UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTELLECTUAL VENTURES MANAGEMENT, LLC
`Petitioner
`
`V.
`
`XILINX, INC.
`Patent Owner
`
`Case 1PR2012-00023
`Patent 7,994,609
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`FIRST MOTION TO AMEND
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTELLECTUAL VENTURES MANAGEMENT, LLC
`Petitioner
`
`V.
`
`XILINX, INC.
`Patent Owner
`
`Case 1PR2012-00023
`Patent 7,994,609
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`FIRST MOTION TO AMEND
`
`
`
`Table of Contents
`
`I. Statement of Relief Requested (cid:9)
`
`. 1
`
`II. Xilinx’s First Motion to Amend is Procedurally Deficient ...............................1
`
`III. (cid:9)
`
`Substitute Claims 20-34 Are Unpatentable.....................................................3
`
`A. (cid:9)
`
`C. (cid:9)
`
`1.
`
`2.
`
`3.
`
`Proposed Claims 20 and 22-29 are unpatentable.........................................3
`
`Proposed Claims 30-34 are Unpatentable....................................................6
`
`Proposed Claim 30 is Obvious over Paul in view of Anthony . ................ 7
`
`Proposed claim 30 is obvious over Anthony in view of Bi . ..................... 8
`
`Proposed claims 31-34 are obvious...........................................................9
`
`IV. (cid:9) Conclusion.....................................................................................................11
`
`
`
`Table of Authorities
`
`Cases
`
`Idle Free Systems, Inc. v. Bergstrom, Inc., Case 1PR2012-00027 ................ 1, 2, 3, 6
`Nichia Corp. v. Emcore Corp., Case 1PR2012-00005 .............................................. 2
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`
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`IPR20 12-00023
`Patent 7,994,609
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`I.
`
`Statement of Relief Requested
`
`Petitioner opposes Patent Owner’s Motion to Amend for the reasons set
`
`forth in its Petition (Paper No. 3), in its Reply to Patent Owner Response, and
`
`below.
`
`II.
`
`Xilinx’s First Motion to Amend is Procedurally Deficient
`
`Xilinx’s First Motion to Amend is procedurally deficient for at least three
`
`reasons. First, Xilinx fails to show "patentable distinction over the prior art of
`
`record and also prior art known to the patent owner." Idle Free Systems, Inc. v.
`
`Bergstrom, Inc., Case 1PR2012-00027, Paper 26 (June 11, 2013), p. 7 (emphasis
`
`added). On page 15 of its motion, Xilinx argues that proposed substitute claims 20
`
`and 21 are patentable over the cited prior art for reasons explained in the Xilinx’s
`
`Patent Owner’s Response. But, neither in its Patent Owner’s Response nor in the
`
`Motion to Amend does Xilinx even assert, much less make an adequate showing,
`
`that proposed substitute claims 20 and 21 are patentable over all prior art known to
`
`Xilinx.
`
`As for proposed substitute claim 30, Xilinx asserts that it is "patentably
`
`distinct from the prior art because fourth conductive layer is part of the shield
`
`capacitor portion, which is connected to and part of the second node of the
`
`capacitor and the second plurality of conductive elements." (First Motion to
`
`Amend, Paper No. 17, p. 15.) Xilinx does not specify what "prior art" it is referring
`
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`IPR20 12-00023
`Patent 7,994,609
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`to or whether the "prior art" it references includes both the prior art of record and
`
`the prior art known to Xilinx. Further, Xilinx does not even assert that the feature it
`
`relies on(cid:151)the "fourth conductive layer is part of the shield capacitor portion,
`
`which is connected to and part of the second node of the capacitor and the second
`
`plurality of conductive elements"(cid:151)is not disclosed in the prior art. Even if
`
`Xilinx’s statement is interpreted as asserting that this feature is not disclosed in the
`
`prior art of record and known to Xilinx, it is merely a conclusory allegation with
`
`no support on the record. Such conclusory statements are insufficient to meet
`
`required burden for a motion to amend.
`
`Idle Free Systems, Inc. v. Bergstrom, Inc.,
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`Case 1PR2012-00027, Paper 26 (June 11, 2013), p. 7.
`
`Second, Xilinx’s motion fails to set forth support for each proposed
`
`substitute claim. See 37 C.F.R. § 42.121(b)(1). On pages 12 and 13 of its Motion,
`
`Xilinx asserts that isolated elements of proposed substitute claims 20-34 are
`
`supported in the original disclosure. This is insufficient. A Patent Owner is
`
`required to show where the claim as a whole is supported in the original disclosure.
