Trials@uspto.gov
`571.272.7822
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` Paper No. 76
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` Filed: April 30, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`FG SRC LLC,
`Patent Owner.
`____________
`
`IPR2018-01604
`Patent 7,421,524 B2
`____________
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571.272.7822
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` Paper No. 76
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`
` Filed: April 30, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`FG SRC LLC,
`Patent Owner.
`____________
`
`IPR2018-01604
`Patent 7,421,524 B2
`____________
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2018-01604
`Patent 7,421,524 B2
`
`
`I.
`
`INTRODUCTION
`A. Background
`Microsoft Corporation (“Petitioner”) filed a Petition requesting an
`inter partes review of claims 1, 2, and 13‒15 of U.S. Patent No. 7,421,524
`B2 (Ex. 1001, “the ’524 patent”). Paper 2 (“Pet.”). FG SRC LLC (“Patent
`Owner”) filed a Preliminary Response pursuant to 35 U.S.C. § 313. Paper
`15 (“Prelim. Resp.”).1
`On May 3, 2019, we issued a Decision ordering that “an inter partes
`review is hereby instituted with respect to all grounds set forth in the
`Petition.” Paper 21 (“Dec.”), 29. After institution, Patent Owner filed a
`Patent Owner’s Response (Paper 38, “PO Resp.”). In reply, Petitioner filed
`a Petitioner’s Reply to Patent Owner’s Response (Paper 56, “Pet. Reply”).
`In response, Patent Owner filed a Patent Owner’s Sur-Reply (Paper 62,
`“PO Sur-Reply”). Petitioner and Patent Owner also filed Motions to
`Exclude Evidence (Papers 63 (“Pet. Mot.”), 64 (“PO Mot.”)), Oppositions to
`the Motions (Papers 65 (“Pet. Opp. Mot.”), 66) and Replies to the
`Oppositions (Papers 68, 69). Petitioner and Patent Owner presented oral
`arguments on February 3, 2020, and a transcript has been entered into the
`record. Paper 75 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6. In this Final Written
`Decision, after reviewing all relevant evidence and arguments, we determine
`that Petitioner has met its burden of showing, by a preponderance of the
`
`
`1 Saint Regis Mohawk Tribe, originally named as Patent Owner, assigned
`the ’524 patent to DirectStream, LLC on May 21, 2019. Paper 27, 1.
`DirectStream, LLC assigned the ’524 patent to FG SRC LLC on January 22,
`2020. Paper 73, 1.
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`evidence, that claims 1, 2, and 13‒15 of the ’524 patent are unpatentable.
`Petitioner’s Motion to Exclude is denied-in-part and dismissed-in-part.
`Patent Owner’s Motion to Exclude is denied-in-part and dismissed-in-part.
`B. Related Proceedings
`The parties indicate that the ’524 patent currently is involved in SRC
`
`Labs, LLC et al. v. Microsoft Corp., Civil Action No. 2-18-cv-00321 (W.D.
`Wash.), which was transferred from SRC Labs, LLC et al. v. Microsoft
`Corp., Civil Action No. 1-17-cv-01172 (E.D. Va.). Pet. 3; Prelim. Resp. 4–
`5. The following proceedings, before the Board, also involve the same
`parties: IPR2018-01594, IPR2018-01599, IPR2018-01600, IPR2018-01601,
`IPR2018-01602, IPR2018-01603, IPR2018-01605, IPR2018-01606, and
`IPR2018-01607.2
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`C. The ʼ524 Patent (Ex. 1001)
`The ’524 patent is directed to the field of computer architecture, and,
`specifically, “a switch/network adapter port (‘SNAP’) for clustered
`computers employing a chain of multi-adaptive processors (‘MAP[]’) . . . in
`a dual in-line memory module (‘DIMM’) format.” Ex. 1001, 1:29–37.
`A block diagram of an exemplary MAP element is disclosed in
`Figure 3:
`
`
`2 IPR2018-01602 and IPR2018-01603 have been consolidated with
`IPR2018-01601. IPR2018-01606 and IPR2018-01607 have been
`consolidated with IPR2018-01605.
