`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`ADVANCED MICRO DEVICES, INC.,
`Petitioner
`
`v.
`
`AQUILA INNOVATIONS, INC.,
`Patent Owner
`
`___________________
`
`Case IPR2019-01526
`U.S. Patent No. 6,895,519 B2
`___________________
`
`PETITIONER’S REPLY TO
`PATENT OWNERS PRELIMINARY RESPONSE1
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 This reply was authorized by the Board on January 22, 2020 via email.
`
`
`
`Case IPR2019-01526
`U.S. Patent No. 6,895,519 B2
`PETITIONER’S EXHIBIT LIST
`Description
`
`Exhibit No.
`
`1001
`
`U.S. Patent No. 6,895,519 B2 to Endo (“the ’519 patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`File history of U.S. Patent No. 6,895,519 B2 to Endo (“’519 file
`history”)
`
`Declaration of Dr. David Albonesi
`
`U.S. Patent No. 6,665,802 to Ober (“Ober”)
`
`“Draft ACPI Driver Interface Design Notes and Reference,”
`Microsoft Hardware White Paper, Microsoft Corporation, 1998
`(“Windows APCI”)
`
`U.S. Patent No. 6,516,422 to Doblar et al. (“Doblar”)
`
`U.S. Patent No. 6,823,516 to Cooper (“Cooper”)
`
`U.S. Patent No. 6,681,336 to Nakazato et al. (“Nakazato”)
`
`Curriculum vitae of Dr. David Albonesi
`
`McDaniel, G., IBM Dictionary of Computing, McGraw-Hill, 10th
`ed., (1993) (“IBM Dictionary”)
`
`“Aquila Innovations, Inc.’s Claim Construction Brief,” Aquila
`Innovations, Inc. v. Advanced Micro Devices, Inc., Case No.
`1:18-cv-00554-LY (W.D. Tex.) (filed July 2, 2019). (“Claim
`Construction Brief”)
`
`“Aquila Innovations, Inc.’s Preliminary Infringement
`Contentions,” Aquila Innovations, Inc. v. Advanced Micro
`Devices, Inc., Case No. 1:18-cv-00554-LY (W.D. Tex.) (filed
`Feb. 3, 2019). (“Preliminary Infringement Contentions”)
`
`
`
`- i -
`
`
`
`Case IPR2019-01526
`U.S. Patent No. 6,895,519 B2
`Compaq Computer Corporation et al., “Advanced Configuration
`and Power Interface Specification, Revision 2.0” (July 27,2000)
`(“ACPIspec”)
`
`1013
`
`1014
`
`U.S. Patent No. 5,952,890 to Fallisgaard et al. (Fallisgaard)
`
`1015
`
`1016
`
`1017
`
`Intel Pentium III Processor/840 Developer Kit Manual (April
`2001) (“Intel Pentium III Manual”)
`
`TMS320C55x DSP Functional Overview (June 2000) (“TMS
`Overview”)
`
`ST7 8-Bit MCU Family User Guide (July 2002)(“ST7 User
`Guide)
`
`1018
`
`U.S. Patent No. 7,155,617 B2 to Gary et al. (“the ’617 patent”)
`
`Microsoft Computer Dictionary, Microsoft Press, 5th ed.,
`(2002)(“Microsoft Dictionary”)
`
`MICROSOFT.COM, OnNow and Power Management (“OnNow”)
`
`Affidavit of Christopher Butler
`
`Olukotun et al., The Case for a Single-Chip Multiprocessor
`(1996)
`
`Albonesi et al., Tradeoffs in the Design of Single Chip
`Multiprocessors (1994)
`
`Bossen et al, Power4 Systems: Design for Reliability (2001)
`
`U.S. Patent No. 5,260,979 to Parker et al. (“the ’979 patent)
`
`U.S. Patent No. 5,530,726 to Toshiaki Ohno (“the ’726 patent)
`
`Trevor Mudge, “Power: A First-Class Architectural Design
`Constraint,” IEEE Computer, April 2001
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`
`
`
`
`- ii -
`
`
`
`Case IPR2019-01526
`U.S. Patent No. 6,895,519 B2
`The totality of evidence provided in the petition exceeds the requirement for
`
`establishing at the institution phase that Exhibit 1005 (“Windows ACPI”) is a
`
`printed publication. See Petition, 12-13 (evidence and argument establishing public
`
`available of Windows ACPI). In the Patent Owner Preliminary Response, Aquila
`
`argues that “the Petition does not establish that Exhibit 1005 qualifies as a printed
`
`publication” because the Petition allegedly “cites to no evidence demonstrating
`
`that [Exhibit 1005] was indexed in a directory listing or search engine, or linked to
`
`a webpage on the Microsoft.com website.” Patent Owner Preliminary Response,
`
`37. Aquila’s arguments conflict with the Board’s Precedential Opinion Panel
`
`(“POP”) decision in Hulu, LLC, v. Sound View Innovations, LLC, IPR2018-01039,
`
`Paper 29 (P.T.A.B. December 20, 2019).