`
`See Nichia Corp. v. Emcore Corp., Case 1PR2012-00005, Paper 27 (June 3, 2013),
`
`p. 4. Xilinx did not make the required showing to support its proposed amendment.
`
`Third, several of the claims fail to narrow the scope of the claims that they
`
`replace. For example, claim 20 was presented as a replacement for claims 1 and 8.
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`Specifically, Xilinx alleges that "[t]he limitations presented in proposed claim 20
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`
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`IPR20 12-00023
`Patent 7,994,609
`are the same as those listed in issued claims 1 and 8..." (Paper No. 17, P. 12.)
`
`Xilinx is incorrect. Issued claim 8 depends from claim 7. Newly presented claim
`
`20 fails to incorporate the subject matter of claim 7 and is therefore broader than
`
`claim 8. Claim 20 therefore cannot be a substitute claim for claim 8. Idle Free
`
`Systems, Inc. v. Bergstrom, Inc., Case 1PR2012-00027, Paper 26 (June 11, 2013) 9
`
`p. 5 ("A proper substitute claim under 37 C.F.R. § 42.121 (a)(i) must only narrow
`
`the scope of the challenged claim it replaces."). Proposed substitute claim 21 does
`
`not narrow the scope of original claim 2, and thus fails the requirement of 37
`
`C.F.R. § 42.12 1 (a)(2)(ii). Xilinx admits that "[t]he scope of proposed claim 21 is
`
`exactly the same as that of original claim 2, the only difference being that claim 21
`
`is written in independent form." (Paper No. 17, p. 11.) Because proposed
`
`substitute claim 21 has the same scope as the challenged claim it replaces, i.e.
`
`original claim 2, it is not a proper substitute claim. Similarly, claims 26 and 27 are
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`identical in scope to original claims 8 and 9, respectively, and therefore are not
`
`proper substitute claims.
`
`III. Substitute Claims 20-34 Are Unpatentable
`
`A. Proposed Claims 20 and 22-29 are unpatentable
`
`According to Xilinx, proposed claim 20 is "identical to original independent
`
`claim 1, except that it now includes the claim limitation recited in original claim 8
`
`(which depends on claim 1)." (Paper No. 17, p. 11.) Unlike original claim 8,
`
`3
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`Patent 7,994,609
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`however, proposed substitute claim 20 does not include the limitations of claim 7.
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`Nevertheless, proposed claim 20 is obvious under 35 U.S.C. § 103(a) over U.S.
`
`Patent No. 6,737,698 to Paul et al., IVM 1006 ("Paul") in view of U.S. Patent No.
`
`6,903,918 to Brennan, IVM 1009 ("Brennan"). In particular, FIG. G of the First
`
`Johnson Declaration shows the capacitor of Paul modified according to Brennan.
`
`As explained in the Petition, this modified capacitor teaches all of the elements of
`
`recited in claim 8. (Paper No. 3, pp. 41-44.) The removal of the limitations of
`
`claim 7 from claim 20 does not change the applicability of Paul and Brennan.
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`Further, as explained in the concurrently filed Reply to Patent Owner Response,
`
`Xilinx’s arguments regarding Paul and Brennan do not overcome the obviousness
`
`ground presented in the Petition. (See Reply to Patent Owner’s Response, pp. 6-
`
`11.) Thus, claim 20 is unpatentable over the cited prior art.
`
`slueld capacitor
`taon \
`
`of
`I (cid:9) phsrclit (cid:9)
`concincth e elements
`
`phiralit. (cid:9) of
`conducthe elements
`
`\
`
`
`reference
`shield
`
`-\
`
`-\
`
`I (cid:9)
`
`3A layer (cid:9)
`
`1-t Iayer
`
`2 (cid:9)
`
`........
