Patent No. 7,296,121
`IPR2015-00163
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`
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`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.,
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC AND
`AMAZON.COM, INC.
`Petitioners
`
`v.
`
`MEMORY INTEGRITY, LLC
`Patent Owner
`
`U.S. Patent No. 7,296,121
`
`
`
`Inter Partes Review Case No. 2015-00163
`
`
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONERS’ MOTION TO CORRECT EXHIBIT 1007
`PURSUANT TO 37 C.F.R. § 42.104(c)
`
`
`
`
`IPR2015-00163
`
`
`
`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.,
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC AND
`AMAZON.COM, INC.
`Petitioners
`
`v.
`
`MEMORY INTEGRITY, LLC
`Patent Owner
`
`U.S. Patent No. 7,296,121
`
`
`
`Inter Partes Review Case No. 2015-00163
`
`
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONERS’ MOTION TO CORRECT EXHIBIT 1007
`PURSUANT TO 37 C.F.R. § 42.104(c)
`
`
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`
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`I.
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`Introduction
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`Patent No. 7,296,121
`IPR2015-00163
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`Patent Owner Memory Integrity, LLC (“Memory Integrity” or “MI”) hereby
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`opposes Petitioners’ motion to correct Exhibit 1007. As described below, the
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`Petition as filed omitted an entire chapter from Ex. 1007, the Duato reference,
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`which the Petition and Petitioners’ expert cited and relied on. Petitioners failed to
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`raise the issue until contacting Patent Owner’s counsel on March 17, 2015, over a
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`month after Patent Owner’s preliminary response was filed and over four months
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`after filing their Petition. Petitioners’ motion should be denied due to the
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`substantive effect of the motion—Petitioners seek to deny the Patent Owner and
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`this Board an adequate amount of time to address the Duato reference.
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`II.
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`Statement of Facts
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`The Duato reference was heavily relied on by Petitioner in its various
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`petitions against U.S. Patent No. 7,296,121 (“the ’121 Patent”). In particular,
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`Chapter 4 of Duato was used by Petitioners as a secondary reference for
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`obviousness grounds which provided the sole proposed grounds for rejection for
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`claim 9 in IPR2015-00161, claims 9 and 10 in IPR2015-163, and claim 9 in
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`IPR2015-172. Notably claim 9 of Duato recites, inter alia, “each of the processing
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`nodes has at least one routing table . . . which governs which portions of the first
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`point-to-point architecture the associated processing node employs for
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`communicating . . ., the at least one routing table in each of the processing nodes
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`1
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`Patent No. 7,296,121
`IPR2015-00163
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`being configured to direct all of the probes to the probe filtering unit.” Ex. 1001 cl.
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`9. Claim 10 is dependent on claim 9 and adds the additional limitation “wherein
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`the at least one routing table in each of the processing nodes is configured to direct
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`all broadcasts to the probe filtering unit.” Ex. 1001 cl. 10. In each of the petitions,
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`Petitioners and their expert cited the entirety of Chapter 4 of Duato, without pin
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`cites or quotations, as allegedly disclosing “various routing algorithms that may be
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`utilized by [] routers. See generally id. at Chapter 4.” IPR2015-161, Paper 6 at 49,
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`Ex. 1014 ¶ B-20; IPR2015-163, Paper 1 at 40, Ex. 1014 ¶ D-24; IPR2015-172,
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`Paper 6 at 54, Ex. 1014 ¶ C-48. In addition, Petitioners and their expert also cited
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`and quoted from several pages of Chapter 4 of Duato as allegedly disclosing
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`“lookup tables.” IPR2015-161, Paper 6 at 49-50, Ex. 1014 ¶¶ B-20 to B-21;
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`IPR2015-163, Paper 1 at 40-41, Ex. 1014 ¶ D-24; IPR2015-172, Paper 6 at 54-55,
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`Ex. 1014 ¶ C-48. Despite the reliance on Chapter 4 of Duato for these proposed
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`grounds, Chapter 4 was entirely absent from Petitioners’ Ex. 1007 as filed. Ex.
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`1007 at 71-72. Nor was Chapter 4 of Duato served on Patent Owner, or otherwise
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`included in any part of any of the pending petitions challenging the ’121 Patent.
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`Baker Decl. ¶ 3.
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`Petitioners’ failure to include Chapter 4 of Duato was apparent from the
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`publicly accessible PRPS online filing system since about October 28, 2014. Ex.
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`1007 (PRPS filing date Oct. 28, 2014). Moreover, as Petitioners admit, Patent
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`2
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`Owner’s preliminary responses, filed February 13, 2015, expressly argued that
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`Patent No. 7,296,121
`IPR2015-00163
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`Chapter 4 was improperly excluded from the Petition as filed. Mot. at 9; Mot. Ex.
