UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., HTC CORPORATION, HTC AMERICA, INC., SAMSUNG
`ELECTRONICS CO. LTD, SAMSUNG ELECTRONICS AMERICA, INC., AND
`AMAZON.COM, INC.,
`Petitioners,
`
`v.
`
`MEMORY INTEGRITY, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00163
`Patent 7,296,121
`____________
`
`
`
`
`
`MOTION TO CORRECT EXHIBIT 1007
`PURSUANT TO 37 C.F.R. § 42.104(c)
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., HTC CORPORATION, HTC AMERICA, INC., SAMSUNG
`ELECTRONICS CO. LTD, SAMSUNG ELECTRONICS AMERICA, INC., AND
`AMAZON.COM, INC.,
`Petitioners,
`
`v.
`
`MEMORY INTEGRITY, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00163
`Patent 7,296,121
`____________
`
`
`
`
`
`MOTION TO CORRECT EXHIBIT 1007
`PURSUANT TO 37 C.F.R. § 42.104(c)
`
`
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`
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`IPR2015-00163
`Patent 7,296,121
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`I.
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`Introduction
`37 C.F.R. § 42.104(c) provides for correction of “a clerical or typographical
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`mistake in [a] petition” without changing the filing date of the petition. The
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`Board routinely grants motions to correct exhibits where, as here, an inadvertent
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`clerical mistake leads to the filing and service of an incomplete or improper
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`exhibit. See, e.g., Arthrex, Inc. v. Bonutti Skeletal Innovations, LLC, IPR2013-
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`00631, Paper 15, pp. 4-6 (P.T.A.B. Mar. 3, 2014); ABB Inc. v. ROY-G-BIV Corp.,
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`Case IPR2013-00063, Paper No. 21; Syntroleum Corp. v. Neste Oil OYJ, IPR2013-
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`00178, Paper 21, (P.T.A.B. Jul. 22, 2013).
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`As will be explained in greater detail below, an inadvertent error was made
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`while preparing and photocopying Exhibit 1007 for filing and service. Courts have
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`characterized “document preparation and copying documents” as “clerical” tasks.
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`See Spegon v. Catholic Bishop of Chicago, 175 F. 3d 544, 553 (7th Cir. 1999).
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`Thus, pursuant to 37 C.F.R. § 42.104(c), Petitioners seek permission to file and
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`serve a corrected copy of Exhibit 1007 (a copy of which is attached as Exhibit D)
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`that includes the previously missing pages cited in the Petition.
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`II. Statement of Facts
`In seeking relief pursuant to 37 C.F.R. § 42.104(c), the Board requires the
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`moving party to set forth a “full statement of the reasons for the relief requested,”
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`including a detailed explanation of the significance of the evidence including
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`1
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`IPR2015-00163
`Patent 7,296,121
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`material facts. 37 C.F.R. § 42.22(a)(2). This includes “what the alleged clerical
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`error was or the circumstances of the error.” FedEx Corp v. IpVenture, Inc.,
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`IPR2014-00833, Paper 10, p. 3 (P.T.A.B. Oct. 24, 2014). Accordingly, the
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`following statement of facts, supported by the Holt Declaration (Ex. A), Faeth
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`Declaration (Ex. B), and Pantano Declaration (Ex. C), provide a full accounting of
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`the circumstances of the clerical mistake.
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`On October 28, 2014, Petitioners filed four petitions for inter partes review
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`of U.S. Patent No. 7,296,121, designated IPR2015-00159, -00161, -00163, and -
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`00172. In each of IPR2015-00161, -00163, and -00172, the Petition sets forth a
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`challenge to claims 9 and/or 10 based, in part, on Ex. 1007 (the Duato reference).
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`In this case (i.e., IPR2015-00163), the Petition includes a description of the
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`proposed ground of unpatentability of claims 9 and 10 based on Koster (Ex. 1009)
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`in view of Duato (Ex. 1007), which included cites to numerous pages of Ex. 1007.
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`See Petition, pp. 38-41. Similarly, the “Declaration of Dr. Robert Horst” (Ex.
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`1014) (“the Horst Declaration”) includes a description of the combination of
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`Koster and Duato, with cites to numerous pages of Ex. 1007. See Ex. 1014, ¶¶ D-
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`20 to D-25. Both the Petition and Horst Declaration include direct quotes from and
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`citations to pages 117 and 119 of Ex. 1007, among others.
