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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––––––––––
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––––––––––
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`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioners,
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`v.
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`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
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`––––––––––––––––––
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`Case No. IPR2015-01502
`U.S. Patent No. 7,542,045
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`––––––––––––––––––
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`CORRECTED PETITIONER’S RESPONSE TO PATENT OWNER’S
`OBSERVATIONS ON THE CROSS-EXAMINATION OF HAROLD S.
`STONE, PH.D.
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`IPR2015-01502
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`Petitioners’ Response to Motion for Observations
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`TABLE OF CONTENTS
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`I.
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`II.
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`Introduction ...................................................................................................... 1
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`Responses to Observations .............................................................................. 1
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`A. Observation No. 1 .................................................................................. 1
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`B.
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`C.
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`Observation No. 2 .................................................................................. 1
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`Observation No. 3 .................................................................................. 2
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`D. Observation No. 4 .................................................................................. 3
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`E.
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`Observation No. 5 .................................................................................. 3
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`III. Conclusion ....................................................................................................... 4
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`i
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`IPR2015-01502
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`Petitioners’ Response to Motion for Observations
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`I.
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`Introduction
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`Petitioner’s hereby submit the following responses to Patent Owner’s
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`observations on the cross-examination of Dr. Stone (Paper 37).
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`II. Responses to Observations
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`A. Observation No. 1
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`This observation ignores the context of Dr. Stone’s testimony, where he had
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`explained that Dr. Thornton has not supported his theory about what was “typical”
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`for prior art decoders. Ex. 1032 at ¶¶2-3. Paragraph 29 of Dr. Thornton’s
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`declaration cites no evidence to support his point that “[t]ypically, a decoder
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`requires its own dedicated memory,” and there is ample evidence in the record of
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`prior art decoders not having dedicated memory. See, e.g., Ex. 1005 at 319-326;
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`Ex. 1023; Ex. 1028; Ex. 1032. Dr. Stone’s testimony that he cannot say what was
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`typical does not contradict the absence of support in Dr. Thornton’s testimony.
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`B. Observation No. 2
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`This observation mischaracterizes Dr. Stone’s testimony to make it seem
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`like he agreed with Dr. Thornton’s position that the “Local RAM” memories in Ex.
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`2001’s Figure 2-2 were dedicated memories resident on the DSP. Dr. Stone’s
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`declaration explained that the “Local RAM” and “Local LRAM” memories in
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`Figure 2-2 are not shown resident on the DSP. Ex. 1032 at ¶¶33-35. Dr. Stone’s
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`deposition testimony does not contradict his earlier testimony, but instead confirms
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`IPR2015-01502
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`Petitioners’ Response to Motion for Observations
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`it: “And if you have Dr. Thornton's report, I'll show you the arrow that points to
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`these and says that's local RAM and where his statement is that local RAM is on
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`the DSP. And I -- that's wrong. Because I have a picture of the DSP. And that's not
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`on the DSP. So that's why I differ with Dr. Thornton.”). Ex. 2013 at 52:1-6; see
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`id. at 50:9-54:16.
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`C. Observation No. 3
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`This observation quibbles with the terminology used by a technical expert
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`(“in conflict with”/“inconsistent with”), but cannot not change that expert’s
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`testimony. The cited passage of Dr. Stone’s reply declaration is consistent with
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`and confirmed by the cited cross-examination testimony—in both cases Dr. Stone
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`testified that the patents disclose at least one embodiment in which access to
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`memory is controlled by controlling access to the memory bus:
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`I'm not offering an opinion on whether it's consistent. I'm offering --
`my opinion is that now that I know what Professor Thornton means by
`access to memory, and there's a claim that talks about access to
`memory and the -- it excludes the embodiments that are in the patent,
`I'm saying that now I don't know how to build it. It may be consistent.
`It may not be consistent. I just don't know how to build it.”
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`Ex. 2013 at 56:11-18 (emphasis added); Ex. 1032 at ¶ 47 (“… Prof. Thornton's
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`opinion [that controlling access to memory is not the same as controlling access to
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`the memory bus] is in conflict with the specifications of the '368, '753, and '045
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`Petitioners’ Response to Motion for Observations
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`patents. The '368, '753, and '045 patents disclose an embodiment with the structure
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`ruled out by Prof. Thornton in Fig. 7, reproduced below.”).
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`D. Observation No. 4
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`This observation misleadingly crops the quote from Dr. Stone’s Reply
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`Declaration, which actually states “[t]he requirement of 524 MIPS in Ex. 2008 at 8
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`is specious because it is not itself explained in Ex. 2008.” Ex. 1032 at ¶ 21(c)
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`(emphasis added). Dr. Stone further explained that the cited source for the 524
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`MIPS number (Ex. 1036) includes no basis for that number. See id. Dr. Stone’s
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`deposition testimony merely agreed that Ex. 2008 in fact lists the 524 MIPS
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`number, but Patent Owner never asked about whether there is any basis for that
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`number in the source which Ex. 2008 cites for it. See Ex. 2013 at 77:12-19 (asking
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`Dr. Stone only whether the cited table of Ex. 2008 “says” what the MIPS
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`requirement is).
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`E. Observation No. 5
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`This observation is irrelevant and mischaracterizes Dr. Stone’s testimony.
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`Dr. Stone testified that he agreed that Px64 is “part of MPEG-2,” was an “MPEG-1
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`bit stream” and “also an MPEG-2 bit stream,” and that Table 2 of Konstantinides
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`would “be limited to the MPEG streams that are Px64 streams.” Ex. 2013 at 79:25-
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`80:12. Dr. Stone then explained that his declaration analysis was based on
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`converting from MPEG-2 to MPEG to rely on a lower frame rate and resolution:
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`3
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`Petitioners’ Response to Motion for Observations
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`So in -- in making my comparison, I was trying to figure out how to
`go from MPEG-2 to MPEG. And I divided by 18.1. And that would
`be -- that would incorporate what would happen if you had a lower
`frame rate, lower resolution. But, you know, hey, I did -- I explained
`what I did. And now you know. But they -- Kitson did not explain
`what he did. I don't have a clue of how he got that number.
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`Ex. 2013 at 80:16-81:8 (emphasis added). Thus, the cited testimony is consistent
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`with and further confirms Dr. Stone’s declaration testimony that “[t]he requirement
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`of 524 MIPS in Ex. 2008 at 8 is specious because it is not itself explained in Ex.
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`2008.” Ex. 1032 at ¶ 21(c).
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`III. Conclusion
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`For the foregoing reasons, Dr. Stone’s testimony is consistent with his
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`declaration testimony, and his testimony should be given substantial weight.
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`Dated: August 29, 2016
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`Respectfully Submitted,
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`/Joseph A. Micallef/
`Joseph A. Micallef
`Registration No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street NW
`Washington, DC 20005
`Attorney for Petitioner
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`Petitioners’ Response to Motion for Observations
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 29th day of
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`August, 2016, I caused to be served a true and correct copy of the foregoing by e-
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`mail on the following counsel:
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`Masood Anjom (manjom@azalaw.com)
`Alisa Lipski (alipski@azalaw.com)
`Amir Alavi (aalavi@azalaw.com)
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`
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`Dated: August 29, 2016
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`Respectfully Submitted,
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`/Joseph A. Micallef/
`Joseph A. Micallef
`Registration No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street NW
`Washington, DC 20005
`Attorney for Petitioner