Trials@uspto.gov
`571-272-7822
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`
`
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`Paper 22
`Entered: August 3, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`FLEX LOGIX TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`VENKAT KONDA,
`Patent Owner.
`____________
`
`
`IPR2020-00261
`Patent 8,269,523 B2
`____________
`
`
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`

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`IPR2020-00261
`Patent 8,269,523 B2
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`I. INTRODUCTION
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`Flex Logic Technologies, Inc., (“Petitioner”) filed a Petition to
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`institute an inter partes review of claims 2–7 and 11 (the “challenged
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`claims”) of U.S. Patent No. 8,269,523 B2 (“the ’523 patent,” Ex. 1001).
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`Paper 1 (“Pet.”). Patent Owner Venkat Konda filed a Preliminary Response.
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`Paper 9 (“Prelim. Resp.”). With Board authorization, Petitioner filed a reply
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`addressing certain issues raised in the Preliminary Response (“Reply,” Paper
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`13), and Patent Owner filed a Sur-reply (“Sur-Reply,” Paper 16). At the
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`Board’s direction (Paper 12), Petitioner filed a Notice explaining its reasons
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`for filing multiple petitions challenging the claims of the ’523 patent.
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`Paper 15 (“Notice”). Patent Owner filed a Reply to Petitioner’s Notice.
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`Paper 18 (“Notice Reply”).
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`Institution of an inter partes review is authorized by statute when “the
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`information presented in the petition . . . and any response . . . shows that
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`there is a reasonable likelihood that the petitioner would prevail with respect
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`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314
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`(2018); see 37 C.F.R. § 42.4 (2019). Upon consideration of the Petition, the
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`Preliminary Response, the Reply, the Sur-Reply, the Notice, the Notice
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`Reply, and the evidence of record, we determine that Petitioner has
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`established a reasonable likelihood of prevailing with respect to the
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`unpatentability of at least 1 claim of the ’523 patent. Accordingly, for the
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`reasons that follow, we institute an inter partes review of claims 2–7 and 11
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`of the ’523 patent.
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`2
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`IPR2020-00261
`Patent 8,269,523 B2
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`A. Related Proceedings
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`Petitioner identifies the following district court proceeding involving
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`the ’523 patent: Konda Technologies Inc. v. Flex Logix Technologies, Inc.,
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`No. 5:18-cv-07581 (N.D. Cal.). Pet. 2.
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`The ’523 patent is the subject of two other inter partes review
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`proceedings filed by Petitioner: IPR2020-00260 (“260 IPR”) and IPR2020-
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`00262 (“262 IPR”). Prelim. Resp. 1, n.1. Also, two post grant proceedings
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`brought by the Petitioner challenging a related patent are pending:
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`PGR2019-00037, and PGR2019-00042. Pet. 2. A third petition for post
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`grant review of that related patent (PGR2019-00040) was denied. Id.
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`Patent Owner additionally identifies a pending application to reissue
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`the ’523 patent: U.S. Patent Application No. 16/202,067, filed November 27,
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`2018 (“the ’067 reissue application”). Paper 6, 2.
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`B. Real Parties-in-Interest
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`Petitioner identifies Flex Logix Technologies, Inc., as the real party-
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`in-interest. Pet. 1. Patent Owner identifies himself, Venkat Konda, as the
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`real party-in-interest. Paper 6, 1.
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`C. The ’523 Patent
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`
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`The ’523 patent is titled “VLSI Layouts of Fully Connected
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`Generalized Networks.” Ex. 1001, code (54). The most commonly used
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`VLSI (Very Large Scale Integration) layout in an integrated circuit is based
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`on a two-dimensional grid model comprising only horizontal and vertical
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`tracks. Id. at 2:40–42. The ’523 patent describes VLSI layouts of
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`generalized multi-stage networks for broadcast, unicast, and multicast
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`connections using only horizontal and vertical links. Id. at 3:21–24. The
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`IPR2020-00261
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`VLSI layouts employ shuffle exchange links, where outlet links of cross
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`links from switches in a stage in one sub-integrated circuit block are
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`connected to inlet links of switches in the succeeding stage in another sub-
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`integrated circuit block. Id. at 3:24–28. The cross links are either vertical
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`links or horizontal, and vice versa. Id. at 3:28–29.
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`
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`In one embodiment, the sub-integrated circuit blocks are arranged in a
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`hypercube arrangement in a two-dimensional plane. Id. at 3:29–31. The
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`VLSI layouts exploit the benefits of significantly lower cross points, lower
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`signal latency, lower power, and full connectivity with significantly fast
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`compilation. Id. at 3:31–34.
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`D. Illustrative Claims
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`Petitioner challenges dependent claims 2–7 and 11 of the ’523 patent.
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`Pet. 1, 4. Claim 2 directly depends from claim 1, which is the only
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`independent claim in the ’523 patent. Claims 1 and 2 are reproduced below.
