Trials@uspto.gov
`571-272-7822
`
`Paper 27
`Date: June 3, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTEL CORPORATION,
`Petitioner,
`v.
`FG SRC LLC,
`Patent Owner.
`
`Case No. IPR2020-01449
`Patent 7,149,867
`
`
`
`
`
`
`
`
`
`Before KALYAN K. DESHPANDE, GREGG I. ANDERSON, and
`KARA L. SZPONDOWSKI, Administrative Patent Judges.
`SZPONDOWSKI, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 27
`Date: June 3, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTEL CORPORATION,
`Petitioner,
`v.
`FG SRC LLC,
`Patent Owner.
`
`Case No. IPR2020-01449
`Patent 7,149,867
`
`
`
`
`
`
`
`
`
`Before KALYAN K. DESHPANDE, GREGG I. ANDERSON, and
`KARA L. SZPONDOWSKI, Administrative Patent Judges.
`SZPONDOWSKI, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01449
`Patent 7,149,867
`
`
`INTRODUCTION
`I.
`We authorized Petitioner Intel Corporation (“Petitioner”) to file a
`Motion to Submit Supplemental Information (Paper 21, “Motion”) and
`Patent Owner FG SRC LLC (“Patent Owner”) to file an Opposition
`(Paper 22, “Opp.”). Paper 18. Petitioner seeks authorization to submit
`Exhibits 1027–1031. Motion 1. Upon consideration of the documents and
`the Parties’ arguments, and for the reasons stated below, the Motion is
`granted.
`
`II. ANALYSIS
`Under 37 C.F.R. § 42.123(a), a party may file a motion to submit
`supplemental information if the following requirements are met: (1) a
`request for authorization to file such motion is made within one month of the
`date the trial was instituted; and (2) the supplemental information must be
`relevant to a claim for which trial has been instituted.
`With respect to the first requirement of § 42.123(a), trial was
`instituted in this proceeding on March 3, 2021. Paper 13. Petitioner
`requested authorization to file a motion to submit supplemental information
`on April 2, 2021. Ex. 3003. Thus, Petitioner’s request was made within one
`month of the date the trial was instituted. See Motion 2. Patent Owner does
`not dispute the timeliness of the request for authorization. See generally
`Opp.
`
`With respect to the second requirement of § 42.123(a), the
`supplemental information Petitioner seeks to admit generally relates to the
`
`2
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`IPR2020-01449
`Patent 7,149,867
`
`public accessibility of Zhang, 1 Gupta, 2 and Chien, 3 which are the three prior
`art references that Petitioner relies on in this proceeding. Motion 1.
`Specifically, Petitioner seeks to submit:
`(1) Exhibit 1027 – Declaration of Gordon MacPherson, Director
`Board Governance & IP Operations of The Institute of Electrical and
`Electronics Engineers, Incorporated (“IEEE”), and supporting
`documentation;
`(2) Exhibit 1028 – Declaration of Eileen D. McCarrier, Manager of
`Research Services at Pillsbury Winthrop Shaw Pittman LLP, and supporting
`documentation;
`(3) Exhibit 1029 – Declaration of Austin M. Schnell, an associate at
`Pillsbury Winthrop Shaw Pittman LLP, and supporting documentation;
`(4) Exhibit 1030 – Supplemental Declaration of Rajesh K. Gupta,
`Ph.D, co-author of the Gupta reference, and supporting documentation; and
`(5) Exhibit 1031 – Supplemental Declaration of Jacob Robert
`Munford, a library professional, and supporting documentation.
`Id.
`
`
`1 Xingbin Zhang et al., Architectural Adaptation for Application-Specific
`Locality Optimizations, published in the Proceedings of the International
`Conference on Computer Design - VLSI in Computers and Processors
`(IEEE, October 12–15, 1997), 150–156.
`2 Rajesh Gupta, Architectural Adaptation in AMRM Machines, Proceedings
`of the IEEE Computer Society Workshop on VLSI 2000 (IEEE, April 27–
`28, 2000), 75–79.