`
`A (cid:9)
`
`J
`
`5ffi
`
`41 layer
`
`- -
`
`-
`
`- (cid:9)
`
`-
`
`LL
`
`i
`
`core capacitor
`1:Polton
`
`A
`
`r~ (cid:9)
`
`conductive elements
`
`41iplurality of (cid:9)
`conductive elements (cid:9)
`
`ihp1jntiity of
`
`conductive elements
`
`FIG. G of the Johnson Declaration
`
`
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`Patent 7,994,609
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`Proposed substitute claims 22-29 "are identical to original claims 3-7, 9-10,
`
`and 12, respectively, the only difference being that proposed claims 22-29 depend
`
`on proposed claim 20, while original claims 3-7, 9-10, and 12 depend on original
`
`claim 1...." (Paper No. 17, pp. 11-12.) As explained in the Petition and not
`
`challenged by Xilinx in its Patent Owner Response, claims 3-7, 9-10, and 12 are
`
`obvious over the cited art. Specifically, claims 3, 5, 6, 10, and 12 are obvious under
`
`35 U.S.C. § 103(a) over Paul in view of Anthony, claim 4 is obvious under 35
`
`U.S.C. § 103(a) over Paul in view of U.S. Patent No. 7,286,071 to Hseuh, IVM
`
`1008 ("Hseuh"), and claim 9 is obvious under 35 U.S.C. § 103(a) over Paul in
`
`view of Brennan. IVM notes that Xilinx did not separately argue for the
`
`patentability of any of proposed substitute claims 22-29. Thus, new claims 22, 24,
`
`25, 28, and 29 (corresponding to claims 3, 5, 6, 10, and 12) are unpatentable under
`
`35 U.S.C. § 103(a) over Paul in view of Brennan in further view of Anthony; new
`
`claim 24 is unpatentable under 35 U.S.C. § 103(a) over Paul in view of Brennan in
`
`further view of Hseuh; and claims 26 and 27 are unpatentable under 35 U.S.C. §
`
`103(a) over Paul in view of Brennan. One of ordinary skill in the art would have
`
`been able to make each of the above combinations. (IVM1O13, ¶ 25.) IVM notes
`
`that Xilinx did not separately argue for the patentability of these newly presented
`
`substitute claims. Thus, the patentability of these claims will depend on the
`
`5
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`Patent 7,994,609
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`patentability of proposed substitute independent claim 20.
`
`Idle Free Systems, Inc.
`
`v. Bergstrom, Inc., Case 1PR2012-00027, Paper 26 (June 11, 2013), p. 9.
`
`B.
`
`Proposed Claim 21 is Unpatentable.
`
`According to Xilinx, proposed claim 21 is "identical to original claims 1 and
`
`2." (Paper No. 17, p. 11.) As explained in the concurrently filed Reply to Patent
`
`Owner Response and in the Petition, claim 2 is obvious under 35 U.S.C. § 103(a)
`
`over Paul in view of U.S. Patent No. 7,439,570 to Anthony, IVM 1007
`
`("Anthony")
`
`C.
`
`Proposed Claims 30-34 are Unpatentable
`
`According to Xilinx, proposed claim 30 is "identical to original independent
`
`claim 13, except that the claimed ’fourth conductive layer’ is recited as being a
`
`’poly’ layer." (Paper No. 17, p. 12.) As explained in the Petition and not disputed
`
`by Xilinx in its Patent Owner Response, claim 13 is obvious under 35 U.S.C. §
`
`103(a) over Paul and Anthony and also obvious over Anthony in view of U.S.
`
`Patent Application Publication No. 2008/0128857 to Bi, IVM 1010 ("Bi"). As set
`
`forth below, proposed substitute claim 30 remains obvious over Paul in view of
`
`Anthony and Anthony in view of Bi.
`
`on
`
`
`
`1. (cid:9)
`
`Proposed Claim 30 is Obvious over Paul in view of
`Anthony.
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`Patent 7,994,609
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`As Mr. Johnson explained in his First Declaration, Paul can be modified
`
`according to Anthony to form the capacitor shown in FIG. D.2 of the First Johnson
`
`Declaration, which is shown below with annotations, to teach all of the elements of
`
`original claim 13. Again, Xilinx does not dispute this point in its Patent Owner
`
`Response.
`
`39
`
`39
`
`37
`
`FIG. 3B
`
`Figure D.2
`
`As explained in Anthony, bottom shield plate 36 can be formed out of a poly layer.
`
`(IVM 1007, 4:49-52.) In view of this disclosure, it would have been obvious to
`
`similarly form the "fourth layer" in a "poly" layer. (IVM1O13, ¶ 29.) Indeed, as
`
`Mr. Johnson explained in his First Declaration, a person of ordinary skill in the art
`
`7
`
`
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`IPR20 12-00023
`Patent 7,994,609
`
`would have known about "double poly" processes that can be used to form two
`
`layers of a capacitor out of poly. (IVM1002, ¶ 88.) This process could also be used
`
`to form both the layer including bottom shield plate 36 and the "fourth layer" out
`
`of poly, thus satisfying the additional limitation of proposed claim 30. (IVM1013,
`
`¶ 29.) Forming the "fourth layer" out of poly would lead to predictable changes in
`
`the capacitor. (IVM 1013, ¶ 29.) One of ordinary skill in the art would be motivated
`
`to make this modification to, for example, save a conductive layer for another
`
`purpose. (IVM1013, ¶ 29.)
