation is coming out of IBM ' s 1040, so that f r o m there
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`on out we just ha ve to recite the sl ide nu mbers and, of course,
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`IV would do the s a me during their opening presentation, would
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`that be acc eptable to you to preserv e the r ecord in th e for m the
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`Board would like it?
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`JUDGE QUINN: Yes, as long as it is clear that,
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`when you sa y I B M's 1040, you ar e actuall y re ferrin g to a slide.
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`That's fine to r efe r to the m with sli de nu mbe rs. You don't
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`have to repeat tha t it is an exhibit to the record .
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`MR. ADAMO: What we were ho ping to do is not
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`have to repeat the 1040 so that, unl ess we said other wise, it is
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`all out of 1040 an d theirs would all be out of 2018 on the
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`openings.
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`JUDGE QUINN: That's correct . It is understood.
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`MR. ADAMO: Oka y.
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`JUDGE QUINN: Thank you . Can I ask Pat ent
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`Owne r if the y hav e an y questions?
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`MR. HAR T: You r Honor, we have no questions
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`about the procedure.
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`JUDGE QUINN: Oka y.
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`MR. ADAMO: The last point and then I will sit
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`down: It is IB M' s intention, Your Honor, that Mr . Gor yunov
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`will do 98 perc ent o f the argu ment today during both the
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`opening argu ment and during the r e buttal.
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`With the Boa rd's per mission, it wa s my intention,
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`if an y objections or other evidentia r y issues needed t o be
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`stated, that I would do that. But ot her than that M r. Gor yunov
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`will do ever ything.
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`Is that oka y with the Board?
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`JUDGE QUINN: Yes. You c an ha ve your backup
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`counsel do so me argu ments and yo u can divide that as you
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`wish.
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`MR. ADAMO: All right. Then , Your Honor, if I
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`might, I a m going to sit down and l et Mr . Gor yuno v start.
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`JUDGE QUINN: Yes. The counsel for Petitioner
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`who is going to a rgue can step up t o the podiu m and address
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`the Board with how much ti me you want for your a rgu ment and
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`how much for r ebuttal.
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`MR. GOR YUNOV: Your Honor, good afternoon.
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`Eugene Gor yunov on behalf of Peti tioner IBM . We would like
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`with your per miss ion to reserve 10 minutes for rebut tal and 10
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`minutes for our d irect presentation toda y to you .
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`Is that all right? I' m sor r y, 30 minutes for the
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`direct presentation and 10 minutes for th e rebuttal.
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`JUDGE QUINN: Yes. Please proc eed.
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`MR. GOR YUNOV: Ma y it please the Board. We
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`are he re toda y re garding the invalidity of the '666 p atent, the
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`argu ments pr esented in various mo tions to exclude, and the
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`proper construction of certain clai m ter ms .
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`IBM's petition wa s filed in Nove mb er 2013 and
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`was supported b y the declaration of Dr. Cetin Ka ya Koc, who
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`is joining us here in the boardroo m. Dr. Koc is the l eading
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`authority on hard ware i mple mentat ions of cr yptogra phy. He
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`co-founded three of the most i mpor tant conferences on
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`cr yptographic har dware and literall y wrote the book on
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`cr yptographic alg orith ms and recon figurable hardwa r e.
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`The Board r eviewed IBM 's petition and all of its
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`evidence, including Dr . Koc's decl aration, in instituting its
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`IPR t rial. The Board issued its tria l on all clai ms of the '666
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`patent, whe re the independent claims of the '666 pat ent we re
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`instituted on the co mbination of th e Matsuzaki and the
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`Dworkin prior art ref erences .
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`Matsuzaki is IBM 's pri mar y p rior a rt ref erence an d
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`discloses all but two ele ments b y itself of all of the
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`independent claims . The co mbina tion of Matsuzaki and
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`Dworkin, which i s IBM's secondar y prior art re fere nce,
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`discloses all ele ments of the indepe ndent clai ms arr a nged as in
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`the clai ms.