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`Figure 3 illustrates memory bank 120 for a MAP element-based
`system computer architecture (not depicted in Figure 3). Id. at 4:60–64.
`“Each memory bank 120 includes a bank control logic block 122
`bi-directionally coupled to the computer system trunk lines, for example, a
`72 line bus 124.” Id. at 4:64–66. Memory array 130 is coupled to bank
`control logic 122 via bi-directional data bus 126 and address bus 128. Id. at
`4:67–5:3. “MAP element 112 comprises a control block 132 coupled to the
`address bus 128.” Id. at 5:5–6. “[C]ontrol block 132 is also bi-directionally
`coupled to a user field programmable gate array (‘FPGA’),” and “user
`FPGA 134 is coupled directly to the data bus 126.” Id. at 5:6–10. The
`’524 patent discloses that MAP element 112 has direct memory access
`(DMA) capability, which permits it to write to memory, and “it is possible to
`allow a MAP element 112 to feed results to another MAP element 112
`through use of a chain port” because MAP element 112 receives operands
`via writes to memory. Id. at 5:50–54.
`Computer system 200 including MAP element 212 in DIMM format
`is depicted in Figure 5:
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`Figure 5 illustrates “computer system 200 includ[ing] one or more
`processors 2020 and 2021 which are coupled to an associated PC memory
`and I/O controller 204.” Id. at 7:42–45. “[C]ontroller 204 is . . .
`conventionally coupled to a number of DIMM slots 214 by means of a much
`higher bandwidth DIMM bus 216 capable of data transfer rates of 2.1
`GB/sec. or greater.” Id. at 7:56–59. DIMM MAP element 212 is associated
`with, or physically located within, one of DIMM slots 214, which may be
`coupled to another clustered computer MAP element by a cluster
`interconnect fabric connection 220 that is connected to MAP chain ports. Id.
`at 7:59–62, 7:65–8:1.
`The ’524 patent discloses that because DIMM MAP element 212 is
`placed in one of DIMM slots 214, FPGA 134 of DIMM MAP element 212
`accepts normal memory “read” and “write” transactions, and converts them
`to a format used by an interconnect switch or network. Id. at 8:13–17.
`According to the ’524 patent, however, “the electrical protocol of the
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`DIMMs is such that once the data arrives at the receiver, there is no way for
`a DIMM module within the DIMM slots 214 to signal the microprocessor
`202 that it has arrived.” Id. at 8:29–33. The “efforts of the processor 202
`would have to be synchronized through the use of a continued polling of the
`DIMM MAP elements 212 to determine if data has arrived.” Id. at 8:29–36.
`According to the ’524 patent, this would consume the processor and much of
`its bandwidth, thereby stalling all other bus agents. Id. at 8:36–38.
`To address this issue, the ’524 patent discloses connection 218
`interconnecting DIMM MAP element 212 and PCI bus 210 such that DIMM
`MAP element 212 may generate communications packets and send them via
`PCI bus 210 to processor 202. Id. at 7:62–65; 8:39–43. According to the
`’524 patent, because these packets would account for a very small
`percentage of the data moved, low bandwidth effects of PCI bus 210 would
`be minimized. Id. at 8:43–47.
`D. Illustrative Claim
`Petitioner challenges claims 1, 2, and 13‒15 of the ’524 patent.
`Pet. 12–80. Claim 1 is the only independent claim at issue. Claim 1 is
`illustrative of the challenged claims and is reproduced below:
`1.
`A processor element for a memory module bus of a
`computer system, said processor element comprising:
`a field programmable gate array configurable to perform
`an identified algorithm on an operand provided thereto and
`operative to alter data provided directly thereto on said memory
`module bus; and
`field
`to said
`a direct data connection coupled
`programmable gate array for providing said altered data directly
`from said memory module bus to an external device coupled
`thereto.
`Ex. 1001, 9:42‒10:4.