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`A ¶ 7 (citing IPR2015-161, Paper 13 at 39; IPR2015-163, Paper 13 at 39;
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`IPR2015-172, Paper 11 at 36). Nevertheless, Petitioners did not raise the issue of
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`proposing to correct Exhibit 1007 until emailing counsel for Patent Owner on
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`March 17, 2015 (Baker Decl. ¶ 4), more than a month after Patent Owner’s
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`preliminary responses were filed, and about four and a half months after the
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`Petitions were filed. Moreover, Petitioners did not provide a copy of Chapter 4 of
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`Duato to Patent Owner until their service of the present motion to correct Exhibit
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`1007, filed on March 26, 2015. Baker Decl. ¶ 3.
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`III. Argument
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`As this Board noted in Silicon Laboratories, Inc. v. Cresta Technology
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`Corporation, Case No. IPR2014-00809, Paper No. 28 (P.T.A.B. Nov. 26, 2014):
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`An inter partes review proceeding begins with the filing of a petition.
`37 C.F.R. § 42.104. This is a statutory requirement. See 35 U.S.C. §
`312(a). The purpose is to give adequate notice to the patent owner of
`the basis for relief by laying out the petitioner’s grounds and
`supporting evidence. The Board’s rules, however, allow for
`correction of certain clerical mistakes. … 37 C.F.R. § 42.104(c) …
`allows errors to be corrected in certain situations, without sacrificing
`the notice function of the petition in informing the patent owner of the
`“grounds and supporting evidence” for the petition.
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`3
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`Id. at 2-3 (some citations omitted). “[W]hen determining whether to grant a
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`Patent No. 7,296,121
`IPR2015-00163
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`motion to correct a petition, the Board will consider any substantial substantive
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`effect, including any effect on the patent owner’s ability to file a preliminary
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`response.” Final Rule, 77 Fed. Reg. 48,680, 48,699 (Aug. 14, 2012).
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`Petitioners’ attempt to supplement their Petitions with Chapter 4 of Duato
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`four-and-a-half months after their Petitions were filed, and over a month after
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`Patent Owner’s preliminary responses were filed, would clearly sacrifice the
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`“notice function of the petition” which should have informed Patent Owner of the
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`“grounds and supporting evidence” for the Petitions. Moreover, granting
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`Petitioners’ motion would plainly have a substantive, prejudicial effect on Patent
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`Owner and its ability to file its preliminary response. Indeed, Patent Owner
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`already filed its preliminary response to each of the Petitions without the benefit of
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`Chapter 4 of Duato. If Petitioners’ motion were granted, it would deprive Patent
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`Owner of its statutory right to address the content of Chapter 4 of the Duato
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`reference in its preliminary response. 35 U.S.C. §§ 312(a)(3)(A), 313.
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`Additionally, Petitioners’ proposal to mitigate this prejudice by “permitting
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`Patent Owner a reasonable amount of additional briefing … on the missing
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`portions of Exhibit 1007” is plainly inadequate to address the prejudice to the
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`Patent Owner and the Board. Mot. at 9-10. Under the Board’s procedural rules,
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`Patent Owner is entitled to three months to file a preliminary response. 37 C.F.R.
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`4
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`§ 42.107(b). Additionally, the statute provides the Board three months from the
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`Patent No. 7,296,121
`IPR2015-00163
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`filing of a preliminary response to issue a decision on institution. 35 U.S.C. §
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`314(b)(1). However, Petitioners admit that Petitioners’ proposal would provide
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`less than “a month and a half for Patent Owner to prepare such briefing and for the
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`Board to take it into consideration as part of its institution decision.” Mot. at 10.
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`Assuming that the time was divided equally, that would leave only three weeks for
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`Patent Owner to draft a supplemental brief, and three weeks for the Board to
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`review the complete briefing—only a quarter of the time normally provided for
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`each. Moreover, in any event, Petitioners’ proposal would force Patent Owner and
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`its counsel to draft three additional substantive briefs, one each in IPR2015-161,
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`IPR2015-163, and IPR2015-172. This is in addition to the four preliminary
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`responses that Patent Owner has already drafted and submitted, which was
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`necessitated by Petitioners filing four petitions challenging the same patent. In
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`short, Petitioners’ proposal is not only prejudicial in slashing the amount of time
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`for Patent Owner and the Board to consider Chapter 4 of Duato (and the proposed
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`grounds based on it), but also in forcing Patent Owner to incur additional effort and
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`expense. Plainly a motion to correct under these circumstances would jeopardize
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`this Board’s goal “to create a timely, cost-effective alternative to litigation.” Final
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`Rule, 77 Fed. Reg. 48,680.