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`Exhibit 1007 is a collection of excerpts from a textbook entitled
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`“Interconnection Networks - An Engineering Approach” by Jose Duato et al.,
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`2
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`IPR2015-00163
`Patent 7,296,121
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`which includes over 500 pages. As filed and served, Exhibit 1007 includes
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`approximately 140 pages of the Duato textbook, including the cover, title page, and
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`copyright page. Exhibit 1007 was filed in two parts due to the size of the Portable
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`Document Format (PDF) file.
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`Mr. David Holt (Reg. No. 65,161), an associate at Fish & Richardson, was
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`responsible for supervising the preparation of the Petition and the accompanying
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`exhibits for filing and service. Ex. A, ¶¶ 1, 2. As part of this effort, Mr. Holt was
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`responsible for the clerical tasks of checking cites throughout the Petition and the
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`Horst Declaration to the various exhibits, preparing an initial draft of the exhibits
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`list, and gathering the various exhibits for preparation by Mr. Edward Faeth, a
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`paralegal at Fish & Richardson. Ex. A, ¶ 2.
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`On October 27, 2014, in preparation for the filing and service of IPR2015-
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`00163, Mr. Holt reviewed the Petitions for IPR2015-00161, -00163, and -00172
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`and the entire Horst Declaration to collect a list of all the pages of Ex. 1007 to
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`which the Petitions and Horst Declaration cited. Ex. A, ¶ 3. Because Ex. 1007 is a
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`large textbook and the Petitions were prepared based on the physical book, the
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`relevant portions needed to be photocopied for filing and service. Id. Based on the
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`cites included in the Petitions and Horst Declaration, Mr. Holt transcribed a list of
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`the pages that needed to be photocopied on a sticky note, which he then attached to
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`the front of the Duato textbook. Id.
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`3
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`IPR2015-00163
`Patent 7,296,121
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`Mr. Holt delivered the Duato textbook along with the sticky note to Mr.
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`Faeth and requested that he scan the pages listed on the sticky note, electronically
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`collate the scanned pages, and prepare the resulting electronic version of Ex. 1007
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`for filing and service. Ex. A, ¶ 4; Ex. B, ¶ 3. In preparing Ex. 1007 and all other
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`documents related to IPR2015-00159, -00161, -00163, and -00172 for service and
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`filing, Mr. Faeth requested the help of Ms. Sylvia Pantano, a legal secretary at Fish
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`& Richardson, to scan the pages listed on the sticky note prepared by Mr. Holt.
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`Ex. B, ¶ 4; Ex. C, ¶ 3.
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`Neither Mr. Holt, Mr. Faeth, nor Ms. Pantano retained a copy of the sticky
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`note and none of them recollects whether the sticky note included pages 117 and
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`119 or a section encompassing these pages in the list of pages to be scanned. Ex.
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`A, ¶ 5; Ex. B, ¶ 4; Ex. C, ¶ 5. Therefore, either Mr. Holt inadvertently did not
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`include these pages in the list of pages to be photocopied or Ms. Pantano
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`inadvertently did not photocopy them.
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`After Ms. Pantano scanned the pages included in the filed and served version
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`of Ex. 1007, she uploaded a PDF file of the pages to a shared drive where the
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`exhibits were being collected. Ex. C, ¶ 4 Mr. Faeth paginated and labeled the PDF
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`file and prepared it to be electronically filed through use of the Patent Review
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`Processing System (PRPS). Ex. B, ¶ 5. Once each of the Petitions and all exhibits
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`were ready to be filed, Mr. Holt, Mr. Karl Renner (lead counsel) and Mr. Roberto
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`4
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`IPR2015-00163
`Patent 7,296,121
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`Devoto (backup counsel) briefly reviewed the submissions, each exceeding 1800
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`pages, to make sure that the Petitions reflected the latest drafts deemed ready for
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`filing and to make sure that all corresponding exhibits were present and properly
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`formatted. Ex. A, ¶ 6. After Mr. Holt, Mr. Renner and Mr. Devoto completed
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`their review, Mr. Faeth attended to printing the Petitions and exhibits for service,
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`and electronically filing the Petitions via PRPS. Ex. B, ¶ 5.