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`1. An integrated circuit device comprising a plurality of
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`sub-integrated circuit blocks and a routing network, and
`Said each plurality of sub-integrated circuit blocks comprising a
`plurality of inlet links and a plurality of outlet links; and
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`Said routing network comprising of a plurality of stages y,
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`in each said sub-integrated circuit block, starting from the lowest
`stage of 1 to the highest stage of y, where y≧1; and
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`Said routing network comprising a plurality of switches of
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`size d×d, where d≧2, in each said stage and each said switch of
`size d×d having d inlet links and d outlet links; and
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`Said plurality of outlet links of said each sub-integrated
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`circuit block are directly connected to said inlet links of said
`switches of its corresponding said lowest stage of 1, and said
`plurality of inlet links of said each sub-integrated circuit block
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`IPR2020-00261
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`are directly connected from said outlet links of said switches of
`its corresponding said lowest stage of 1; and
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`Said each sub-integrated circuit block comprising a
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`plurality of forward connecting links connecting from switches
`in a lower stage to switches in its immediate succeeding higher
`stage, and also comprising a plurality of backward connecting
`links connecting from switches in a higher stage to switches in
`its immediate preceding lower stage; and
`
`Said each sub-integrated circuit block comprising a
`
`plurality straight links in said forward connecting links from
`switches in said each lower stage to switches in its immediate
`succeeding higher stage and a plurality cross links in said
`forward connecting links from switches in said each lower stage
`to switches in its immediate succeeding higher stage, and further
`comprising a plurality of straight links in said backward
`connecting links from switches in said each higher stage to
`switches in its immediate preceding lower stage and a plurality
`of cross links in said backward connecting links from switches
`in said each higher stage to switches in its immediate preceding
`lower stage,
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`said plurality of sub-integrated circuit blocks arranged in
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`a two-dimensional grid of rows and columns, and
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`said all straight links are connecting from switches in each
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`said sub-integrated circuit block are connecting to switches in the
`same said sub-integrated circuit block; and said all cross links are
`connecting as either vertical or horizontal links between switches
`in two different said sub-integrated circuit blocks which are
`either placed vertically above or below, or placed horizontally to
`the left or to the right,
`
`
`each said plurality of sub-integrated circuit blocks
`comprising same number of said stages and said switches in each
`said stage, regardless of the size of said two-dimensional grid so
`that each said plurality of sub-integrated circuit block with its
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`IPR2020-00261
`Patent 8,269,523 B2
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`corresponding said stages and said switches in each stage is
`replicable in both vertical direction or horizontal direction of said
`two-dimensional grid.
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`2. The integrated circuit device of claim 1,
`
`said two dimensional grid of said sub-integrated circuit
`
`blocks with their corresponding said stages and said switches in
`each stage is scalable by any power of 2, and
`
`
`for each multiplication of 2 of the size total said sub-
`integrated circuit blocks, by adding one more stage of switches
`and the layout is placed in hypercube format and also the cross
`links between said one more stage of switches are connected in
`hypercube format.
`
`
`Ex. 1001, 35:23–36:23.
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`E. The Asserted Grounds of Unpatentability
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`Petitioner asserts the challenged claims are unpatentable on the
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`following grounds.
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`Claims Challenged Statutory Basis
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`2–7
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`11
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`35 U.S.C. § 102
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`35 U.S.C. § 103
`
`References
`Published PCT Application
`No. WO 2008/109756
`(“the ’756 PCT,” Ex. 1009)
`The ’756 PCT and U.S. Patent
`No. 6,940,308 B2 (“Wong,”
`Ex. 1008)
`
`Pet. 4. Petitioner relies on the Declaration of Jacob Baker, Ph.D., P.E. (“the
`
`Baker Declaration,” Ex. 1002) in support of its contentions.
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`A. Level of Ordinary Skill in the Art
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`II. ANALYSIS
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`Petitioner contends that a person having ordinary skill in the art
`
`(“POSITA”) “would have had a master’s degree in electrical engineering or
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`a similar field, and at least two to three years of experience with integrated
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`circuits and networks,” and that “[m]ore education can supplement practical
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`experience and vice versa.” Pet. 24 (citing Ex. 1002 ¶¶ 18–19). Patent
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`Owner agrees that a POSITA would have had a master’s degree in electrical
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`engineering or a similar field, but argues that a POSITA would also have
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`had “at least two to three years of experience with integrated circuits,
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`interconnection networks and Field Programmable Gate Arrays.” Prelim.
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`Resp. 8 (emphasis omitted). According to Patent Owner, “interconnection
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`networks used in Field Programmable Gate Arrays (‘FPGAs’) is a separate
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`field requiring VLSI layouts and multicast solutions,” and “some of the key
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`requirements for the FPGA interconnects are not known in academia unless
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`[a] POSITA has worked in the industry.” Id. at 8–9.