`
`In Hulu, the POP determined that, at the institution phase, “a petitioner must
`
`establish a reasonable likelihood that a reference is a printed publication.” Id. at
`
`21, emphasis added. And the POP explained that this “reasonable likelihood”
`
`standard is determined on a case-by-case basis in view of the totality of evidence.
`
`Id. at 17. As examples for how the totality of evidence may be weighed, the POP
`
`endorsed three PTAB decisions where the petitioner satisfied its initial burden to
`
`show that a reference qualified as a printed publication. Id. at 18-19 (citing Sandoz
`
`Inc. v. Abbvie Biotech. Ltd., IPR2018-00156, Paper 11, 8-13 (P.T.A.B. June 5,
`
`2018); Seabery N. Am. Inc. v. Lincoln Glob., Inc., IPR2016-00840, Paper 11, 7-8
`
`
`
`- 1 -
`
`
`
`Case IPR2019-01526
`U.S. Patent No. 6,895,519 B2
`(P.T.A.B. Oct. 6, 2016); Syncro Soft SRL v. Altova Gmbh, IPR2018-00660, Paper
`
`6, 8-10 (P.T.A.B. Sept. 5, 2018)).
`
`The Syncro Soft case is particularly relevant here. In Syncro Soft, the Board
`
`determined that the following types of evidence were sufficient to establish that a
`
`user manual was publicly accessible to institute an inter partes review: (1) indicia
`
`on the document itself—i.e., a copyright notice and the release date of the printed
`
`version; (2) a declaration from the office manager of the Internet Archive; (3) a
`
`declaration from an expert stating that she located and obtained a copy of the
`
`reference before the patent’s filing date; and (4) publicly available information
`
`relating to the document—i.e., metadata information from the reference on the
`
`company’s website. Hulu, Paper 29 at 18-19 (citing Syncro Soft, Paper 6 at 8-10).
`
`Here, as in Syncro Soft, all four types of evidence support the public
`
`availability of Windows ACPI. Thus, as in Syncro Soft, the totality of evidence
`
`establishes a reasonable likelihood that Windows ACPI is a printed publication.
`
`1.
`
`Indicia on Windows ACPI. The public accessibility of Windows
`
`ACPI is shown by indicia on the document itself. As an initial matter, Windows
`
`ACPI is a document produced by a well-known and established company—
`
`Microsoft. And similar to the evidence in Syncro Soft, Windows ACPI explicitly
`
`lists a revision date of “November 11, 1998” on its cover page:
`
`
`
`- 2 -
`
`
`
`Case IPR2019-01526
`U.S. Patent No. 6,895,519 B2
`
`
`
`See EX1005. Windows ACPI also includes a copyright date of 1998 just like the
`
`evidence in Syncro Soft:
`
`
`
`See EX1005. All of these dates predate February 15, 2002—the earliest possible
`
`priority date of the ’519 patent—by over 3 years. Thus, the indicia on EX1005
`
`itself supports that it was publically accessible before the earliest possible priority
`
`date of the ’519 patent.