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`E. The Alleged Grounds of Unpatentability
`The information presented in the Petition sets forth grounds of
`unpatentability of claims 1, 2, and 13‒15 of the ’524 patent as follows (see
`Pet. 12–80):3,4
`
`Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
`
`1, 2, 13–15
`
`1, 2, 13–15
`
`1, 2, 13–15
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`2
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`§ 102
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Tsutsui5
`
`Tsutsui
`
`Tsutsui, Tsutsui II6
`Tsutsui, Stone,7 with or
`without Tsutsui II
`Tsutsui, Collins,8 with or
`without Tsutsui II
`Tsutsui, Hayashi,9 with or
`without Tsutsui II
`
`
`
`3 Petitioner supports its challenge with the Declaration of Scott Hauck, Ph.D.
`Ex. 1003.
`4 All references to 35 U.S.C. §§ 102, 103 herein are pre-AIA.
`5 Akihiro Tsutsui et al., YARDS: FPGA/MPU Hybrid Architecture for
`Telecommunication Data Processing, Proceedings of Association for
`Computing Machinery / Special Interest Group for Design Automation
`(ACM/SIGDA) FPGA ’97, 93–99, (1997) (Ex. 1007, “Tsutsui”).
`6 A. Tsutsui et al., Special Purpose FPGA for High-speed Digital
`Telecommunications Systems, 1995 IEEE International Conference on
`Computer Design: VLSI in Computers & Processors, pp. 486–491 (1995)
`(Ex. 1009, “Tsutsui II”).
`7 Harold S. Stone, MICROCOMPUTER INTERFACING 1–41 (Tom Robbins et al.
`2d ed. 1983) (Ex. 1010, “Stone”).
`
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`II. ANALYSIS
`A. Motions to Exclude
`The party moving to exclude evidence bears the burden of proof to
`establish that it is entitled to the relief requested—namely, that the material
`sought to be excluded is inadmissible under the Federal Rules of Evidence.
`See 37 C.F.R. §§ 42.20(c), 42.62(a). For the reasons discussed below,
`Petitioner’s Motion is denied-in-part and dismissed-in-part, and Patent
`Owner’s Motion is denied-in-part and dismissed-in-part.
`1. Petitioner’s Motion to Exclude
`a. Exhibits 2067 and 2086
`Petitioner moves to exclude the declaration of one of the named
`inventors of the ’524 patent, Jon Huppenthal (Exhibit 2067), “in its entirety
`as not being relevant to any issue on which trial has been instituted, and for
`lacking foundation, containing hearsay, and/or causing undue prejudice.”
`Pet. Mot. 3–6. Petitioner additionally moves to exclude portions of
`“Mr. Huppenthal’s declaration (Ex. 2067 ¶¶ 80, 82–86) due to his refusal to
`answer questions concerning those portions of the declaration.” Id. at 1–3
`(citing Paper 51, 7–8).
`Petitioner also moves to exclude a transcript (Exhibit 2086) of a
`deposition of Petitioner’s declarant from other inter partes reviews as “not
`being relevant to any issue on which trial has been instituted, for containing
`
`
`8 U.S. Patent No. 5,671,355, issued September 23, 1997 (Ex. 1008,
`“Collins”).
`9 K. Hayashi et al., Reconfigurable Real-Time Signal Transport System using
`Custom FPGAs, IEEE Symposium on FPGAs for Custom Computing
`Machines, IEEE (1995) (Ex. 1013, “Hayashi”).
`8
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`hearsay, and/or causing undue prejudice.” Id. at 6–7. Petitioner argues that
`allowing the transcript in the record would be “highly prejudicial as it
`presents itself with the indicia of expert testimony while being totally devoid
`from the necessary context of the matter from which it originates.” Id. at 6.
`Patent Owner cites Exhibits 2067 and 2086 in its Response and Sur-Reply.
`Petitioner’s Motion is dismissed as moot, as we do not rely on the
`testimony in a manner adverse to Petitioner in this Decision. As explained
`below, even if the testimony is considered, we are not persuaded by Patent
`Owner’s arguments regarding the state of the art or alleged nonobviousness
`of the challenged claims, and Patent Owner has not shown proof of
`secondary considerations that would support a conclusion of
`nonobviousness. See supra Sections II.C–II.D.