`
`2. (cid:9)
`
`Proposed claim 30 is obvious over Anthony in view of Bi.
`
`As explained in the Petition, plate 24 of the capacitor shown in FIG. 2B of
`
`Anthony discloses a "fourth layer," as recited in original claim 13. (Paper No. 3, p.
`
`57.) FIG. 2B as annotated in the Petition is reproduced below.
`
`
`3rd layer
`
`w
`
`shield capacitor
`portion
`
`2 I00
`
`core capacitor
`portion
`
`of elements
`
`(annotated)
`
`n.
`
`(cid:9)
`
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`IPR20 12-00023
`Patent 7,994,609
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`As noted above, Anthony also discloses that bottom shield plate 36 (shown in FIG.
`
`3B of Anthony) can be formed in a poly or a metal layer. IVM 1007, 4:49-52. In
`
`view of this disclosure, one of ordinary skill in the art would be able to form the
`
`"fourth layer" of FIG. 2B of Anthony out of a poly layer. (IVM1O13, ¶ 30.) As
`
`explained by Mr. Johnson, design tools were available to one of ordinary skill in
`
`the art in 2008 that would enable a designer to design the "fourth layer" out of poly
`
`instead of metal. (IVM1O13, ¶ 30.) Indeed, even Xilinx’s expert Dr. Blanchard
`
`concedes that these design tools would have enabled one of ordinary skill in the art
`
`in 2008 to form the bottom shield plate in FIG. 3B of Anthony and FIG. 8 of Paul
`
`in a poly layer. (IVM1O14, 55:9-14; 56:24-57:7.) Further, one of ordinary skill in
`
`the art would have been motivated to make form the "fourth layer" of FIG. 2B of
`
`Anthony out of poly to save a metal layer. (IVM1O13, ¶ 30.)
`
`3. (cid:9)
`
`Proposed claims 31-34 are obvious.
`
`According to Xilinx, proposed substitute claims 31-34 "are identical to
`
`original claims 14-17, respectively, the only difference being that the proposed
`
`claims depend on proposed claim 30, while claims 14-17 depend on original claim
`
`13...." (Paper No. 17, p. 12.) As noted above, proposed claim 30 is obvious over
`
`Paul and Anthony and over Anthony and Bi. Further, as explained in the Petition
`
`(Paper No. 3) and not challenged by Xilinx in its Patent Owner Response, claims
`
`14-17 are obvious over the cited art. Specifically, claims 14-17 are obvious under
`
`
`
`35 U.S.C. § 103(a) over Paul in view of Anthony. IVM notes that Xilinx did not
`
`separately argue for the patentability of any of proposed substitute claims 31-34.
`
`At least for these reasons, proposed claim 31-34 are unpatentable.
`
`IPR20 12-00023
`Patent 7,994,609
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`10
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`
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`IPR20 12-00023
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`IV. Conclusion
`
`For the reasons set forth above, Patent Owner’s Motions to Amend should
`
`be dismissed.
`
`Respectfully submitted,
`
`Date: August 23, 2013 By:
`Lori A Gordon, Lead Counsel (Reg. No. 50,663)
`Robert Greene Sterne, Backup Counsel (Reg. No. 28,912)
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`1100 New York Avenue, NW
`Washington, D.C. 20005
`(202) 371-2600
`
`Attorneys for Petitioner
`Intellectual Ventures Management, LLC
`
`11
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`
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`IPR20 12-00023
`Patent 7,994,609
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 23th day of August 2013, a true and correct copy
`
`of the foregoing PETITIONER’S OPPOSITION TO PATENT OWNER’S FIRST
`
`MOTION TO AMEND was served upon the following counsel for Patent Owner,
`
`Xilinx Inc.:
`
`David M. O’Dell, Lead Counsel
`ATTN: IP DOCKETING
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, TX 75219
`
`david.odell@haynesboone.com
`
`Thomas B. King
`HAYNES AND BOONE, LLP
`18100 Von Karman, Suite 750
`Irvine, CA 92612
`
`thomas.king@haynesboone.com
`
`i A. Gordon, Lead Counsel (Reg. No. 50,663)
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`1100 New York Avenue, NW
`Washington, D.C. 20005
`(202) 371-2600
`
`Attorney for Petitioner
`Intellectual Ventures Management LLC
`
`
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