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`Now, IV cont ends that this co mbination does not
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`disclose just thre e ele ments of the various nu merous
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`li mitations recite d in the independent clai ms. Those
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`li mitations are fe eding back multip le outputs in claims 1 and
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`4; a concatenate r and splitter for merging or split ting data
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`widths of clai m 4 ; the cr yptographic controller gener ating
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`status interrupt signals for the host; and also generat ing op
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`code signals wher e the a rith metic u nit selects betwe e n RS A
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`and EC C modes o f operation based on those op codes.
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`IV does not dispute an y of the othe r ele ments of
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`the independent clai ms . And as I B M has de monstrat ed in its
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`petition as well a s its repl y papers , all of these ele ments are
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`disclosed by its c o mbination of Ma tsuzaki and Dwor kin. The
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`Board should find that the '666 pat e nt is invalid.
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`Now, the first ele ment that I V challenges is the
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`feedback of multiple outputs. Mat suzaki discloses three
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`co mputational units of the '666 pate nt.
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`As you can see , we're ref erring to s lide nu mber 11,
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`which is depicting figure 17 of the Ma tsuzaki prior art, Exhibit
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`1008. Each of the multiplier, the s ign inverting unit, and the
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`three-input adder, have outputs. It is the line co ming out of
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`the botto m of eac h one of those un its.
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`Matsuzaki also discloses that the a rith metic unit
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`outputs a carr y-u p signal. You c a n see that in slide 13. At the
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`mo ment I a m refe rring to figure nu mber 11 which is on the
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`right -hand side of Matsuzaki Exhibit 1008.
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`A c arr y-up signal is a signal indicating that a
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`re mainder has be en generated duri ng the modular
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`multiplication operation, and that carr y -up signal is sent back
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`to the controller.
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`Now, Dworkin, I BM's secondar y p rior art
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`referenc e, discloses the co mmon ar chitecture with a nu mber of
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`co mputational units, with each co mputational unit having an
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`output.
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`Now, we have out lined these for th e Board's
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`convenience in re d and the co mput ational units we h ave
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`outlined on the bottom of what yo u see in front of you as slide
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`14, and it is a dep iction of Dworkin's figure 2. And Dworkin
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`is Exhibit 1012.
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`Now, Dworkin al so discloses that each one of these
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`outputs is fed back to the controller. And I V is wro ng when it
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`argues that Dwor kin discloses feeding back up onl y one
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`output. IV's a rgument is based, Yo ur Honors, on a
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`funda mental misu nderstanding of the Dworkin re fe r ence.
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`IV atte mpts to ta ke the si mple issue of feeding
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`back multiple out puts, as you can see in our slide 14, and it
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`makes an incorr e ct bit level a rgu ment based on incorrect
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`reading of Dwork in's figure 6 rathe r than addressing the
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`straightforward h ardwar e co mmuni cation lines that a re
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`de monstrated wit hin Dworkin.
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`IV's confusion about the disclosure of Dworkin
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`only beca me appa rent afte r I V filed its Patent Owner response
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`and its supporting expert's decla ra tion. IB M's expert and I BM
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`took IV's argu me nt and explained wh y it was wrong . IBM
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`even included a s eries of step -b y-s tep graphics to he lp explain
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`wh y I V's interpr e tation of Dworkin was wrong.
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`JUDGE Mc KONE: Mr . Gor yunov, I understand
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`you ar e a rguing that you added this new argu ment i n to show
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`that Patent Owne r was wrong.
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`Wh y wasn't it inc u mbent on you in the petition to
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`present this information to show th at Petitioner was correct?
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`MR. GOR YUNOV: Your Honor, f irst of all, we
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`disagree that this is new argu ment at all. In fa ct, during his
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`deposition , Dr . Koc testified that a t least paragr aph 118 of his
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`opening declaration, that's Exhibit 1001, addressed the
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`feedback of multiple outputs.
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`In his view this was a t rivial aspect of the Dworkin
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`prior art refe renc e. It is in his vie w and based on th e re c ord,
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`one of ordinar y s kill in the art wo uld have understood that this
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`is just a trivial po int of the Dworki n refe rence . The r e was no
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`need to explain it.