`b. Exhibit 2102
`Petitioner moves to exclude paragraph 133 of the declaration of Patent
`Owner’s declarant, Houman Homayoun, Ph.D., which refers to Exhibit
`2067. Pet. Mot. 8. Because we do not exclude that exhibit, and do not rely
`on paragraph 133 of the Homayoun Declaration, we also dismiss as moot
`Petitioner’s Motion with respect to Exhibit 2102.
`c. Exhibits 2060, 2062–2064, 2066, 2072-2080, 2085, 2088, 2092,
`2094, 2096–2101, 2103, 2104, 2106–2145, 2147, 2148, 2157, and
`2160
`Petitioner moves to exclude a number of exhibits as “not being
`relevant to any issues on which trial has been instituted, lacking foundation,
`and/or causing undue prejudice” because the exhibits were not discussed
`substantively and/or cited in Patent Owner’s Response and Sur-Reply. Pet.
`Mot. 7–8. Petitioner’s Motion is dismissed as moot, as we do not rely on the
`exhibits in a manner adverse to Petitioner in this Decision. We note,
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`however, that in evaluating Petitioner’s asserted grounds of unpatentability,
`we only consider substantive arguments made by the parties in their papers
`during trial (i.e., the Petition, Response, Reply, and Sur-Reply). To the
`extent a document is filed in the record but never discussed in a paper, there
`is no substantive argument pertaining to that document that can be
`considered.
`d. Patent Owner’s Response
`Petitioner moves to exclude portions of Patent Owner’s Response
`referring to the exhibits that Petitioner seeks to exclude. Pet. Mot. 8. Patent
`Owner’s Response is a paper with attorney arguments, not evidence that
`may be excluded.10 Further, we do not exclude any of the exhibits referred
`to in the identified portions of the Response. Petitioner’s Motion is denied
`as to Patent Owner’s Response.
`2. Patent Owner’s Motion to Exclude
`a. Exhibits 1007, 1036 and 1038
`Patent Owner first objected to the authenticity of Exhibit 1007 in its
`Patent Owner Response. PO Mot. 5 (citing PO Resp. 48). Now, Patent
`Owner moves to exclude Exhibits 1007, 1036, and 1038 as unauthenticated
`under Federal Rule of Evidence 901 because Petitioner’s declarant, Stephen
`Trimberger, Ph.D., “admits that his original declaration did not properly
`authenticate EX1007.” PO Mot. 5–7 (citing Ex. 1034 ¶ 7). Patent Owner
`argues that Petitioner attempts to authenticate Exhibit 1007 using evidence
`submitted for the first time in Petitioner’s Reply, which violates Patent
`
`10 Petitioner did not seek authorization to file a motion to strike Patent
`Owner’s Response. See Patent Trial and Appeal Board Consolidated Trial
`Practice Guide (Nov. 2019), 80–81, available at https://www.uspto.gov/
`TrialPracticeGuideConsolidated (“Trial Practice Guide”).
`10
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`Owner’s due process and administrative rights. Id. at 6. Patent Owner
`further argues that Exhibits 1036 and 1038, which are identical copies of
`Exhibit 1007, should be excluded “for the same reasons” as Exhibit 1007.
`Id. at 5, 7.
`“Any objection to evidence submitted during a preliminary
`proceeding must be filed within ten business days of the institution of the
`trial. . . . The objection must identify the grounds for the objection with
`sufficient particularity to allow correction in the form of supplemental
`evidence.” 37 C.F.R. § 42.64(b)(1); see 37 C.F.R. § 42.2 (defining a
`“preliminary proceeding” as the time period beginning “with the filing of a
`petition for instituting a trial” and ending “with a written decision as to
`whether a trial will be instituted”). This process allows the party that
`originally submitted the evidence to attempt to cure the objection by serving
`supplemental evidence. 37 C.F.R. § 42.64(b)(2). If the submitting party
`does not serve supplemental evidence, or if the supplemental evidence does
`not cure the objection, “[a] motion to exclude evidence must be filed to
`preserve [the] objection. The motion must identify the objections in the
`record in order and must explain the objections.” 37 C.F.R. § 42.64(c).