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`On February 13, 2015, Patent Owner filed its preliminary response. In the
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`preliminary response, Patent Owner asserted that “Petitioners rely upon Duato’s
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`alleged disclosure of routing tables in chapter 4 and on pages 117 and 119 as
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`allegedly disclosing the desirability of implementing routing algorithms using a
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`routing table,” and that “Ex. 1007 as filed and served by Petitioners does not
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`contain the[se] pages.” Preliminary Response, p. 39. This was the first time Patent
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`Owner brought this clerical mistake to Petitioners’ attention, and Petitioners were
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`not aware of the clerical mistake prior to this point. See Ex. A, ¶ 7; Ex. B, ¶ 6; Ex.
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`C, ¶ 6.
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`III. The Inadvertent Photocopying Error is a “Clerical Mistake” for which
`Relief May Be Sought Pursuant to Rule 42.104(c)
`Under 37 C.F.R. § 42.104(c), “[a] motion may be filed that seeks to correct a
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`clerical or typographical mistake in the petition. The grant of such a motion does
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`not change the filing date of the petition.” “[T]his rule is remedial in nature and
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`therefore is entitled to a liberal interpretation.” See ABB Inc. v. ROY-G-BIV Corp.,
`5
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`IPR2015-00163
`Patent 7,296,121
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`Case IPR2013-00063, Paper No. 21 (Decision – Motion to Correct Petition), at 7
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`(citing Tcherepnin v. Knight, 389 U.S. 332, 336 (1967)). Notably, Rule 42.104(c)
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`“is not limited to correcting errors in previously-filed documents, but is broad
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`enough to encompass clerical errors in uploading the documents.” Id. at 8.
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`In this case, either an associate (Mr. Holt) or a legal secretary (Ms. Pantano)
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`inadvertently made a mistake when preparing or photocopying portions of the
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`Duato textbook for the creation of Exhibit 1007. See Ex. A, ¶ 5; Ex. B, ¶ 4; Ex. C,
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`¶ 4. In either case, the mistake made in the preparation and photocopying of
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`Exhibit 1007 is a “clerical mistake” to which Rule 42.104(c) provides relief.
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`Indeed, courts have characterized “document preparation and copying documents”
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`as “clerical” tasks. See Spegon v. Catholic Bishop of Chicago, 175 F. 3d 544, 553
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`(7th Cir. 1999).
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`In a similar case, Arthrex, Inc. v. Bonutti Skeletal Innovations, LLC,
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`IPR2013-00631, the Board correctly determined that a subordinate attorney’s
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`failure to include all pages of two exhibits was a “clerical mistake” and allowed the
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`moving party to correct the inadvertent mistake by filing and serving copies of the
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`two exhibits including the missing pages. See Arthrex, Inc. v. Bonutti Skeletal
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`Innovations, LLC, IPR2013-00631, Paper 15, pp. 4-6 (P.T.A.B. Mar. 3, 2014). In
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`particular, the moving party in Arthrex inadvertently filed English translations of
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`two exhibits without attaching the original foreign-language patents, as required by
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`the Rules. See id. at p. 4.
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`As Patent Owner argues in this case, the opposing party in Arthrex argued
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`that the grounds relying on the two incomplete exhibits should be dismissed for
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`failing to meet the requirements of 35 U.S.C. § 312 and 37 C.F.R. §§ 42.6, 42.104,
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`42.105, and 42.106. See id.; see also Preliminary Response, pp. 39-40. In
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`dismissing this argument, the Board determined that the opposing party’s
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`“argument that granting Arthrex’s motion constitutes waiver of a statutory
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`requirement is based on circular reasoning.” See Arthrex, Paper 15 at p. 5. In
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`concluding “that Arthrex’s error is clerical in nature and subject to correction
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`under 37 C.F.R. § 42.104(c),” the Board noted that it has previously:
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`deemed similar errors to be clerical in nature and have permitted their
`correction under 37 C.F.R. § 42.104(c). See ABB, Inc. v. ROY-G-BIV
`Corp., IPR2013-00063, Paper 21 at 7 (Jan. 16, 2013) (permitting
`petitioner to correct error of uploading the wrong exhibits with
`petition); Syntoleum Corp. v. Neste Oil Oyj, IPR2013-00178, Paper 21
`at 5 (Jul. 22, 2013) (permitting petitioner to correct error of uploading
`incorrect exhibit with petition).
`Id. at p. 6.