`3 Andrew A. Chien et al., MORPH: A System Architecture for Robust High
`Performance Using Customization (An NSF 100 TeraOps Point Design
`Study), Proceedings of Frontiers ’96 – The Sixth Symposium on the
`Frontiers of Massively Parallel Computing (IEEE, October 27–31, 1996),
`336–345.
`
`3
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`IPR2020-01449
`Patent 7,149,867
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`
`Petitioner asserts that the “proposed exhibits supplement, corroborate,
`and confirm the evidence that Petitioner submitted with its petition
`demonstrating that each reference was a conference paper published by The
`Institute of Electrical and Electronics Engineers, Incorporated (‘IEEE’) and
`distributed to conference attendees, cataloged and made available in public
`libraries, and made publicly accessible on IEEE’s XPlore website, all before
`the alleged priority date.” Id. Petitioner further asserts that “the
`supplemental information is relevant to a claim for which trial has been
`instituted because it relates to the prior art status of Zhang, Gupta, and
`Chien, and each of those references is part of an instituted ground
`challenging multiple claims of the ’867 patent.” Id. at 2.
`Patent Owner opposes for a number of reasons. First, Patent Owner
`disputes the relevance of the supplemental information. See Opp. 1, 2, 4, 8,
`10–14. Specifically, Patent Owner contends that “the information [] does
`nothing more than demonstrate circumstances after the applicable date,” and,
`therefore, is not relevant. Id. at 1–2. For example, Patent Owner argues that
`Mr. MacPherson’s testimony “does not testify from personal knowledge that
`the references were actually distributed as alleged by Petitioner” and “offers
`no indication of the extent the references were available in 2003, such as
`how they were indexed for searching.” Id. at 3, 11. Similarly, with respect
`to Ms. McCarrier’s testimony, Patent Owner argues that “there is no
`indication of when either library first received the reference or made it
`available, which is the key inquiry.” Id. at 4; see also id. at 14. Patent
`Owner also argues, with respect to Mr. Schnell’s testimony, that the copy of
`the Gupta reference submitted by Mr. Schnell has an “earliest date stamp” of
`June 3, 2004, “a year after the June 18, 2003 priority date.” Id. at 5; see also
`
`4
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`IPR2020-01449
`Patent 7,149,867
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`Id. at 14. With respect to Dr. Gupta’s testimony, Patent Owner argues that
`there is “[no] indication of personal knowledge about [the references’]
`availability in 2003.” Id. at 12. With respect to Mr. Munford’s testimony,
`Patent Owner argues that he “still cannot confirm when the references were
`shelved, indexed, and available for distribution at the various libraries he
`cites.” Id. at 8; see also id. at 13 (“all that he has demonstrated is the
`availability of the Zhang, Gupta, and Chien references in 2021”).
`We do not find these arguments persuasive. Zhang, Gupta, and Chien
`are the references relied upon in the instituted challenges to the ’867 patent.
`Paper 13, 11. In the Institution Decision, we determined preliminarily that
`Petitioner had made a threshold showing that the references constituted prior
`art printed publications. Id. at 34–44. Under Rule 401 of the Federal Rules
`of Evidence, which govern this proceeding, evidence is relevant if “(a) it has
`any tendency to make a fact more or less probable than it would be without
`the evidence; and (b) the fact is of consequence in determining the action.”
`The public accessibility of these references is a potentially dispositive issue
`in the proceeding, and the supplemental information that Petitioner moves to
`submit is probative of that issue. Patent Owner’s arguments address the
`sufficiency or weight of the testimony and evidence, not the relevancy. We,
`therefore, are not persuaded by Patent Owner’s arguments that the proposed
`supplemental information is not relevant to the proceeding.