`“To satisfy the requirement of authenticating or identifying an item of
`evidence, the proponent must produce evidence sufficient to support a
`finding that the item is what the proponent claims it is.” Fed. R. Evid.
`901(a). Certain evidence, though, is “self-authenticating” and “require[s] no
`extrinsic evidence of authenticity in order to be admitted.” Fed. R. Evid.
`902.
`
`Petitioner asserts that Patent Owner waived its objection by failing to
`timely object to Exhibit 1007 as lacking authenticity. Pet. Opp. Mot. 1. We
`
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`agree. Patent Owner admits that it objected to the authenticity of Exhibit
`1007 in its Response. PO Mot. 5. Patent Owner submitted its Response on
`August 5, 2019, more than ten business days after we instituted this
`proceeding on May 3, 2019. Therefore, Patent Owner’s objection to Exhibit
`1007 based on authenticity is untimely.
`Petitioner further asserts that Exhibits 1007, 1036, and 1038 are
`authentic. Pet. Opp. Mot. 1–4. First, Petitioner asserts Exhibit 1007 is
`authentic under Federal Rule of Evidence 901(a) because the record
`evidence unambiguously shows that Exhibit 1007 is a copy of the Tsutsui
`reference. Id. at 2. Second, Petitioner asserts that Exhibits 1036 and 1038
`are self-authenticating as ancient documents under Federal Rule of Evidence
`901(b)(8) because each is “in a condition that creates no suspicion about its
`authenticity,” “was in a place where, if authentic, it would likely be,” and “is
`at least 20 years old when offered.” Id. at 2–3. Because Exhibits 1036 and
`1038 are self-authenticating, and Exhibits 1007, 1036, and 1038 are
`identical, then Exhibit 1007 is also self-authenticating according to
`Petitioner. Id. Third, Petitioner argues that Exhibits 1007, 1036, and 1038
`are Association for Computing Machinery (ACM) publications that each
`include “an ACM trade inscription, copyright symbol, and [International
`Standard Book Number (ISBN)],” and therefore, these documents self-
`authenticate under Federal Rules of Evidence 902(6) and 902(7). Id. at 3–4.
`Finally, Petitioner asserts that Exhibits 1007, 1036, and 1038 are also
`authenticated under Federal Rule of Evidence 901(b)(4) based on the totality
`of the circumstances and because Patent Owner does not identify anything to
`suggest the exhibits are not authentic. Id. at 4.
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`We agree with Petitioner that Exhibits 1007, 1036, and 1038 are
`self-authenticating under Federal Rules of Evidence 902(6) and 902(7), and
`that Exhibits 1036 and 1038 are ancient documents under Federal Rule of
`Evidence 901(b)(8) for the reasons stated by Petitioner. Exhibits 1007,
`1036, and 1038 include an ACM trade inscription, copyright symbol, and
`ISBN number. Exhibits 1036 and 1038 are authentic as ancient documents,
`as they meet the requirements of Federal Rule of Evidence 901(b)(8).
`Accordingly, we deny Patent Owner’s Motion to Exclude Exhibits
`1007, 1036, and 1038.
`b. Exhibits 1034, 1035, and 1039
`Patent Owner moves to exclude certain portions of Exhibits 1034,
`1035, and 1039 because many portions of the reply declarations allegedly
`“are not based on the personal knowledge of the witness, are impermissible
`hearsay, and/or are impermissible expert opinions from a witness
`unqualified to provide such opinions.” PO Mot. 7–8. We are not persuaded.
`Patent Owner does not identify any particular “statement” in any of the
`exhibits that is being offered “to prove the truth of the matter asserted in the
`statement,” and thus fails to meet its burden to prove inadmissibility as
`hearsay. See Fed. R. Evid. 801(c); 37 C.F.R. § 42.20(c). Petitioner further
`establishes that the declarations were each based on the declarant’s personal
`knowledge and qualifications. Pet. Opp. Mot. 5–7 (citing Ex. 1034 ¶¶ 2, 4,
`9, 16, 30; Ex. 1035 ¶¶ 7–8, 17 (citing Ex. 1039 ¶¶ 2, 5–6)); see Ex. 1034 ¶ 2
`(“I am submitting this declaration based on my own personal knowledge of
`the facts stated here . . . .”). Accordingly, we deny Patent Owner’s Motion
`to Exclude Exhibits 1034, 1035, and 1039.