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`Moreover, the clerical mistake in this case is distinguishable from those
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`cases where the Board has denied a moving party’s motion to correct an exhibit
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`7
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`IPR2015-00163
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`pursuant to Rule 42.104(c). For example, in Zhongshan Broad Ocean Motor Co.,
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`Ltd. v. Nidec Motor Corp., IPR2014-01121, the Board held that a lead counsel’s
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`failure to obtain “an attesting affidavit with the translation[]” of an exhibit was not
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`a clerical error. See Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor
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`Corp., IPR2014-01121, Paper No. 20, pp. 9-12. In Zhongshan, the Board
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`specifically contrasted a subordinate attorney’s failure to collate available
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`materials, which the Board had previously deemed to be a clerical mistake, with
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`the “clear evidence that no attesting affidavit was even secured” by the lead
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`counsel. See id. at p. 12. In the present case, Petitioners’ inadvertent
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`photocopying mistake is far closer in scope to a failure to properly collate already
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`existing materials than to a lead counsel’s failure to secure, much less file, all
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`materials required by the Rules.
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`IV. Any Substantive Effects on Patent Owner Due to this Clerical Mistake
`Have Been or Can Be Mitigated
`The purpose of the filing requirements for a petition is to “give adequate
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`notice to the Patent Owner of the basis for relief by laying out the petitioner's
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`grounds and supporting evidence.” ABB, IPR2013-00063, Paper No. 21 at 3
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`(citing Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48763 (Aug. 14,
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`2012)). In this case, the Petition properly identified Exhibit 1007 as excerpts of the
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`Duato textbook and identified by citation the pages of the Duato textbook upon
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`which the proposed grounds of unpatentability were based. See Petition, pp. iii,
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`IPR2015-00163
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`38-41. In fact, the Petition and the Horst Declaration each include direct
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`quotations from the pages missing from the exhibit. See Petition, pp. 40-41; Ex.
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`1014, ¶¶ D-24, D-25. Moreover, a copy of the cover, title page, and copyright
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`page were included in the portion of the exhibit filed and served. See Ex. 1007, pp.
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`1-3. Therefore, the Patent Owner was put on notice regarding the reference relied
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`upon in the Petition and the specific sections and pages cited to support the
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`proposed grounds of unpatentability.
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`Despite its discovery while preparing the preliminary response that certain
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`cited pages were missing from the filed and served copy of Exhibit 1007, Patent
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`Owner did not notify Petitioners of this clerical error until it filed the preliminary
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`response. See Ex. A, ¶ 7. This decision by Patent Owner should mitigate any
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`assertion of prejudice against Patent Owner. Patent Owner could have asked
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`Petitioners for a copy of any portion of the Duato textbook it deemed necessary for
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`preparation of the preliminary response, which it did not do. Alternatively, Patent
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`Owner could have used the identifying information of the Duato textbook provided
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`in the Petition to obtain a physical copy of the Duato textbook, a fact the Board
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`found notable in Arthrex when finding a lack of prejudice to the opposing party.
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`See Arthrex, IPR2013-00631, Paper 15 at p. 6, n. 2.
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`Moreover, to the extent that the Board still finds Petitioners’ clerical mistake
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`prejudiced Patent Owner, the prejudice can be obviated through additional
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`9
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`IPR2015-00163
`Patent 7,296,121
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`briefing. In particular, though Patent Owner has now filed its preliminary
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`response, the Board has not yet issued its institution decision. Accordingly, once
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`Petitioners have been permitted to correct Exhibit 1007, Petitioners would agree to
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`a Board order permitting Patent Owner a reasonable amount of additional briefing
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`(e.g., 3 to 5 pages) on the missing portions of Exhibit 1007. Since the institution
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`decision is not due until May 13, 2015, there is nearly a month and a half for Patent
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`Owner to prepare such briefing and for the Board to take it into consideration as
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`part of its institution decision.
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`For at least these reasons, Petitioners respectfully submit that Petitioners’
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`and Patent Owner’s actions to this point in the proceeding should mitigate most, if
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`not all, prejudice to Patent Owner arising from the clerical error in the preparation
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`of Exhibit 1007, and that any remaining prejudice can be easily obviated by a
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`limited additional brief on the missing pages.
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`V. Conclusion
`The Board’s precedent overwhelming supports a finding that Petitioners’
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`inadvertent mistake when preparing or photocopying portions of the Duato
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`textbook for the creation of Exhibit 1007 is a “clerical mistake” correctable
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`through Rule 42.104(c). Because the prejudice to Patent Owner, if any, has been
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`or can be mitigated, Petitioners respectfully request permission to file and serve the
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`attached corrected version of Exhibit 1007 that includes the missing pages.