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`We didn't underst and that there wa s this level of
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`confusion fro m I V's expert as well as I V until IV ha d filed its
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`Patent Owner res ponse. We didn't have an y basis to believe
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`that so mebod y co uld misunderstood so mething so
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`straightforward.
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`JUDGE Mc KONE: So you ad mit th at this wasn't
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`presented in your petition; it is jus t your argu ment t hat you
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`didn't thi nk you h ad to?
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`MR. GOR YUNOV: Your Honor, we did pr esent
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`the multiple feed back argu ment in our petition and Dr . Koc's
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`declaration at le a st at paragr aph 118. We provided a
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`step -by-step explanation of wh y I V's argu ment was incorrect
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`in IBM's repl y as well as Dr. Koc's responsive repl y
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`declaration.
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`We believed that we onl y needed t o do that afte r
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`IV de monstrated an entirel y co mpl ete misunderstanding of the
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`Dworkin prior art ref erence . Like I said, Dr. Koc be lieved one
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`of ordinar y skill in the art would h ave no issues looking at
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`Dworkin's disclosure and being abl e to identif y that there ar e
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`multiple outputs fro m multiple co mputational units, as
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`depicted on slide 14, and that e ach one of these outputs is fed
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`back to the contr oller.
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`Now, in an y case , I V's a rgu ment is wrong because
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`if you take a look at Dworkin's pse udocode and figure 2 of
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`Dworkin, which i ncludes a cross -s ection of figure 6, it
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`discloses feeding back multiple out puts.
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`You can see that on IBM's slide 15 at the ver y top.
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`We have identifie d t hat for your co nvenience as grap hic 2.
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`And this is an extract f ro m Dworkin at colu mn 4, lin es 21
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`through 28, Exhibit 1012.
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`The pseudocode o f Dworkin is responsible for
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`finite field multiplication, and it do es so b y re ceiving as input
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`the multiplier, th e multiplicand and modulus. It the n uses
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`those values to ca lculate the - - to p erfor m finite fiel d
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`multiplication.
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`Now, to make it e asier for us to dis cuss all of these
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`ele ments, I will r efer to ti me zero through time 1 , ti me 2 and
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`so on, just so we can s ee what happens at each cloc k c ycle
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`within Dworkin.
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`Now, as an initial step, be fore an y co mputations
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`are pe rfor med , th e values of A, B a nd M, which a re the
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`multiplier, multiplicand and the mo dulus, are loaded into the
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`special purpose r egisters, and spec i fic registers with in special
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`purpose register 16. Those register s are A, B and M. You can
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`see that in gr aphic 3 that we prese nt on slide 15.
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`Now, first, at ti me ze ro, sub - ALU' s 18 perfor med
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`the ver y first step of modular multiplication. And, you know,
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`I apologize. I mi sspoke. It was not finite field. Modular
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`multiplication. And output the partial product C to r egister C,
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`also contained wi thin the special purpose register 16.
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`You can see that in the upper left -hand corner of
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`IBM slide 16, which is an annotate d version of Dwo rkin's
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`figure 2, Exhibit 1012. And that's the yello w highlighting that
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`you see co ming o ut of the yellow s ub -ALU and going into the
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`register C of the special purpose r egister 16.
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`Second, at ti me 1, a fter this first p artial pro duct
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`has been calculat ed, the entire firs t partial product i s shifted
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`left. We depict this on the lower l eft -hand side of slide 16.
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`JUDGE Mc KONE: And whe re is that disclosed in
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`Dworkin?
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`MR. GOR YUNOV: The shift left , Your Honor, is
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`that your question ?
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`JUDGE Mc KONE: The shift le ft.
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`MR. GOR YUNOV: Yes, Your Ho nor. Dworkin
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`discloses the shift left operation within its pseudocode. If you
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`take a look again at slide 15, I beli eve.
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`As you can tell, e ver y subsequent iteration of the
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`pseudocode uses C j – 1. That is the value of the fed b ack
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`ele ment that was fed back fro m spe cial purpose regis ter into
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`the controller.
