Michael Carrozza
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`
`
`renner@fr.com
`Wednesday, January 28, 2015 10:59 PM
`trials@uspto.gov
`IV-IP14-00552; IPR27410-0021IP1@fr.com; Peter McAndrews; Herb Hart;
`renner@fr.com; Michael Carrozza; patrick@fr.com
`RE: IPR2014-00552 - Update Regarding The Parties' Meet And Confer
`
`Re: Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC
`Case IPR2014-00552 (Patent No. 6,754,195)
`Administrative Patent Judges Thomas L. Giannetti, James A. Tartal, and Patrick M.
`Boucher
`
`
`
`On January 16, the panel held a conference call with the parties to discuss Patent Owner’s
`Motion to Compel Testimony and Production, filed on December 31. Following the conference
`call, Judge Giannetti issued an Order on January 21 requiring the parties to meet and confer
`regarding factual issues related to Patent Owner’s Motion, namely, issues related to Patent
`Owner’s contention that Webster ’652 is disqualified as prior art under 35 U.S.C. § 103(c).
`
`
`The parties conferred by telephone on both January 21 and January 28, and Marvell submits
`this update identifying facts disputed, facts agreed, and Petitioner’s positions on open
`issues. Petitioner notes that its identification of facts disputed and facts agreed differs from
`the identification just provided by Patent Owner.
`
`
`Facts In Dispute
`
`
`1. Whether the date of invention is earlier than the filing date of the provisional
`application, July 6, 2001.
`2. Whether Intersil Americas, Inc., was a direct, wholly-owned subsidiary of Intersil
`Corporation, later named Intersil Communications, Inc., as of the filing date of the
`Provisional Application, or the date of invention that is earlier than the filing date of the
`Provisional Application.
`3. Whether Mark Webster and Michael Seals were under an obligation to assign their
`inventions to any Intersil entity, as of the filing date of the Provisional Application, or
`the date of invention that is earlier than the filing date of the Provisional Application.
`4. Whether any Intersil entity ever owned the invention claimed in the ’195 patent, as of
`the filing date of the Provisional Application, or the date of invention that is earlier than
`the filing date of the Provisional Application.
`
`
`
`1
`
`Intellectual Ventures I LLC
`Exhibit 2068
`Marvell v. IV I
`IPR2014-00552
`
`

`
`Facts Agreed On
`
`
`1. HSS Holding was created on 6/2/1999, changed its name to Intersil Holding on
`7/15/1999, then changed its name to Intersil Corporation in May 2001.
`2. HSS Operating was created on 6/2/1999, changed its name to Intersil Corporation on
`7/15/1999, then changed its name to Intersil Communications, Inc., in May 2001.
`3. Intersil Americas, Inc., was created on 11/8/2000.
`4. From 7/15/1999 until May 2001, Intersil Corporation was a wholly-owned subsidiary of
`Intersil Holding (parent).
`5. From May 2001 and May 2002, Intersil Communications, Inc., was a wholly-owned
`subsidiary of Intersil Corporation (parent).
`6. On 3/7/2001, Intersil Americas, Inc. was a subsidiary of Intersil Holding (parent).
`
`
`
`Petitioner’s Position
`
`
`Patent Owner and Petitioner met and conferred on January 21 and 28.
`
`
`After the first meeting on January 21, Petitioner called counsel for Intersil Corporation, Mr.
`Behnkopf. During the conversation, Mr. Behnkopf indicated that he would need to conduct
`research to identify documentation relating to the ownership and interrelationship of
`corporate entities including Intersil Americas, Inc. and Intersil Corporation. Mr. Behnkopf also
`indicated that he was uncertain of whether such documentation existed, and that he had been
`contacted by attorneys in the McAndrews firm regarding similar issues. Based on information
`received in a call with Patent Owner counsel thereafter, Petitioner understood that Mr.
`Behnkopf intended to circulate a non-disclosure agreement and that Mr. Behnkopf would
`thereafter be willing to share information that he was able to unearth, if any existed, between
`Patent Owner and Petitioner. Petitioner never received a non-disclosure agreement from Mr.
`Behnkopf, but also did not learn of any reluctance by Mr. Behnkopf to share information with
`Patent Owner until the January 28 met and confer.