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`Respectfully submitted,
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`/ Roberto J. Devoto /
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`Roberto Devoto, Reg. No. 55,108
`W. Karl Renner, Reg. No. 41,265
`Attorneys for Petitioner
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`IPR2015-00163
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`Dated: 3-26-15
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`IPR2015-00163
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on March 26, 2015, a complete and entire copy of this “Motion to
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`Correct Exhibit 1007 Pursuant to 37 C.F.R. § 42.104(c)” and all supporting
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`exhibits were provided by electronic mail to the Patent Owner by serving the
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`correspondence e-mail addresses of record as follows:
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`Jonathan D. Baker
`Reg. No. 45708
`Farney Daniels PC
`411 Borel Avenue, Suite 350
`San Mateo, California 94402
`Phone: 424-268-5210
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`jbaker@farneydaniels.com
`batkinson@farneydaniels.com
`fdlitsupport@farneydaniels.com
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`/Edward G. Faeth/
`Edward Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202)-626-6420
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`EXHIBIT A
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`EXHIBIT A
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re Patent of: Morton et al.
`U.S. Patent No.:
`7,296,121
`Issue Date:
`Nov. 13 , 2007
`Appl. Serial No.:
`10/966,161
`Filing Date:
`Oct. 15, 2004
`Title: REDUCING PROBE TRAFFIC IN MULTIPROCESSOR SYSTEMS
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`IPR2015-00161
`IPR2015—00163
`IPR2015-00172
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`Case Nos:
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`DECLARATION OF MR. DAVID L. HOLT
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`1.
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`My name is David L. Holt. I am an associate at Fish & Richardson,
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`P.C., and a registered patent practitioner with the USPTO (Reg. No. 65,161).
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`2.
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`I assisted with the preparation and filing of the four petitions for inter
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`partes review of U.S. Patent No. 7,296,121 designated IPR2015-00159, -00161, -
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`00163, and -00172. In particular, I was responsible for supervising the preparation
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`of the Petitions and the accompanying exhibits for filing and service. As part of
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`this effort, I was responsible for the clerical tasks of checking cites throughout the
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`Petitions and the “Declaration of Dr. Robert Horst” (Ex. 1014) (“the Horst
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`Declaration”) to the various exhibits, preparing an initial draft of the exhibits list,
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`and gathering the various exhibits for preparation by Mr. Edward Faeth, a
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`paralegal at Fish & Richardson.
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`3.
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`On October 27, 2014, in preparation for the filing and service of the
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`Various documents associated with IPR2015-00159, -00161, -00163 , and -00172, I
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`reviewed the Petitions for IPR2015-00159, -00161, —00163, and -00172 and the
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`Page 1 of 4
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`Case Nos: lPR2015-00161, -00163, -oo172
`U.S. Patent No. 7,296,121
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`entire Horst Declaration to collect a list of all the pages of Exhibit 1007 to which
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`the Petitions and Horst Declaration cited. Exhibit 1007 is a collection of excerpts
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`from a textbook entitled “Interconnection Networks — An Engineering Approach”
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`by Jose Duato et al. (“the Duato textbook”), which includes over 500 pages.
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`Because Exhibit 1007 is a large textbook and the Petitions were prepared based on
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`a physical copy of the textbook, the relevant portions needed to be photocopied for
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`filing and service. Based on the cites 1 located in the Petitions and Horst
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`Declaration, I transcribed a list of the pages that needed to be photocopied on a
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`sticky note, which I then attached to the front of the Duato textbook.
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`4.
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`I delivered the Duato textbook along with the sticky note to Mr. Faeth
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`and requested that he scan the pages listed on the sticky note, electronically collate
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`the scanned pages, and prepare the resulting electronic version of Exhibit 1007 for
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`filing and service. It is my understanding that Mr. Faeth worked with Ms. Sylvia
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`Pantano, a secretary at Fish & Richardson, to scan the pages from the Duato
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`textbook and prepare Exhibit 1007 for filing and service.
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`5.
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`I did not retain a copy of the sticky note or any other record of the list
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`ofpages that I asked Mr. Faeth to photocopy in preparation of Exhibit 1007.