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`JUDGE Mc KONE: And whe re doe s it show that
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`C j – 1 is f ed back to the controller?
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`MR. GOR YUNOV: Well , as an initial ma tter, if
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`you take a look at graphic 3 on slid e 15, you can see the
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`arrows co ming out of the control bit going into the controller.
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`Also, IV's expert , Dr. Schau mont, does not dispute that C M bit
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`is considered fee dback to the controller. So that's s o methin g
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`that, at least in o ur understanding, there is no dispute on the
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`record.
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`Moreover, during his deposition Dr. Koc explained
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`that the C register is a shift r egister and Dr . Koc the n pointed
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`to, as an exa mple , Dwo rkin's clai m 9 which talks ab out C
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`register being a shift register.
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`Now, at this point we have fed bac k -- i f we can go
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`back to slide 16 - - the most signifi cant bit of the par tial
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`product is fed bac k into the controller.
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`Now, one of ordi nar y skill in the a rt would
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`understand this happens, again, f or two reasons. One, as I
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`mentioned, the va lue of the first pa rtial product that is fed
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`back to the contr oller is used as input into the second iteration
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`of the pseudocode. That's the C j – 1 .
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`Secondl y, the mo st significant bit is a control bit
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`that triggers the s ub -ALU's to perf or m the next ite ra tion of the
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`multiplication process.
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`Next, at ti me 2 su b -ALU 18 perfor ms the next
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`phase of the pseu docode and gener ates the second p artial
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`product and, agai n, loads that into special purpose r egister 16 ,
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`and specificall y r egister C within t hat special purpose register.
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`Again, at ti me 3 t he entire se cond partial product
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`is again shifted le ft. This is a one - bit shift where the most
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`significant bit of the second partial product is shifte d into the
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`contro ller. It is f ed back into the c ontroller as a res ult of the
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`shift left operatio n. And you c an s ee that proc ess de picted on
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`IBM's slide 16, g raphic 6 and gr aphic 7. That's the purple
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`highlighting out of the purple sub - ALU that we hav e colored
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`in for the Board's convenience.
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`Now, this process is repe ated until all of the values
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`of the partial product are eventualit y shifted back into the
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`controller fro m re gister C in the special purpose regi ster 16.
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`Secondl y, Dworki n's feedback is the sa me as that
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`disclosed in the ' 666 patent. Dwor kin teaches fe eding back the
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`output of one sub -ALU at one cloc k c ycle until all t he outputs
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`of the sub -ALU's are fed back to the controller. Thi s is
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`exactl y what the ' 666 patent discloses.
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`In fact , IV's expe rt, Dr . Schau mo nt, ad mitted that
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`the output of the multiplication unit in the '666 pate nt is
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`multiplexed with the output of the addition unit.
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`Now, as we can s ee on I BM's slide 18, which
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`de monstrates gr a phic 10, it is a co mparison of figur e 2 of the
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`'666 patent, whic h is Exhibit 1005, and the Dworkin referenc e,
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`figure 2, which a gain is Exhibit 1012.
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`And, again, as Dr . S chau mont testified during his
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`deposition, the outputs in the '666 patent have to be
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`multiplexed beca use, if the y were output at the sa me ti me ,
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`the y wou ld collide. This is exactl y what Dworkin de scribes.
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`If you co mpar e th e two figures that we have
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`presented to you on slide 18, one h aving ordinar y sk ill in the
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`art would see that there is one co mmunication line f ro m the
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`co mmunicational -- f ro m the co mp ut ational units to the
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`controller. This me ans that Dwork in outputs only o ne output
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`at a ti me per cloc k c ycle.
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`Now, the second ele ment that I V disputes is the --
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`JUDGE Mc KONE: Be fore you mo ve on to that,
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`precisel y how are you proposing to co mbine Dworki n and
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`Matsuzaki?
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`MR. GOR YUNOV: So, Your Honor, one having
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`ordinar y skill in t he art reviewing Matsuzaki and Dworkin
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`would see the ref erences are co mple mentar y. One h aving
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`ordinar y skill would, therefore , be motivated to co mbine the
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`referenc es.