`Second, Patent Owner contends that “Petitioner does not even try to
`prove the evidence was unavailable, and even a cursory review demonstrates
`it is comprised of opinions and evidence that was indisputably available to a
`diligent Petitioner.” Opp. 1. For example, Petitioner argues that
`Mr. MacPherson’s testimony could have been “timely submitted” but
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`IPR2020-01449
`Patent 7,149,867
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`“simply was not.” Id. at 3, 11. Patent Owner makes similar arguments as to
`Ms. McCarrier and Mr. Schnell’s testimony, particularly since they are both
`employees of Petitioner’s counsel. Id. at 4–5, 14. Likewise, Patent Owner
`argues that Dr. Gupta “provides no explanation as to why [his copy of the
`reference from his personal files] could not have been submitted with the
`petition.” Id. at 12. With respect to Mr. Munford’s testimony, Patent Owner
`argues that the additional copies of the references submitted “could have
`been retrieved . . . months ago before the petition was filed.” Id. at 8; see
`also id. at 13.
`We do not find these arguments persuasive. A showing that
`supplemental information could not have been included earlier is not
`required for Motions submitted under 37 C.F.R. § 42.123(a); cf. 37 C.F.R.
`§ 42.123(b) (requiring a showing that supplemental information reasonably
`could not have been obtained earlier when a party “seek[s] to submit
`supplemental information more than one month after the date the trial is
`instituted” (emphasis added)). As the Federal Circuit has held, once trial is
`instituted, Petitioner is permitted to supplement the record. See Genzyme
`Therapeutic Prods. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360,
`1367 (Fed. Cir. 2016 ) (“The purpose of the trial in an inter partes review
`proceeding is to give the parties an opportunity to build a record by
`introducing evidence—not simply to weigh evidence of which the Board is
`already aware.”).
`Third, Patent Owner contends that the supplemental information
`“alters positions” and would change the evidence. Opp. 2, 6–9. For
`example, with respect to Dr. Gupta’s testimony, Patent Owner argues that in
`his original declaration, Dr. Gupta testified as to his “beliefs,” whereas in his
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`IPR2020-01449
`Patent 7,149,867
`
`supplemental declaration, Dr. Gupta testifies as to his “personal knowledge.”
`Id. at 5–6, 11–12. Patent Owner also argues that Dr. Gupta’s testimony is
`“at least double what was submitted with the petition.” Id. at 11. Patent
`Owner also asserts that the volume of testimony and appendices relating to
`Mr. Munford is “many time larger” than his original declaration. Id. at 7;
`see also id. at 13. Patent Owner asserts that “the sheer volume of the
`increase . . . is ‘immediately suspect.’” Id. at 13.
`We are not persuaded by these arguments. The supplemental
`information Petitioner seeks to submit does not change the grounds of
`unpatentability, nor does it change Petitioner’s assertions as to the public
`accessibility of the references. As discussed in the Institution Decision,
`Petitioner relies on four theories of public accessibility: (1) publication by
`IEEE; (2) distribution to conference attendees prior to or during the
`conference; (3) availability on the IEEE Xplore website; and (4) cataloging
`at various university libraries. Paper 13, 34–35. The supplemental
`information constitutes additional evidence that purportedly confirms the
`public accessibility of the asserted prior art references under these various
`theories. No new issues are added. Rather, Petitioner reasonably seeks to
`supplement the record with probative information related to its various
`theories of public accessibility of the three references, in light of Patent
`Owner’s continued challenge to the public accessibility of the references.
`See Motion 2–7; Paper 9 at 26–35; Paper 16 (Patent Owner’s Objections to
`Petitioner Exhibits 1003, 1004, and 1005).
`We also do not find Patent Owner’s arguments as to the volume of the
`Gupta and Munford supplemental declarations to be persuasive. See
`Motion 9–10. For example, Dr. Gupta’s supplemental declaration
`
`7
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`IPR2020-01449
`Patent 7,149,867
`
`constitutes only six pages, some of which repeats testimony from the
`original declaration. Ex. 1030. Mr. Munford’s supplemental declaration
`likewise includes testimony and appendices that were included in his
`original declaration. Ex. 1031. Moreover, much of the added volume
`merely constitutes additional copies of the Zhang, Gupta, and Chien
`references, which are provided for corroboration. Ex. 1030, 1031.