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`Moreover, I do not recollect whether the sticky note included pages 117 and 119 or
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`a section encompassing these pages in the list of pages to be scanned. Therefore,
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`Page 2 of 4
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`Case Nos: IPR20l5-00161, -00163, -00172
`U.S. Patent No. 7,296,121
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`to the best of my understanding, either I inadvertently did not include these pages
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`in the list or an error was made while scanning the excerpts of the Duato textbook.
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`6.
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`Once Mr. Faeth informed our team that each of the Petitions and all
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`exhibits were ready to be filed, Mr. Karl Renner (lead counsel), Mr. Roberto
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`Devoto (backup counsel), and I briefly reviewed the submissions, each of which
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`exceeded 1800 pages. The purpose of our review was to make sure that the
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`Petitions reflected the latest drafts deemed ready for filing and to make sure that all
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`corresponding exhibits were present and properly formatted. After Mr. Renner,
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`Mr. Devoto, and I completed our review, we each notified the team of our belief
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`that the various documents were ready for filing and service.
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`7.
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`On February 13, 2015, Patent Owner filed and served its preliminary
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`responses in each of IPR20l5-00159, —00l6l, —00l63, and —00l72. In the
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`preliminary responses for each of IPR20l5-00161, -00163, and —00l72, Patent
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`Owner asserted that “Petitioners rely upon Duato’s alleged disclosure of routing
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`tables in chapter 4 and on pages 117 and 119 as allegedly disclosing the
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`desirability of implementing routing algorithms using a routing table,” and that
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`“Ex. 1007 as filed and served by Petitioners does not contain the[se] pages.”
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`IPR20l5-00161, Preliminary Response (Paper 13), p. 39; IPR20l5-00163,
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`Preliminary Response (Paper 13), p. 39; IPR20l5—O0l72, Preliminary Response
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`(Paper 1 1), p. 36. To the best of my knowledge, this was the first time anyone
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`Page 3 of 4
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`Case Nos: [PR2015-00161, -00163, -00172
`U.S. Patent No. 7,296,121
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`involved with the preparation and filing of IPR20 1 5-00159, -0016 1 , -00163, and -
`
`00172 became aware of this clerical mistake.
`
`8.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
`
` Date:
`
`032 Z<a_/_ 2-01 5
`
`avid L. Holt (Reg. No 65,161)
`
`Page 4 of 4
`
`
`
`
`
`EXHIBIT B
`
`EXHIBIT B
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Morton et al.
`
`Case Nos:
`
`IPR20l5-00161
`
`7,296,121
`U.S. Patent No.:
`Issue Date:
`Nov. 13, 2007
`Appl. Serial No.:
`10/966,161
`Filing Date:
`Oct. 15, 2004
`Title: REDUCING PROBE TRAFFIC IN MULTIPROCESSOR SYSTEMS
`
`IPR20l5—00l63
`IPR20l5—00172
`
`DECLARATION OF MR. EDWARD G. FAETH
`
`1.
`
`My name is Edward G. Faeth.
`
`I am a paralegal at Fish & Richardson,
`
`P.C.
`
`2.
`
`I assisted with the preparation and filing of the four petitions for inter
`
`partes review of U.S. Patent No. 7,296,121 designated IPR2015-00159, -00161, -
`
`00163, and -00172. In particular, I was responsible for the preparation of the
`
`Petitions and the accompanying exhibits for filing and service. As part of this
`
`effort, I was responsible for ensuring the proper formatting of the petitions,
`
`ensuring all of the exhibits had been gathered, labeling and paginating the exhibits
`
`in accordance with the USPTO’s rules, electronically filing the petitions and
`
`accompanying exhibits, and printing and mailing service copies of the petitions
`
`and exhibits.
`
`3.
`
`On October 27, 2014, during preparation for the filing and service of
`
`the various documents associated with IPR20l5—00l59, -00161, —00l63, and —
`
`00172, l\/Ir. David Holt, an associate at Fish & Richardson, provided me with a
`
`Page 1 of4
`
`
`
`Case Nos: IPR20l5-00161, —00163, —00l72
`U.S. Patent No. 7,296,121
`
`textbook entitled “Interconnection Networks - An Engineering Approach” by Jose
`
`Duato er al. (“the Duato textbook”). Attached to the Duato textbook was a sticky
`
`note that included a list of pages that Mr. Holt informed me need to be scanned and
`
`electronically collated into Exhibit 1007.
`
`4.