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`c. Exhibit 1032
`Patent Owner moves to exclude Exhibit 1032 because it is “irrelevant
`to this case” and because Petitioner “failed to properly authenticate” Exhibit
`1032. PO Mot. 8–9. Patent Owner also asserts that, to the extent Petitioner
`attempts to meet its burden of proof using Exhibit 1032, Petitioner’s use of
`the document is impermissible hearsay. Id. at 9. Petitioner argues that
`Exhibit 1032 is the specific copy of the Tsutsui reference that Dr. Hauck
`relied on for purposes of his declaration, and was not initially filed with the
`Petition (but was filed with the Reply). Pet. Opp. Mot. 7–8. Petitioner also
`asserts that “extensive testimony entered into the record by Dr. Trimberger”
`authenticates Exhibit 1032. Id. at 8.
`We agree with Petitioner that Patent Owner has not set forth sufficient
`argument and evidence to exclude Exhibit 1032 as irrelevant. We are also
`persuaded that Dr. Trimberger’s testimony authenticates Exhibit 1032. See,
`e.g., Ex. 1034 ¶¶ 7 (“I understand that the version of the Tsut[su]i paper
`which I refer to as Exhibit 1007 (included here as EX1032 and referred to as
`Tsutsui-1032) was not included with my original declaration, and a different
`version of the same paper was included in its place.”), 5 (“Tsutsui-1007 and
`Tsutsui-1032 are substantively identical.”). Accordingly, Patent Owner’s
`Motion to Exclude Exhibit 1032 is denied.11
`
`d. Exhibits 1033, 1036, 1038, 1040, 1041, 1043–1050, 1053–1057
`Patent Owner moves to exclude Exhibits 1040, 1041, 1043, and 1045–
`1049 because none of these exhibits “are cited, discussed, or relied upon by
`
`
`11 To be clear, Petitioner’s asserted grounds of unpatentability are based on
`the version of Tsutsui filed as Exhibit 1007, not Exhibit 1032. See Dec. 7–8,
`29; Pet. 4; Pet. Opp. Mot. 8.
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`any expert witness or fact witness in this case.” PO Mot. 9. Patent Owner
`also moves to exclude Exhibits 1033, 1036, 1038, 1044, 1050, and 1053–
`1057 because they are “not cited in any of Petitioner’s papers.” Id. at 12.
`We see no basis to exclude the exhibits for that reason and dismiss Patent
`Owner’s request, but again note that in evaluating Petitioner’s asserted
`grounds of unpatentability, we only consider substantive arguments made by
`the parties in their papers during trial (i.e., the Petition, Response, Reply,
`and Sur-Reply). To the extent a document is filed in the record but never
`discussed in a paper, there is no substantive argument pertaining to that
`document that can be considered.
`Patent Owner further moves to exclude Exhibits 1040, 1043, and 1049
`as unauthenticated under Federal Rule of Evidence 901. Id. at 10–11.
`Petitioner argues that “Patent Owner identifies nothing about the documents
`themselves that brings into question their authenticity,” and “Patent Owner
`bears the burden as movant to demonstrate these documents are not
`authentic.” Pet. Opp. Mot. 10. Petitioner further asserts that Exhibits 1040
`and 1049 are IEEE publications that each include “a trade inscription,
`copyright symbol, and ISBN,” and, therefore, these documents
`self-authenticate under Federal Rules of Evidence 902(6) and 902(7). Id. at
`10–11. Petitioner further argues that Exhibits 1040, 1043, and 1049 are
`authenticated under Federal Rule of Evidence 901(b)(4) “based on the
`totality of the circumstances based on their appearance alone, as nothing
`about those exhibits suggests that [they] are not what the[y] purport to be,
`and Patent Owner never identifies anything to suggest otherwise.” Id. at 11.