`
`
`Regardless, Patent Owner fails to establish a reasonable likelihood that proposed discovery
`from Intersil Corporation would produce information that will resolve the facts in dispute, for
`example, that Intersil Americas, Inc. was wholly owned by a single entity (namely, Intersil
`Corporation) as of the date of the invention. Patent Owner states, for example, that the
`organizational chart found by Mr. Bernkopf was dated July 20, 2001. Yet, this date is 14 days
`after the Provisional Application’s filing date. As such, the organizational chart could not show
`ownership as of the date of invention, which is at least as early as the Provisional Application’s
`filing date. The original stock certificates identified by Mr. Bernkopf would also fail to shed
`light on the facts in dispute. For at least these reasons, even limited discovery from Intersil
`Corporation is not warranted.
`
`
`2
`
`

`
`Regarding the disputed obligation to assign, Patent Owner furnished, after midnight EST on
`January 28, employment agreements ranging from 1999-2010, signed by persons other than
`Webster and Seals, only two of which were dated before 2002. Patent Owner sought to
`establish that the furnished employment agreements demonstrated the existence of an
`obligation to sign employment agreements by all Intersil employees, including Webster and
`Seals. Indeed, Petitioner pointed out during the January 28 meeting that such a small number
`of assignments suggests just the opposite – the absence of a requirement for execution by all
`Intersil employees, and further fails to in any way suggest that Mr. Webster and Mr. Seals
`themselves executed employee agreements.
`
`
`Petitioner also pointed out that the absence of such an employment agreement was
`confirmed in recent correspondence with Mr. Webster, by Mr. Webster himself. In more
`detail, Petitioner reached out to Mr. Webster by telephone on January 21. Though unable to
`speak with Mr. Webster until January 26, when Mr. Webster returned Petitioner’s phone call,
`Petitioner’s counsel received a declaration from Mr. Webster on January 28, and provided the
`same to Patent Owner on the same date. In his declaration, Mr. Webster definitively
`establishes that he could recall no obligation to assign his invention(s) on or before the
`Provisional Application’s filing date.
`
`In fact, in this declaration, Mr. Webster explains that his invention preceded that Provisional
`Application filing date, and that he implemented the invention in computer simulations using
`MATLAB software. This was said by Mr. Webster to have been consistent with disclosure that
`he found in a November 2000 presentation that he made to the IEEE. Mr. Webster further
`explains in his declaration that his answers furnished in deposition with respect to an
`obligation to assign were based solely on assumptions that he had made about employees and
`employers, and clarified this point through his acknowledgment that he could recall no
`employment agreement or other document creating an obligation to assign on or before the
`Provisional Application’s filing date (July 6, 2001). No further evidence was furnished by Patent
`Owner during the meet and confer process regarding Mr. Seals.
`
`
`During the meet and confer call on January 28, Patent Owner indicated that it had identified a
`patent assignment conveying rights in Mr. Webster ‘652 subject matter and also in a patent
`said to mimic the ‘195 Patent’s disclosure. The assignment was said by Patent Owner to have
`been from Intersil Communications, Inc. to Intersil Americas, Inc. Patent Owner contended
`that this document established common ownership of Mr. Webster’s ‘652 subject matter and
`of the patent mimicking the ‘195 Patent’s disclosure. Petitioner noted, however, that the
`patent assignment identified by Patent Owner was dated December 31, 2001, and pointed out
`that these future patent assignments are therefore not probative of ownership rights of the
`subject documents as of the date of invention, nor do they establish a basis for ownership by
`Intersil Communications, Inc. of the subject documents. Moreover, Petitioner has not had
`
`3
`
`

`
`sufficient opportunity to examine the identified patent assignment or to compare the '195
`patent claims to the disclosure therein.
`
`
`Based on both a lack evidence from Patent Owner to establish that further discovery from Mr.
`Webster is likely to lead to information other than learned in deposition and clarified by the
`January 28 Webster declaration, and a clearly-voiced lack of recollection by Mr. Webster of
`any legal obligation on his part to assign his invention(s) at or before the filing date of the
`Provisional Application, Petitioner submits that compelled testimony of Mr. Webster is
`unwarranted. The same applies to Mr. Seals, but to an even greater extent, given the further
`lack of evidence furnished regarding an obligation to assign by Mr. Seals.
`
`
`Moreover, in his declaration, Mr. Webster notes that Patent Owner counsel contacted him
`shortly after the beginning of the New Year, and that he made himself available to speak with
`them at that time, and thereafter. Yet, no further contact was made by the Patent
`Owner. Mr. Webster remained easily reached by Petitioner when solicited within the last
`week. Compelled testimony is unwarranted under these circumstances.
