`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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`NVIDIA CORPORATION,
`Petitioner
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`
`v.
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`
`POLARIS INNOVATIONS LIMITED,
`Patent Owner
`
`________________________________
`
`
`
`Case No. IPR2017-00381
`Patent No. 7,866,122
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`________________________________
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`
`
`PATENT OWNER’S SUPPLEMENTAL RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
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`
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`TABLE OF CONTENTS
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`
`INTRODUCTION ........................................................................................... 1
`I.
`BACKGROUND ............................................................................................. 1
`II.
`III. ARGUMENTS AGAINST CHALLENGE 2 .................................................. 2
`A.
`Response Arguments Applicable to Challenge 2 .............................. 2
`B.
`Institution Decision Correctly Noted Fatal Flaws in Challenge 2. ... 4
`IV. CONCLUSION ................................................................................................ 5
`
`
`
`I.
`
`INTRODUCTION
`Polaris hereby addresses the following challenge recently added to this trial:
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`Whether claims 2-4, 10-12, 17-19, 21-23, and 25-28 are unpatentable under 35
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`U.S.C. § 103 as obvious over Lee (Ex. 1004) (“Challenge 2” herein, as labeled in
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`the petition (Paper 1)). For the reasons stated herein Challenge 2 fails.
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`II. BACKGROUND
`The petition presented five challenges to the ’122 Patent (Ex. 1001). An
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`institution decision dated June 22, 2017 (Paper 9) instituted trial on four of those
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`challenges: Challenges 1 and 3-5. However, the institution decision determined
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`that Challenge 2 did not have a reasonable likelihood of prevailing.
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`Challenge 2 is similar to Challenges 1 and 3-5. Challenge 1 asserts that
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`claims 1, 5, 6, 8, 9, 13, 14, 16, 20, and 24 are anticipated by Lee, while Challenges
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`3-5 collectively assert that all other claims are obvious over Lee in view of Yoo
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`(Ex. 1006), Kyung (Ex. 1005), or Gould (Ex. 1007), respectively. Challenge 2 is
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`highly similar to Challenge 3 in particular. Both Challenges 2 and 3 are directed to
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`the same claims; acknowledge that Lee does not explicitly disclose “a read clock
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`signal generated from the second clock signal,” as recited in claims 2, 10, 17, 21,
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`25, and 28; assert that Lee’s STROBE signal is the claimed “read clock signal” and
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`Lee’s CLK2 signal is the claimed “the second clock signal”; and assert that it
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`would have been obvious to generate Lee’s STROBE signal from Lee’s CLK2.
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`IPR2015-00381
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`Suppl. Response
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`Page 1 of 5
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`Challenges 2 and 3 differ only in that the former asserts that Lee alone suggests
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`generating Lee’s STROBE signal from Lee’s CLK2, whereas the latter asserts that
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`Yoo teaches a specific circuit that could be used to generate Lee’s STROBE signal
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`from Lee’s CLK2. See Pet. at 9-10, 78; Jacob Decl. (Ex. 1003) ¶ 126. Challenge 4
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`is also highly similar but directed to just a subset of the claims and based on Kyung
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`instead of Yoo as allegedly teaching a specific circuit that could be used to
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`generate Lee’s STROBE signal from Lee’s CLK2. See Pet. at 10, 90-91; Jacob
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`Decl. ¶ 117. In other words, Challenges 3 and 4 rely on Yoo and Kyung,
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`respectively, to fill in Lee’s silence as to how Lee’s STROBE signal is generated.
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`III. ARGUMENTS AGAINST CHALLENGE 2
`A. Response Arguments Applicable to Challenge 2
`All arguments in the Response filed Sept. 29, 2017 (Paper 18) defending the
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`patentability of claims 2-4, 10-12, 17-19, 21-23, and 25-28 are applicable to
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`Challenge 2. As a preliminary matter, because the petitioner never challenged
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`these claims as anticipated by Lee, and the Board did not previously institute trial
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`on Challenge 2 based on obviousness by Lee, the Board and the petitioner must
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`have recognized that Lee neither anticipates nor renders obvious these claims. For
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`this reason alone, these claims are patentable over Lee.
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`Also, Challenge 2 fails for the same reason that Challenges 3 and 4 fail: Lee
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`is an intrinsically flawed primary reference whose STROBE signal is not and
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`IPR2015-00381
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`Suppl. Response
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`Page 2 of 5
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`would not be generated from CLK2, regardless of whether the alleged teaching of
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`how to generate STROBE comes from Yoo, Kyung, or Lee itself. Each of
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`Challenges 2-4 is based on the same misunderstanding of Lee, as explained in §
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`VIII of the Response (pages 42-58) and the unrebutted testimony of Dr. Przybylski
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`(Ex. 2003, ¶¶ 58-72, 90-97, 99). There is no embodiment in Lee having both a
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`STROBE signal and two external clock signals, as claims 2, 10, 17, 21, 25, and 28
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`require. Lee’s first embodiment, illustrated in Figure 3, has a STROBE signal but
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`not an external second clock signal CLK2. Lee’s second embodiment, illustrated
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`in Figures 4 and 5, has two external clock signals but no STROBE signal.