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`5
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`Petitioners’ other arguments in support of their motion are also unavailing.
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`Patent No. 7,296,121
`IPR2015-00163
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`Petitioners suggest that the failure to include Chapter 4 of Duato with their petition
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`was not prejudicial because “the Petition and the Horst Declaration each include
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`direct quotations from the pages missing from the exhibit.” Mot. at 9. This is, at
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`best, a misleading half-truth. As demonstrated above, Petitioners and their expert
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`cited and relied on the entirety of Chapter 4 of Duato—a total of sixty pages. Mot.
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`Ex. D at 72-131. Moreover, Petitioners repeatedly cited to the entirety of Chapter
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`4 of Duato without pin cites or quotations, instead using citations in the form “See
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`generally id. [referring to Duato] at Chapter 4.” IPR2015-161, Paper 6 at 49, Ex.
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`1014 ¶ B-20; IPR2015-163, Paper 1 at 40, Ex. 1014 ¶ D-24; IPR2015-172, Paper 6
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`at 54, Ex. 1014 ¶ C-48. Indeed, the Petition and Petitioners’ expert only provided
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`incomplete quotations of a handful of short phrases from Chapter 4 of Duato,
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`totaling less than forty words. IPR2015-161, Paper 6 at 49-50, Ex. 1014 ¶¶ B-20
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`to B-21; IPR2015-163, Paper 1 at 40-41, Ex. 1014 ¶ D-24; IPR2015-172, Paper 6
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`at 54-55, Ex. 1014 ¶ C-48. These brief quotations did not provide an adequate
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`disclosure of Chapter 4 of Duato upon which Patent Owner could have relied in
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`drafting its preliminary response. For example, the quotes lacked any surrounding
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`context that would permit Patent Owner to adequately evaluate the alleged
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`disclosures—none of them were even complete sentences. Nor could so few words
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`6
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`reasonably summarize the sixty pages relied on by Petitioners’ general citations to
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`Patent No. 7,296,121
`IPR2015-00163
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`Chapter 4 of Duato.
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`Furthermore, Petitioners improperly attempt to shift the blame for their
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`failure to previously provide Duato in full, suggesting that Patent Owner should
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`have tried to secure its own copy of Duato or ask for it from Petitioners. Mot. at 9-
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`10. The Board should reject such improper arguments. Petitioners, not Patent
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`Owner, had a statutory duty to file a petition which “identifies, in writing and with
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`particularity … the grounds on which the challenge to each claim is based, and the
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`evidence that supports the grounds for the challenge to each claim, including—
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`copies of patents and printed publications that the petitioner relies upon in support
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`of the petition.” 35 U.S.C. § 312(a)(3), (a)(3)(A).1
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`1
`To the extent that the Board interprets section 312, or the Board’s
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`rulemaking authority, as permitting correction of a Petition to add substantive
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`materials which section 312 required to be provided with the Petition, especially in
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`circumstances such as these, where Patent Owner has already filed its Preliminary
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`Response pursuant to section 313, and the deadline for filing a petition under
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`section 315(a)(1) has passed (Pet. at 1-2; IPR2015-161, Paper 11 at 1-2; IPR2015-
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`163, Paper 11 at 1-2; IPR2015-172, Paper 9 at 1-2), Patent Owner submits that
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`such interpretation would be “arbitrary, capricious, an abuse of discretion, or
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`7
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`Neither statute, nor this Board’s rules, provides for any obligation for Patent
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`Patent No. 7,296,121
`IPR2015-00163
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`Owner to inform Petitioners of the variety of ways in which their Petition is
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`deficient. Indeed, the statutes and the Board’s rules do provide an opportunity for
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`Patent Owners to do so—the preliminary response—which is for the purpose of
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`“set[ing] forth reasons why no inter partes review should be instituted based upon
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`the failure of the petition to meet any requirement” of Title 35, Part III, Chapter 31
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`(“Inter Partes Review”). 35 U.S.C. § 313. Patent Owner availed itself of the
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`opportunity expressly provided by statute and the Board’s rules to inform
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`Petitioners and the Board of how the Petition failed to satisfy the statutory
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`requirements. Moreover, putting additional obligations on patent owners to inform
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`petitioners, prior to the preliminary response, of the failures of a petition, would be
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`inconsistent with the framework provided by the statutes and the Board’s rules and
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`would unduly force additional costs on patent owners. Indeed, if anyone should
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`have a duty to look for and ascertain such failures in a petition promptly after it is
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`filed, it should be the petitioners who filed it. See Schott Gemtron Corporation v.