`
`As I was responsible for preparing all documents related to IPR2015-
`
`00159, -00 1 6 1, -00163 , and -001 72 for service and filing including Exhibit 1007, I
`
`requested the help of Ms. Sylvia Pantano, a legal secretary at Fish & Richardson,
`
`to scan the pages listed on the sticky note prepared by Mr. Holt. I did not retain a
`
`copy of the sticky note prepared by Mr. Holt or any other record of the list of pages
`
`that I was asked to photocopy in preparation of Exhibit 1007. Moreover, though I
`
`recall reviewing the scanned pages for accuracy, I do not specifically recollect
`
`whether the sticky note included pages 117 and 119 or a section encompassing
`
`these pages in the list of pages to be scanned. Therefore, to the best of my
`
`understanding, either Mr. Holt did not include these pages in the list or an
`
`inadvertent error was made while scanning and preparing the excerpts of the Duato
`
`textbook.
`
`5.
`
`After Ms. Pantano scanned the pages included in the filed and served
`
`version of Ex. 1007, she informed me that she had uploaded a PDF file of the
`
`pages to a shared drive where the exhibits were being collected. I paginated and
`
`labeled the PDF file and prepared it to be electronically filed through use of the
`
`Page 2 of 4
`
`
`
`Case Nos: IPR2015—00161, -00163, —0O172
`U.S. Patent No. 7,296,121
`
`Patent Review Processing System (PRPS). It is my understanding that Mr. Karl
`
`Renner (lead counsel), Mr. Roberto Devoto (backup counsel), and Mr. Holt briefly
`
`reviewed the submissions, each of which exceeded 1800 pages. After Mr. Renner,
`
`Mr. Devoto, and Mr. Holt completed their review, each notified the team of his
`
`belief that the various documents were ready for filing and service. Thereafter,
`
`Mr. Renner signed each of the Petitions.
`
`I uploaded each of the signed Petitions,
`
`the related exhibits, and a power of attorney from our client to PRPS, and took
`
`steps necessary to electronically file these documents. Furthermore, I printed
`
`copies of the signed Petitions, the related exhibits, and the power of attorney from
`
`our client and took steps necessary to serve these documents to Patent Owner via
`
`Federal Express.
`
`6.
`
`On February 13, 2015, Patent Owner filed and served its preliminary
`
`responses in each of IPR2015—00l59, -00161, —00163, and —00172. In the
`
`preliminary responses for each of IPR2015-00161, -001 63 , and -00172, Patent
`
`Owner asserted that “Petitioners rely upon Duat0’s alleged disclosure of routing
`
`tables in chapter 4 and on pages 117 and 119 as allegedly disclosing the
`
`desirability of implementing routing algorithms using a routing table,” and that
`
`“Ex. 1007 as filed and served by Petitioners does not contain the[se] pages.”
`
`IPR2015—00161, Preliminary Response (Paper 13), p. 39; IPR2015—00163 ,
`
`Preliminary Response (Paper 13), p. 39; IPR2015—00172, Preliminary Response
`
`Page 3 of 4
`
`
`
`Case Nos: IPR20l5—00l6l, -00163, -00172
`U.S. Patent No. 7,296,121
`
`(Paper l 1), p. 36. To the best of my knowledge, this was the first time anyone
`
`involved with the preparation and filing of IPR20l5—00 1 59, -00161, —00l63, and -
`
`00172 became aware of this clerical mistake.
`
`7.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
`
` Signature:
`
`«
`Edward G. Faeth
`
`Page 4 of4
`
`
`
`EXHIBIT C
`
`EXHIBIT C
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Morton et al.
`
`Case Nos:
`
`IPR2015—00161
`
`U.S. Patent No.:
`
`7,296,121
`
`IPR2015—00163
`
`Issue Date:
`Nov. 13, 2007
`Appl. Serial No.:
`10/966,161
`Filing Date:
`Oct. 15, 2004
`Title: REDUCING PROBE TRAFFIC IN MULTIPROCESSOR SYSTEMS
`
`IPR2015-00172
`
`DECLARATION OF MS. SYLVIA PANTANO
`
`1.
`
`My name is Sylvia Pantano.
`
`I am a legal secretary at Fish &
`
`Richardson, P.C.
`
`2.
`
`I assisted with the preparation and filing of the four petitions for inter
`
`partes review of U.S. Patent No. 7,296,121 designated IPR2015—00159, -00161, -
`
`00163, and —00172. In particular, I assisted Mr. Edward Faeth, a paralegal at Fish
`
`& Richardson, with the preparation of exhibits for filing and service.