`
`2. Declaration from Office Manager of the Internet Archive. EX1021 is
`
`an Affidavit of Christopher Butler, the office manager at the Internet Archive,
`
`which shows the public had access to the Windows ACPI document. Aquila
`
`contends that EX1021 only provides evidence that “compressed ZIP files” were
`
`accessible, not EX1005. POPR, 36-37. But as shown by Exhibit 1020 (a captured
`
`Microsoft website from the Wayback machine), the Windows ACPI document was
`
`available on Microsoft’s website as a “zipped .rtf file”:
`
`EX1020, 0001. That is, Microsoft provided EX1005 in zip format. Thus, EX1021
`
`
`
`
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`- 3 -
`
`
`
`Case IPR2019-01526
`U.S. Patent No. 6,895,519 B2
`provides evidence that Windows ACPI document was publically available, as a
`
`“zipped .rtf file,” at least as early as May 4, 1999.
`
` 3. Expert Declaration Showing Public Accessibility. Dr. Albonesi’s
`
`testimony supports the public accessibility of Windows ACPI too. He testified:
`
`Draft ACPI Driver Interface Design Notes and Reference” (“Windows
`ACPI”) is a whitepaper published by Microsoft. At the time of the
`invention, the Windows operating system was the most popular
`among all those available at that time. And thus, a POSITA or the
`interested public seeking information on how to integrate power
`management…would have known to
`look at the hardware
`development section the Microsoft.com website.
`EX1003, ¶43, emphasis added.
`
`In other words, Microsoft would be the best source of information for how
`
`to develop hardware for the Windows OS—an operating system made by
`
`Microsoft. And a member of the interested public would certainly have looked to
`
`Microsoft’s website to find such information.
`
`4. Publicly Available Information. EX1020 is a Wayback machine capture
`
`of the Microsoft.com “Driver and Hardware Development” website from June 11,
`
`2001. As illustrated by EX1020, Windows ACPI could have been easily located by
`
`members of the interested public on the Microsoft Website. Specifically, EX1005
`
`was linked to in a subsection of the Microsoft.com “Driver and Hardware
`
`Development” webpage, titled “OnNow and Power Management”:
`
`
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`- 4 -
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`
`
`Case IPR2019-01526
`U.S. Patent No. 6,895,519 B2
`
`
`
`EX1020, 0001. The “On Now and Power Management” page includes links to
`
`various documents under a section labeled “White Papers.” Id. The first paper
`
`listed under the ‘White Papers” section was EX1005—“ACPI Driver Interface
`
`Design Notes and Reference”:
`
`
`
`EX1020, 0001. This is confirmed by the link embedded in EX1020 for the “ACPI
`
`Driver Interface Design Notes and Reference” paper, which contains the same file
`
`name as can be seen in EX1021 (Butler Decl.): “acpidri11_98.ZIP.” Thus, a
`
`member of the interested public would merely have had to navigate to the “OnNow
`
`and Power Management” section of the Microsoft “Driver and Hardware
`
`Development” site to locate EX1005.
`
`In sum, the totality of evidence here exceeds the threshold for establishing a
`
`reasonable likelihood that Windows ACPI (Exhibit 1005) is a printed publication.
`
`
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`- 5 -
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`
`
`
`
`
`
`
`Date: January 29, 2020
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`Case IPR2019-01526
`U.S. Patent No. 6,895,519 B2
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`/Jonathan Tuminaro/
`
`Daniel S. Block (Registration No. 68,395)
`Michael B. Ray (Registration No. 33,997)
`Jonathan Tuminaro (Registration No. 61,327)
`Michael D. Specht (Registration No. 54,463)
`Attorneys for Petitioner
`
`
`
`
`
`- 6 -
`
`
`
`Case IPR2019-01526
`U.S. Patent No. 6,895,519 B2
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that the foregoing PETITIONER’S
`
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE was served
`
`electronically via e-mail on January 29, 2020, in its entirety on the following
`
`Attorneys for Patent Owner:
`
`
`Jing H. Cherng (Lead Counsel)
`Robert E. Freitas (Back-up Counsel)
`FREITAS & WEINBERG LLP
`gcherng@fawlaw.com
`rfreitas@fawlaw.com
`marlantico@fawlaw.com
`
`
`
`
`
`
`
`Date: January 29, 2020
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`14460548_3.docx
`
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`/Jonathan Tuminaro/
`
`Jonathan Tuminaro (Registration No. 61,327)
`Attorney for Petitioner
`
`
`
`
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