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`Now, IBM --
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`JUDGE Mc KONE: How? What do you t ake f ro m
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`Dworkin and put into Matsuzaki?
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`MR. GOR YUNOV: Understood, Your Honor. We
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`would take - - one with ordinar y ski ll in the art woul d take the
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`multiple fe edbacks of the outputs of the co mputational units of
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`Dwork in and add those to the retur ning back of the c arr y -up
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`signal of the Mat suzaki refer ence.
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`Also, as I will --
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`JUDGE Mc KONE: It is si mpl y, it is just si mpl y
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`adding the m back ?
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`MR. GOR YUNOV: I' m sorr y?
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`JUDGE Mc KONE: It 's si mpl y adding the
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`feedback?
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`MR. GOR YUNOV: Yes, Your Ho nor. That is the
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`only ele ment that Matsuzaki does n ot expressl y discl ose.
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`Matsuzaki discloses sending back a car r y -up signal. Dworkin
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`discloses sending back multiple ou tputs. That is the onl y
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`ele ment that one of ordinar y skill woul d look to Dworkin to
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`add in order to invalidate clai m 1 .
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`Now, as I will me ntion later on -- o r I can address
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`that right now if you pref er -- one of skill in the art would also
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`look to Dworkin t o afford the op -c ode signal selecting between
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`RSA and ECC co m putations for th e last li mitation of clai m 4.
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`JUDGE QUINN: Let's sta y with this issue right
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`now. It see ms to be ver y pressing . And, that is, you contend
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`that the multiple outputs is what Dworkin contributes to
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`Matsuzaki.
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`And I think the ques tion fro m my colleague is wh y
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`would you put mu ltiple outputs into Matsuzaki? Wha t reason
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`could a person of ordinar y skill hav e to make that mo dification
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`of multiple outputs?
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`MR. GOR YUNOV: So as we desc ribed in our
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`petition, one having ordinar y skill wo uld look to the multiple
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`outputs in order to create a multi -f unctional co mputational
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`unit that has mult iple, that has -- a nd let me make sure I get
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`my wording right -- that has granular control on how
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`co mputations are perfor med.
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`The benefit of -- if we ma y go to s lide 26, Your
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`Honor, please , in IBM's de ck. Bot h Matsuzaki and Dworkin
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`disclose -- the y a ddress the sa me proble m, opti mal h ardwar e
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`i mple mentations of cr yptographic co -processors. All right.
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`So the r eason wh y one of ordinar y skill would take
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`the multiple outputs disclosed in Dworkin and add th e m to
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`Matsuzaki is, aga in, to be able to h ave this opti mal hardwar e
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`with multiple co mponents.
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`JUDGE Mc KONE: Is that in your petition
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`an ywhe re?
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`MR. GOR YUNOV: Your Honor, t hat is addressed
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`in our petiti on at page 31 and also in Dr . Koc's opening
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`declaration on pa ragraph 145. And we have addressed that
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`this is exactl y wh at one of ordinar y skill in the art would do.
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`Now, IBM also --
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`JUDGE Mc KONE: Well, you've sa id that
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`Matsuzaki and Dworkin are si mila r . The y have si milar
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`technology for so lving simila r pro ble ms. But I don' t see
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`an ywhe re in here an y desc ription of how Montgo mer y's
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`circuitr y would b e changed or i mp r oved or an ything based on
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`incorporation of certain featur es in Dworkin.
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`MR. GOR YUNOV: Yo ur Honor - -
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`JUDGE Mc KONE: Am I wrong?
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`MR. GOR YUNOV: I' m sorr y, Yo ur Honor, I
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`started speaking before I heard wh at you just said .
`
`JUDGE Mc KONE: That's all right. Pl ease go
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`ahead.