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`SSW Holding Company, Inc., Case No. IPR2014-00367, Paper No. 30 at 3
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`(warning petitioner after a three-day delay in raising the issue, “we remind the
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`otherwise not in accordance with law,” “short of statutory right,” and “without
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`observance of procedure required by law.” 5 U.S.C. § 706(2)(A), (C), and (D).
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`8
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`parties of the need to review documents filed in PRPS to ensure that they are
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`Patent No. 7,296,121
`IPR2015-00163
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`correct, and to notify the Board and the other party promptly if any error occurs”).
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`Here, Petitioners could have promptly gone onto the Board’s PRPS e-filing system
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`and attempted to verify the correctness and adequacy of their filing. Petitioners’
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`motion and declarations indicate that no such attempt was made.
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`Finally, the cases relied on by Petitioners are also unavailing. Contrary to
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`Petitioners’ arguments, this Board has held that Patent Owners are generally
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`prejudiced by a motion to correct unless Petitioners raise the issue promptly and
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`provide the Patent Owner all substantive materials when the Petition is filed or
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`shortly thereafter. Compare LG Electronics, Inc., et al., v. Straight Path IP Group,
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`Inc., Case No. IPR2015-00198, Paper No. 14 (P.T.A.B. Dec. 18, 2014) (“we find
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`no prejudice to the Patent Owner . . . because Patent Owner received the correct
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`version of Exhibit 1002 a mere three business days after the filing of the petition.”)
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`with International Business Machines Corporation v. Intellectual Ventures II LLC,
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`Case No. IPR2014-00660, Paper No. 17 at 2-3 (P.T.A.B. Jul. 31, 2014) (denying
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`motion to correct because, inter alia, “Patent Owner has already filed a preliminary
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`response” and the motion would “introduce[] delay into the proceeding, affecting
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`the Patent Trial and Appeal Board’s ability to render a decision to institute within
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`the statutory deadline.”). Additionally, the Arthrex case relied upon by Petitioners
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`is plainly distinguishable because, in that case, the only thing missing from the
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`9
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`Petition were the original foreign language documents—Patent Owner received
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`Patent No. 7,296,121
`IPR2015-00163
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`“(1) the contents of the references, in English; (2) the original drawings; and (3)
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`the patent numbers, which Bonutti could have used to obtain the publicly available
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`foreign language originals.” Arthrex, Inc. v. Bonutti Skeletal Innovations, LLC,
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`Case No. IPR2013- 00631, Paper 15 at 6 n.2 (P.T.A.B. Mar. 3, 2014). To the
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`contrary, here Patent Owner never received any version of Chapter 4 of Duato as
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`part of the Petition, or even until this motion was served. Baker Decl. ¶ 3. Also,
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`because Duato is a printed publication rather than a patent, it would entail
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`significantly more effort to locate the specific version of Duato cited by
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`Petitioners. Thus, the case law supports denying Petitioners’ motion.
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`IV. Conclusion
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`Patent Owner respectfully requests that Petitioners’ motion be denied.
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`10
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`Patent No. 7,296,121
`IPR2015-00163
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`Respectfully submitted,
`
` /Jonathan D. Baker/
`Jonathan D. Baker, Reg. No. 45,708
`Farney Daniels PC
`411 Borel Avenue, Suite 350
`San Mateo, California 94402
`Phone: 424-268-5210
`E-mail: jbaker@farneydaniels.com
`
`Attorney for Patent Owner
`Memory Integrity, LLC
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`11
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`Date: April 2, 2015
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`CERTIFICATE OF SERVICE
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`Patent No. 7,296,121
`IPR2015-00163
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`The undersigned hereby certifies that a copy of the foregoing Patent
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`Owner’s Opposition to Petitioners’ Motion to Correct Exhibit 1007 Pursuant to 37
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`C.F.R. § 42.104(c) was served via email on April 2, 2015, on the attorneys for the
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`Petitioners:
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`W. Karl Renner, Reg. No. 41,265
`Roberto Devoto, Reg. No. 55,108
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Phone: 202-783-5070
`Fax: 202-783-2331
`Email:
`IPR39521-0007IP1@fr.com
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`IPR39521-0007IP2@fr.com
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`IPR39521-0007IP3@fr.com
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`IPR39521-0007IP4@fr.com
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`renner@fr.com
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`devoto@fr.com
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`
` /Jonathan D. Baker/
`Jonathan D. Baker, Reg. No. 45,708
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`Date: April 2, 2015
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`12
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