`
`3.
`
`On October 27, 2014, during preparation for the filing and service of
`
`the various documents associated with IPR2015—00159, -00161, -00163, and —
`
`00172, Mr. Faeth, provided me with a textbook entitled “Interconnection Networks
`
`— An Engineering Approach” by Jose Duato et al. (“the Duato textbook”).
`
`Attached to the Duato textbook was a sticky note that included a list of pages that
`
`Mr. Faeth informed me needed to be scanned and electronically collated into
`
`Exhibit 1007.
`
`Page 1 of 3
`
`
`
`Case Nos: IPR2015—00161, -00163, —00172
`U.S. Patent No. 7,296,121
`
`4.
`
`Per Mr. Faeth’s instructions, I scanned the pages listed on the sticky
`
`note and created a Portable Document Format (PDF) file containing the pages I
`
`scanned.
`
`I uploaded the PDF file to a shared drive and informed Mr. Faeth where
`
`the PDF file was stored so that he could finalize its preparation for filing and
`
`service.
`
`5.
`
`I did not retain a copy of the sticky note attached to the Duato
`
`textbook or any other record of the list of pages that I was asked to photocopy in
`
`preparation of Exhibit 1007. Moreover, though I recall reviewing the scanned
`
`pages for accuracy, I do not specifically recollect whether the sticky note included
`
`pages 117 and 119 or a section encompassing these pages in the list of pages to be
`
`scanned. Therefore, to the best of my understanding, either the sticky note did not
`
`include these pages in the list, or I made an inadvertent error while scanning the
`
`excerpts of the Duato textbook and creating the PDF file.
`
`6.
`
`On February 13, 2015, Patent Owner filed and served its preliminary
`
`responses in each of IPR20l5-00159, -00161, -00163, and —00172. In the
`
`preliminary responses for each of IPR2015-00161, -00163, and —00172, Patent
`
`Owner asserted that “Petitioners rely upon Duato’s alleged disclosure of routing
`
`tables in chapter 4 and on pages 117 and 119 as allegedly disclosing the
`
`desirability of implementing routing algorithms using a routing table,” and that
`
`“Ex. 1007 as filed and served by Petitioners does not contain the[se] pages.”
`
`Page 2 of 3
`
`
`
`Case Nos: lPR20l5-00161, -00163, -00172
`U.S. Patent No. 7,296,121
`
`lPR20l5—O0l6l, Preliminary Response (Paper 13), p. 39; IPR20l5-00163,
`
`Preliminary Response (Paper 13), p. 39; lPR20l5-00172, Preliminary Response
`
`(Paper ll), p. 36. To the best of my knowledge, this was the first time anyone
`
`involved with the preparation and filing of IPR20l5—00l59, -00161, -00163, and -
`
`00172 became aware of this clerical mistake.
`
`7.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
`
`
`
`y
`ylvia Pantano
`
`_
`
` S1 gnature.
`
`"
`
`Page 3 of3
`
`
`
`EXHIBIT D
`
`EXHIBIT D
`
`
`
`
`
`APPLE 1007
`
`1
`
`APPLE 1007
`
`
`
`Interconnection Networks
`
`An Engineering Approach
`
`José Duato
`
`Sudhakar Yalamanchili
`
`Lionel Ni
`
`IEEE
`COMPUTER
`SOCIETY
`
`Los Alamitos, California
`
`Washington
`
`'
`
`Brussels
`
`°
`
`Tokyo
`
`2
`
`
`
`Library oi Congress Cataloging-in-Publication Data
`
`Duato,José
`interconnection networks: an engineering approach /José Duato, Sudhakar
`Yalamanchili, Lionel Ni.
`p.
`cm.
`Includes bibliographical references.
`ISBN 0-8186-7800-3
`1. Computer networks.’
`n. Ni, Lionel M.
`|EEii¥ifi%?:iti‘%‘”‘
`TK5105.5.D88
`1997
`7
`004.6-dc21
`
`2 Multgiprocessgr.
`*~
`
`|.YalamanchiIi.
`
`97-20502
`CIP
`
`Engineers, Inc. All rights reserved.
`Copyright © 1997 by The
`Copyright and Reprint Permissions.‘ Abstracting is permitted with credit to the source. Libraries are permitted
`to photocopy isolated pages beyond the limits of US copyright law, for private use of their patrons. O
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