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`MR. GOR YUNOV: So in our peti tion we
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`identified the mul tiple si milarit ies between M atsuzaki and
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`Dworkin. And, a ccording to KS R, Your Honor, a co urt can
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`look to interrelated teachings of multiple references , the
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`effects of the de mands known to t he design co mmu nity or
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`present in the ma rketplace, and the background knowledge
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`possessed by pers ons having ordinar y skill in the art , all to
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`deter mine whether there is a re ason to co mbine the r eferences .
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`And that is exa ctly what IBM did in its petition,
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`and as well as Dr. Koc 's decla ration. We have ident ified
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`nu merous r easons wh y o ne having ordinar y skill in t he art
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`would take the multiple interrelated teachings of the two
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`referenc es, as wel l as the knowledg e of a person havi ng skill
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`in the art , and wo uld co mbine the t wo re ferenc es to arrive at
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`the invention of the '666 patent.
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`JUD GE Mc KONE: Beside that si milarit y, what
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`other reasons do you state in the p etition?
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`MR. GOR YUNOV: I' m sorr y, Yo ur Honor?
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`JUDGE Mc KONE: Besides si mila r ities between
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`the two refe rence s, what other reas ons do you state i n your
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`petition?
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`MR. GOR YUNOV: We state that one having
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`ordinar y skill in t he art would have co mbined the m i n order to
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`create a proc essor that perfor ms both EC C and RS A e fficientl y
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`and quickly.
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`JUDGE Mc KONE: Wh ere is that i n your petition?
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`MR. GOR YUNOV: One mo ment, Your Honor. So
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`we mentioned that in, fo r exa mple , paragraph 148 of Dr. Koc 's
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`declaration, Exhibit 1001. And then, again , we discussed the
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`whole point of - - I' m sor r y, we aga in discussed this in Dr .
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`Koc's de claration, 1001 at pa ragra ph 145. And then again - -
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`JUDGE Mc KONE : I ' m sor r y, wher e in paragr aph
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`148 do you make this point, or does Dr . Koc make t his point?
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`JUDGE QUINN: And particularl y here what we
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`are looking for is the state ment that you said to do t hings
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`efficientl y, that language. We don't see it in either y our
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`petition or your d eclaration so we want to mak e sur e we don't
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`miss an ything her e.
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`MR. GOR YUNOV: Understood, Your Honor. One
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`mo ment , please .
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`Oka y. So , first o f all, if you take a look at
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`paragraph 145 of Dr . Koc's opening declaration, we discuss
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`both Matsuzaki and Dworkin addre ssing the sa me pr oble m.
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`And this is what we've also depict ed for you on slid e 26 of
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`IBM's de monstrat ives, and that sa me proble m is opti mal
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`hardware i mple mentations of cr ypt ographic co -proce ssors with
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`multiple co mpone nts.
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`Now, the other r e ason wh y one of ordinar y skill in
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`the art would have co mbined Mats uzaki and Dworki n is
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`because the y both teach ha rdwa re i mple mentations o f
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`Montgome r y r eduction. And I re alize that I V has di sputed that
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`disclosure. Howe ver, as we've des crib ed in our brie fing, that
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`is absolutely not the case.
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`JUDGE Mc KONE: Well, let's assume that's
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`correct. That 's ju st another argu me nt that Matsuzaki and
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`Dworkin are si mi lar.
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`Do you have an y other reason to co mbine, other
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`than that the y are si mila r?
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`MR. GOR YUNOV: Well , if you t ake a look at the
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`end of paragr aph 146, we state that the co mmon disc losure of
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`Montgome r y r eduction in Matsuzaki and Dworkin would have
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`led one of ordinar y skill to conside r their te achings together.
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`JUDGE Mc KONE: It doesn't sa y wh y.
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`JUDGE QUINN: That is the conclusion. I think
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`what we are tr ying to get at here is wher e do you pr ovide the
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`facts to support t he conclusion of obviousness. We need to
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`know these ma rke t de mands or co mmon sense applications or
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`the reasons that o ne of ordinar y ski ll in the art woul d have
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`made that conclus ion.
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`And all we have here, so fa r you h ave shown us, is
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`that the ref erence s are si mila r, or that the y solve similar
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`proble ms, but you need to go one more step. And we 're t r
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