`Petitioner also argues that Exhibit 1040 is an ancient document because it is
`over twenty years old and meet the requirements of Federal Rule of
`
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`Evidence 901(b)(8). Id. at 11. We agree with Petitioner that Patent Owner
`has not set forth sufficient argument and evidence to exclude Exhibits 1040,
`1043, and 1049 as unauthenticated, and we further agree that Exhibit 1040 is
`self-authenticating and an ancient document for the reasons stated by
`Petitioner.
`Patent Owner further moves to exclude Exhibits 1040, 1041, 1043,
`and 1045–1049 as containing inadmissible hearsay under Federal Rule of
`Evidence 802. PO Mot. 10–11. Patent Owner states that Petitioner in its
`Reply “cites each of these documents to prove the truth of technical matters
`allegedly asserted in such documents, i.e. to support Petitioner’s specific
`factual assertions regarding a technical issue.” Id. at 10. We are not
`persuaded. Patent Owner does not identify any particular “statement” in any
`of the exhibits that is being offered “to prove the truth of the matter asserted
`in the statement,” and thus fails to meet its burden to prove inadmissibility
`as hearsay. See Fed. R. Evid. 801(c); 37 C.F.R. § 42.20(c). Even if Patent
`Owner had done so, Petitioner cites the exhibits to show what a person of
`ordinary skill in the art would have known at the time of the ’524 patent
`about the technical features and developments in the pertinent art. Pet. Opp.
`Mot. 12 (citing Ex. 1040 and 1041). The exhibits are not being offered for
`the truth of any particular matter discussed in the references. Accordingly,
`we deny Patent Owner’s Motion to Exclude Exhibits 1040, 1041, 1043, and
`1045–1049.
`Patent Owner appears to move to exclude uncited portions of
`deposition testimony from Mr. Huppenthal and Dr. Homayoun (Exhibits
`1033 and 1055–1057) because “Petitioner has failed to establish [their]
`relevance to this case.” PO Mot. 13. We see no basis to exclude the exhibits
`
`
`
`16
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`Patent 7,421,524 B2
`
`for that reason and dismiss Patent Owner’s request, but again note that in
`evaluating Petitioner’s asserted grounds of unpatentability, we only consider
`substantive arguments made by the parties in their papers during trial (i.e.,
`the Petition, Response, Reply, and Sur-Reply). To the extent a document is
`filed in the record but never discussed in a paper, there is no substantive
`argument pertaining to that document that can be considered.
`e. Exhibits 1051 and 1052
`Patent Owner moves to exclude certain portions of the transcripts of
`two depositions of Steven A. Guccione, Ph.D., because the questions asked
`were “vague and ambiguous.” PO Mot. 11–12 (citing Ex. 1052, 51:1–7;
`Ex. 1051, 38:14–39:6). Patent Owner’s Motion is dismissed as moot, as we
`do not rely on the disputed portions of the testimony in rendering our
`Decision.
`Additionally, Patent Owner appears to move to exclude uncited
`portions of deposition testimony from Dr. Guccione because “Petitioner has
`failed to establish [their] relevance to this case.” Id. at 13. We see no basis
`to exclude the exhibits for that reason and dismiss Patent Owner’s request,
`but again note that in evaluating Petitioner’s asserted grounds of
`unpatentability, we only consider substantive arguments made by the parties
`in their papers during trial (i.e., the Petition, Response, Reply, and Sur-
`Reply). To the extent a document is filed in the record but never discussed
`in a paper, there is no substantive argument pertaining to that document that
`can be considered. Accordingly, Patent Owner’s Motion with respect to
`uncited portions of Dr. Guccione’s testimony is dismissed.
`
`
`
`17
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`Patent 7,421,524 B2
`
`
`B. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art for a challenged
`patent, we look to “1) the types of problems encountered in the art; 2) the
`prior art solutions to those problems; 3) the rapidity with which innovations
`are made; 4) the sophistication of the technology; and 5) the educational
`level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654,
`666–667 (Fed. Cir. 2000); see also Custom Accessories, Inc. v. Jeffrey-Allan
`Indus., Inc., 807 F.2d 955, 962–963 (Fed. Cir. 1986). “Not all such factors
`may be present in every case, and one or more of them may predominate.”