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`To the extent Lee’s second embodiment might include a STROBE signal, it
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`would be in place of, not in addition to, CLK2, as shown in blue, not red, in the
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`annotated versions of Lee’s Figures 4-5 in the Response at 50, 53. See also
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`Przybylski Decl. ¶¶ 68, 96. STROBE provides no synchronization benefit in Lee’s
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`second embodiment not already provided by CLK2, which also comes from the
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`controller and plays the role that STROBE plays in the first embodiment. Neither
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`Figure 6, 7:36-41, nor claim 18 of Lee shows or states otherwise. Those parts of
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`Lee do not show or say that the chip 401 is modified to accept the STROBE signal
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`on an additional, undisclosed, unnecessary, undesirable pin. At most, those parts
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`of Lee might imply “connect[ing]” the chip to “receive” the STROBE signal on the
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`existing CLK2 line, as the Response shows in the blue-annotated versions of Lee’s
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`IPR2015-00381
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`Suppl. Response
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`Page 3 of 5
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`
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`figures. Thus, there is no embodiment in Lee having both an external CLK2 and
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`STROBE, as claims 2, 10, 17, 21, 25, and 28 require.
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`Significantly, Dr. Przybylski’s cogent analysis of Lee, as summarized above,
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`was unrebutted by Dr. Jacob, even though Dr. Jacob picked every imaginable nit
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`with Dr. Przybylski’s analysis of Yoo. See Ex. 1011. Dr. Jacob’s silence on reply
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`regarding Lee speaks volumes.
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`Additionally, the petition identifies no persuasive rationale for combining
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`Lee’s two disparate embodiments in arriving at the claimed invention. See
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`Cordelia Lighting, Inc. v. Cooper Lighting, LLC, IPR2017-01859, Paper No. 7 at
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`22 (Jan. 16, 2018); see also Bubbletight, LLC. v. Baker Hughes Oilfield
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`Operations, Inc., IPR2017-00327, Paper 11 at 20 (May 15, 2017) (same).
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`Moreover, Challenge 2 also fails for the same reasons that Challenge 1 fails
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`with respect to the independent claims: (1) Lee fails to disclose “read operations”
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`or “write operations,” as those phrases should be interpreted to refer to getting data
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`from or placing data in, respectively, a memory array, see Response §§ III-C, V at
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`22-26, 27-30; (2) the petition fails to point out a “memory array” in Lee’s
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`“memory device,” properly interpreted in claim 16, see id. §§ III-A, VI at 14-20,
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`31-41; and (3) the petition’s challenge to means-plus-function claim 24 is
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`incomplete, see id. §§ III-B, VII at 21-22, 41-42.
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`B.
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`Institution Decision Correctly Noted Fatal Flaws in Challenge 2.
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`IPR2015-00381
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`Suppl. Response
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`Page 4 of 5
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`The Board did not institute trial on Challenge 2 because the testimony of Dr.
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`Jacob was conclusory regarding the rationale to modify Lee alone:
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`With respect to Ground 2, obviousness over Lee
`alone, Petitioner relies on Dr. Jacob’s testimony to
`supply the missing claim limitation. . . . We . . . are not
`persuaded by Dr. Jacob’s testimony . . . See 37 C.F.R. §
`42.65(a) (“Expert testimony that does not disclose the
`underlying facts or data on which the opinion is based is
`entitled to little or no weight.”)
`Dr. Jacob also testifies . . . [W]e determine that
`Dr. Jacob’s testimony in this regard is not sufficient
`because he, again, does not disclose sufficiently the facts
`or data on which he relies.
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`Inst. Dec’n at 18-19 (ellipses in original, citations to petition omitted). That is
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`correct, and nothing in the trial substantiates Dr. Jacob’s unsupported assertions.
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`Challenge 2 fails for this reason as well.
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`IV. CONCLUSION
`Accordingly, the final written decision should additionally rule that the
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`petition has not met its burden to show that claims 2-4, 10-12, 17-19, 21-23, and
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`25-28 of the ’122 Patent are unpatentable as obvious over Lee alone.
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`Date: 2017 May 18
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`Respectfully submitted,
`By: / M.C. Phillips /
`Matthew C. Phillips, Reg. No. 43,403
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`IPR2015-00381
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`Suppl. Response
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`Page 5 of 5
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`CERTIFICATE OF SERVICE
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`I hereby certify that on May 18, 2018, copies of the foregoing PATENT
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`OWNER’S RESPONSE TO PETITION FOR INTER PARTES REVIEW and all
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`documents filed with it were served via electronic mail, as agreed to by counsel,
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`upon the following counsel for the Petitioner:
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`IPR24069-0006IP1@fr.com,
`PTABInbound@fr.com,
`monaldo@fr.com
`
`IPR24069-0006IP1@fr.com,
`PTABInbound@fr.com,
`renner@fr.com
`
`IPR24069-0006IP1@fr.com,
`PTABInbound@fr.com,
`hoffman@fr.com
`
`IPR24069-0006IP1@fr.com,
`PTABInbound@fr.com,
`goldberg@fr.com
`
`kvidal@winston.com
`
` /
`
` M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`
`Jeremy J. Monaldo:
`
`
`W. Karl Renner:
`
`
`David M. Hoffman:
`
`
`Andrew Goldberg:
`
`
`Katherine A. Vidal:
`
`
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`IPR2015-00381
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`Suppl. Response Certificate
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`
`
`
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