`
`
`Respectfully submitted,
`
`
`Karl Renner
`
`
`_______________________________
`W. Karl Renner
`Fish & Richardson P.C. | 1425 K Street, N.W., 11th Floor | Washington, D.C. 20005-3500
`Tel: (202) 626-6447 | renner@fr.com
`
`Note: This e-mail is for the sole use of the intended recipient(s) and may contain material that is confidential,
`privileged, and/or attorney work product. Any review or distribution by others is strictly prohibited. If you are
`not the intended recipient, please contact the sender and delete all copies.
`
`
`
`
`
`
`
`From: Michael Carrozza [mailto:mcarrozza@mcandrews-ip.com]
`Sent: Wednesday, January 28, 2015 11:26 PM
`To: trials@uspto.gov
`Cc: IV-IP14-00552; IPR27410-0021IP1; Karl Renner; Peter McAndrews; Herb Hart
`Subject: IPR2014-00552 - Update Regarding The Parties' Meet And Confer
`
`
`Re: Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC
`Case IPR2014-00552 (Patent No. 6,754,195) (Administrative Patent Judges Thomas L. Giannetti, James
`A. Tartal, and Patrick M. Boucher)
`
`
`4
`
`

`
`On January 16, the panel held a conference call with the parties to discuss Patent Owner’s Motion to Compel
`Testimony and Production, filed on December 31. Following the conference call, Judge Giannetti issued an
`Order on January 21 requiring the parties to meet and confer regarding factual issues related to Patent
`Owner’s Motion, namely, issues related to Patent Owner’s contention that Webster ’652 is disqualified as
`prior art under 35 U.S.C. § 103(c).
`
`
`The parties conferred by telephone on both January 21 and January 28, and, while they had hoped to submit a
`joint update identifying facts disputed, facts agreed, and Patent Owner’s and Petitioner’s positions on open
`issues, time did not permit full agreement. Accordingly, the following is Patent Owner’s submission, with
`Petitioner to make a separate submission.
`
`
`Facts In Dispute
`
`
`1. Whether Intersil Americas, Inc., was a direct, wholly-owned subsidiary of Intersil Corporation, later
`named Intersil Communications, Inc., as of the effective filing date of the ’195 patent.
`2. Whether Mark Webster and Michael Seals were ever under an obligation to assign their inventions to
`any Intersil entity.
`3. Whether any Intersil entity ever owned the invention claimed in the ’195 patent prior to the
`assignment executed by Mark Webster and Michael Seals on May 8, 2002.
`
`
`
`Facts Agreed On
`
`
`1. HSS Holding was created on 6/2/1999, changed its name to Intersil Holding on 7/15/1999, then
`changed its name to Intersil Corporation in May 2001.
`2. HSS Operating was created on 6/2/1999, changed its name to Intersil Corporation on 7/15/1999, then
`changed its name to Intersil Communications, Inc., in May 2001.
`3.
`Intersil Americas, Inc., was created on 11/8/2000.
`4. From 7/15/1999 until May 2001, Intersil Corporation was a wholly-owned subsidiary of Intersil Holding
`(parent).
`5. From May 2001 until the present, Intersil Communications, Inc., was and is a wholly-owned subsidiary
`of Intersil Corporation (parent).
`6. From 11/8/2000 until the present, Intersil Americas, Inc., was and is a subsidiary of Intersil Holding
`(parent), then Intersil Corporation (parent) following the name change.
`
`
`
`Patent Owner’s Position
`
`
`Prior to the meet and confer on January 21, Patent Owner provided Petitioner with specific citations to Patent
`Owner’s Exhibits and a certificate of amendment to the articles of incorporation for Intersil Americas, Inc., that
`supported Patent Owner’s position on Intersil’s corporate structure. Petitioner remained unpersuaded by
`Patent Owner’s evidence.
`
`Immediately following the January 21 meet and confer, Patent Owner called Intersil’s Chief IP Counsel, Paul
`Bernkopf, to inquire whether he would share documents with the parties to further satisfy Petitioner. Mr.
`Bernkopf did not answer, but returned the call and left a voicemail for Patent Owner’s counsel, stating that he
`“was on the phone with Karl Renner at Fish & Richardson talking about the same subject matter.” Mr.
`Bernkopf’s message further stated that “[p]ossibly that call, you know, satisfies his requirements.” Mr.
`Bernkopf’s message suggested that Patent Owner “communicate with him and see if he needs, you know,
`
`5
`
`

`
`additional information,” and that “[m]aybe we can have a joint call together if that would be possible because
`— well, to hammer this out.”