`Fourth, relying on Redline Detection, LLC, v. Star Environtech, Inc.,
`811 F.3d 435, 443-445 (Fed. Cir. 2015) and Yamaha Golf Car Co. v. Club
`Car, LLC, IPR2017-02141, 2018 WL 6428205 at *3 (PTAB Dec. 4, 2018),
`Patent Owner argues that “Petitioner is attempting to bloat the record with
`voluminous new filings and exhibits that undeniably could have been
`produced earlier and/or are irrelevant, and is doing so only after having
`studied the Board’s and Patent Owner’s positions.” Opp. 10.
`We are not persuaded by these arguments. First, we disagree with
`Patent Owner that Redline or Yamaha Golf are “directly on point here.” See
`Opp. 10. In Redline, Petitioner did not rely on an expert declaration in
`support of its position in the Petition, and sought to introduce an expert
`declaration after institution, which the Board denied. Redline Detection, 811
`F.3d at 443–444. The Federal Circuit determined that under § 42.123(a), the
`Board may consider factors other than timeliness and relevancy in
`determining whether to allow the submission of supplemental information,
`and may grant or deny motions as it sees fit. Id. at 445–447. Similarly, in
`Yamaha Golf,4 Petitioner sought to replace its original 183-page expert
`declaration with a supplemental 256-page declaration, along with nine new
`
`
`4 Yamaha Golf is not precedential, and, therefore, not binding on us.
`
`8
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`IPR2020-01449
`Patent 7,149,867
`
`prior art references and a new claim chart “as further evidence of the prior
`art’s teaching of a motivation to combine and the claimed . . . feature.” 2018
`WL 6428205 at *3. The Board found that this information on the issues of
`the motivation to combine and the claimed feature “amounts to a substantial
`change in the original showing on these issues.” Id. We find the facts here,
`as discussed above, substantially different in the present case. Moreover, as
`set forth above, Rule 42.123(a) explicitly allows submission of supplemental
`information after the Institution Decision, so Patent Owner’s arguments that
`Petitioner improperly “studied the Board’s and Patent Owner’s positions”
`are unavailing.
`Finally, Patent Owner argues that it will be prejudiced by the
`submission of the supplemental information. Opp. 15. In particular, Patent
`Owner argues that that “it is naïve to suggest that the needless multiplication
`of exhibits will not sow confusion and, thus, increase costs throughout the
`life of these proceedings, including appeal” and will, therefore, be “counter-
`productive to the efficient administration of these proceedings.” Id.
`We are not persuaded that there is undue prejudice to Patent Owner by
`allowing the supplemental information as part of the record in this
`proceeding. In particular, based on the record before us, we are not
`persuaded that the submission of the supplemental information will “sow
`confusion,” “increase costs,” or be “counter-productive to the efficient
`administration of these proceedings.” Nor are we persuaded that submission
`of the supplemental information will interfere with the speed and efficiency
`of trial. It is both reasonable and foreseeable that, after Patent Owner argued
`in its Preliminary Response that the references were not publicly accessible
`(Paper 9 at 26–35) and filed objections to the Exhibits (Paper 16), that
`
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`IPR2020-01449
`Patent 7,149,867
`
`Petitioner may respond with additional information to bolster its contentions
`as to public accessibility. We note that Petitioner provided Exhibits 1027–
`1031 to Patent Owner on March 31, 2021, well in advance of its Patent
`Owner Response. See Motion 7. Patent Owner will, therefore, have a full
`and fair opportunity to address and respond to this newly submitted
`evidence.
`For the foregoing reasons, Petitioner has met its burden of proving it
`is entitled to the requested relief. Accordingly, Petitioner’s motion to submit
`supplemental information is granted.
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion to Submit Supplemental
`Information (Paper 21) is granted; and
`FURTHER entered that Exhibits 1027–1031 are entered into the
`record of this proceeding.
`
`
`
`10
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`IPR2020-01449
`Patent 7,149,867
`
`FOR PETITIONER:
`
`Brian Nash
`Brian.nash@pillsburylaw.com
`
`Evan Finkel
`Evan.finkel@pillsburylaw.com
`
`Matthew Hindman
`Matthew.hindman@pillsburylaw.com
`
`
`FOR PATENT OWNER:
`
`Jay Kesan
`jay@jaykesan.com
`
`Ari Rafilson
`arafilson@shorechan.com
`
`
`11
`
`
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