`Ruiz, 234 F.3d at 666–667; see also Custom Accessories, 807 F.2d at 963.
`Petitioner asserts that a person of ordinary skill in the art, at the time
`of the ’524 patent, would have had “a Bachelor’s degree in Electrical
`Engineering, Computer Engineering, Computer Science, or in a related field,
`and four years of experience with the design or use of field programmable
`gate array based systems or network adapters.” Pet. 5 (citing Ex. 1003 ¶ 41).
`Petitioner alternatively argues that a person of ordinary skill in the art
`“would have had an advanced degree in one of those fields and two years of
`related experience.” Id. Moreover, such a person, according to Petitioner,
`would have been knowledgeable about computer architectures and how
`FPGAs could be included in them. Id. at 5. Such a person also would have
`been knowledgeable about software algorithms that could be implemented
`on FPGAs and how to configure FPGAs to carry out such implementation.
`Id. (citing Ex. 1003 ¶ 41).
`Patent Owner disputes Petitioner’s assessment of the level of ordinary
`skill in the art, but does not provide a proposed level of ordinary skill in the
`
`
`
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`IPR2018-01604
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`
`art that we should apply in this proceeding.12 PO Resp. 30–33. Patent
`Owner contends Petitioner’s assessment is incorrect because a person of
`ordinary skill in the art would not have had the detailed FPGA knowledge
`assumed by Petitioner’s definition. Id. Patent Owner further contends the
`technical problem the ’524 patent sought to address is in the field of
`High-Performance Computing (“HPC”). Id. at 3. Concatenating the
`experience Petitioner argues an artisan would have had with Patent Owner’s
`assessment of the technical field, Patent Owner argues the result would have
`been a “mythical person” knowledgeable about both FPGAs and HPC. Id. at
`30–33. According to Patent Owner, it would have been rare to find a person
`knowledgeable in both disciplines, and that any such person would have had
`more education and experience than that proposed by Petitioner. Id.
`Patent Owner’s assertions are unavailing. Patent Owner relies on the
`Declaration of Dr. Guccione to support its assertion that there were few
`engineers at the time of the ’524 patent who knew how to program FPGAs
`to run software algorithms. PO Resp. 31–32 (citing Ex. 2146 ¶¶ 87, 193–
`198). Dr. Guccione testifies, for example, that implementing algorithms in
`FPGAs (i.e., hardware) is more complex than implementing algorithms in
`software, and therefore requires a different skillset. Ex. 2146 ¶ 87. Dr.
`Guccione’s testimony, however, is at odds with what is reflected in the prior
`art of the period. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995);
`In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner points out,
`“numerous prior art references disclose computer architectures with multiple
`
`
`12 Patent Owner’s declarant, Dr. Homayoun, agrees with “the level of
`education and skill” that a person of ordinary skill in the art would have
`according to Petitioner. Ex. 2102 ¶ 123.
`19
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`IPR2018-01604
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`
`processing elements and FPGAs used for network interface,” including the
`main references on which Petitioner relies, Tsutsui and Tsutsui II. Reply 4
`(citing Exs. 1007, 1009, 1040, 1041). The art of record therefore indicates
`that Petitioner’s assessment of the education and experience required in the
`field of programming FPGAs is accurate.
`Also, we find insufficient evidence that the level of ordinary skill in
`the art would have required specialized knowledge in the field of High
`Performance Computing. Patent Owner cites to portions of the ’524 patent
`that describe enhancing overall processing speed in a multiprocessor
`computer architecture incorporating a number of memory algorithm
`processors, but has not shown why these systems are HPC architectures,
`much less limited to being HPC architectures. PO Resp. 4–5. The ’524
`patent does not limit the invention to HPC, but rather more broadly states
`The present invention relates, in general, to the field of
`computer architectures incorporating multiple processing
`elements. More particularly, the present invention relates to a
`switch/network adapter port (“SNAP”) for clustered computers
`employing a chain of multi-adaptive processors (“MAP[]”) . . .
`in a dual in-line memory module (“DIMM”) format to
`significantly enha
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