`
`
`Upon Patent Owner’s counsel returning his call later that day, Mr. Bernkopf stated that he found an
`organizational chart dated July 20, 2001 (14 days after the effective filing date of the ’195 patent) that
`identified Intersil Americas, Inc., as a wholly-owned subsidiary of Intersil Corporation, which itself was
`identified on the chart as a wholly-owned subsidiary of Intersil Holding. This is precisely the corporate
`structure that Patent Owner has advanced. Mr. Bernkopf also stated that he had found (1) a letter from
`Intersil’s General Counsel, dated November 30, 2000, confirming the sale of shares for Intersil Americas, Inc.,
`to Intersil Corporation, and (2) the original stock certificates.
`
`
`During that call, Mr. Bernkopf stated that he was willing to share the documents with the parties without
`requiring a subpoena under the terms of a 3-way nondisclosure agreement for purposes of settling the
`dispute. He stated that a subpoena would be required only if the parties planned to submit the documents as
`evidence to the Patent Office. On January 22, Mr. Bernkopf stated that “before [he] proceed[s] to make
`copies of the documents available, even under NDA, [he] will need to discuss the matter with [his]
`management.” On the following day (January 23), Mr. Bernkopf informed Patent Owner’s counsel that “[he]
`has been instructed that [Patent Owner] will have to issue subpoenas to obtain the information.”
`
`
`During the January 28 meet and confer telephone conference, Patent Owner advised Petitioner of the
`evidence Mr. Bernkopf had identified and expressed Patent Owner’s view that the evidence unequivocally
`supported Patent Owner’s position concerning Intersil’s corporate structure. When asked whether the
`suggested call with Mr. Bernkopf would satisfy Petitioner (in lieu of obtaining the documents themselves via a
`subpoena), Petitioner declined to commit to any further positions.
`
`
`Limited discovery from Intersil on the issue of corporate structure is warranted because: (1) Petitioner
`disputes whether Intersil Americas, Inc., was a wholly-owned subsidiary of Intersil Corporation; (2) Intersil’s
`counsel has already orally confirmed Patent Owner’s position on Intersil’s corporate structure and has stated
`that he possesses documentary evidence of that structure; and (3) Intersil, once willing to cooperate under an
`NDA, is now insisting on a subpoena.
`
`
`Patent Owner also sought to reach agreement with Petitioner as to whether Mark Webster and Michael Seals
`had obligations to assign their inventions to an Intersil entity. Patent Owner provided to Petitioner copies of
`nine publicly available employment agreements for Intersil executives ranging from 1999 to 2010. Each
`employment agreement contains unambiguous language that Intersil owned all of the executive’s inventions
`and that the executive would do whatever was necessary to further perfect Intersil’s rights in the
`inventions. Petitioner countered that such evidence shows nothing more than that nine individuals had an
`obligation to assign their inventions and says nothing as to whether Mark Webster and Michael Seals were
`under similar obligations.
`
`
`Patent Owner further advised Petitioner that it located a patent assignment whereby Webster ’652 and the
`invention claimed in the ’195 patent, as described ipsis verbis in a sister patent specification (along with 1,700
`other patents) were transferred from Intersil Communications, Inc., to Intersil Americas, Inc., on December 31,
`2001. Thus, this patent assignment shows that both were owned by a single Intersil entity as of the ’195
`provisional filing date. Yet Petitioner remained unpersuaded that § 103(c) was satisfied.
`
`
`Patent Owner learned late in the day on January 28 that Petitioner recently spoke with Mark Webster and
`secured a declaration from him, stating that he made his assignments to Intersil “under a general assumption”
`
`6
`
`

`
`that Intersil owned his inventions, but that he did not recall “signing an employment agreement” that
`established “a written obligation to assign rights” to Intersil.
`
`
`Discovery from Mark Webster and Michael Seals is warranted because: (1) Petitioner now disputes that either
`inventor was ever obligated to assign his inventions to any entity and (2) Mr. Webster had separately and
`orally advised Patent Owner, prior to signing Petitioner’s declaration, that he always understood that he had
`an obligation to assign his inventions to his employers, including Intersil.
`
`
`Respectfully submitted,
`Michael Carrozza
`
`
`
`
`
`
`MICHAEL CARROZZA
`MCANDREWS HELD & MALLOY LTD.
`500 WEST MADISON STREET, 34TH FLOOR
`CHICAGO, ILLINOIS 60661
`(T) 312 775 8000
`(F) 312 775 8100
`DIRECT 312 775 8006
`mcarrozza@mcandrews-ip.com
`www.mcandrews-ip.com
`
`
`http://www.mcandrews-ip.com
`
`
`
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`7