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`We agree with the parties that a POSITA would have had a master’s
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`degree in electrical engineering or a similar field, and experience in the field
`
`of integrated networks, which is consistent with the level of skill in the art at
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`the time of the invention as reflected in the prior art in this proceeding. See
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`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that
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`specific findings regarding ordinary skill level are not required “where the
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`prior art itself reflects an appropriate level and a need for testimony is not
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`shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755
`
`F.2d 158, 168 (Fed. Cir. 1985))). Our determination regarding Petitioner’s
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`challenge does not turn on the differences between Petitioner’s and Patent
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`Owner’s definitions, and we note that our conclusion would be the same
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`under either definition.
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`We note that Patent Owner argues that Petitioner’s declarant,
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`Dr. Baker, is not qualified to testify in this proceeding because he is neither
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`a person of ordinary skill, nor an expert, in the relevant art. Prelim. Resp. 6–
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`11; Notice Reply 5. There is no requirement, however, that the expert’s
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`experience perfectly match the relevant field, or that that the expert is a
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`person of ordinary skill in the art. The August 13, 2018, update to our Trial
`
`Practice Guide states:
`
`An expert witness must be qualified as an expert by
`knowledge, skill, experience, training, or education to testify in
`the form of an opinion. Fed. R. Evid. 702. There is, however, no
`requirement of a perfect match between the expert’s experience
`and the relevant field. SEB S.A. v. Montgomery Ward & Co., 594
`F.3d 1360, 1373 (Fed. Cir. 2010). A person may not need to be
`a person of ordinary skill in the art in order to testify as an expert
`under Rule 702, but rather must be “qualified in the pertinent
`art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356,
`1363–64 (Fed. Cir. 2008).
`
`See Notice of Update to Office Patent Trial Practice Guide, 83 Fed. Reg.
`
`156, (Aug. 13, 2018) (text of update available at
`
`https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr
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`actice_Guide.pdf).
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`Dr. Baker testifies as to his education and qualifications and provides
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`his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary
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`stage, we cannot say that Dr. Baker’s scientific, technical, and other
`
`specialized knowledge will not be helpful in understanding the evidence.
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`See Fed. R. Evid. 702(a). On this record, we are not persuaded that
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`Dr. Baker’s testimony should be disregarded.
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`B. Claim Construction
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`We construe each claim “in accordance with the ordinary and
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`customary meaning of such claim as understood by one of ordinary skill in
`
`the art and the prosecution history pertaining to the patent.” 37 C.F.R.
`
`§ 42.100(b). Under this standard, claim terms are generally given their plain
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`and ordinary meaning as would have been understood by a person of
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`ordinary skill in the art at the time of the invention and in the context of the
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`entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
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`Cir. 2005) (en banc). Only those terms in controversy need to be construed,
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`and only to the extent necessary to resolve the controversy. See Nidec
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`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
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`(Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
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`F.3d 795, 803 (Fed. Cir. 1999)).
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`Petitioner “submits that for purposes of this proceeding no term
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`requires construction.” Pet. 25 (citing Ex. 1002 ¶ 39). Patent Owner
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`declines at this time to take a position regarding construction of the
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`challenged claims. Prelim. Resp. 55. For purposes of this Decision, based
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`on the record before us, we determine that none of the claim terms requires
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`an explicit construction.
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`C. Earliest Effective Filing Date of the ’523 Patent
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`The ’523 patent issued from U.S. Patent Application Serial
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`No. 12/601,275 (“the ’275 application”), which was filed on
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`November 22, 2009 as the national phase entry of PCT Application
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`No. PCT/US2008/064605 (“the ’605 PCT”), filed on May 22, 2008.
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`Ex. 1001, code (21), (22); Ex. 1004, 150. The ’275 application claims
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`priority to Provisional Application No. 60/940,394 (“the ’394 provisional”),
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`filed on May 25, 2007. Ex. 1001, code (60). Petitioner contends that
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`“the ’523 patent is not entitled to claim priority to May 25, 2007 or to May
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`22, 2008, because . . . the claims of the ’523 patent are not fully supported,
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`and also are not enabled, by the ’394 provisional or the ‘605 PCT
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`(collectively, ‘the priority applications’).” Pet. 5 (citing Ex. 1002 ¶¶ 40–67).
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`Instead, Petitioner contends that the earliest effective filing date for the ’523
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`patent is the November 22, 2009 filing date of the ’275 application. Id.
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`Petitioner’s contentions are based on the limitation of claim 1
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`requiring “said routing network comprising a plurality of stages y, in each
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`said sub-integrated circuit block, starting from the lowest stage of 1 to the
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`highest stage of y, where y≧1.” Pet. 7–8. Specifically, Petitioner argues
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`that the ’394 provisional and the ’605 PCT (collectively, “the priority
`
`applications”) do not provide support for an integrated circuit device that
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`includes a routing network comprising a plurality of stages y that also
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`includes the other limitations of claim 1 (such as the recited pluralities of
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`forward connecting links, backward connecting links, straight links, and
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`cross links) when there is only one stage (y=1). Id. at 8; see generally id.
`
`at 6–21.
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`“It is elementary patent law that a patent application is entitled to the
`
`benefit of the filing date of an earlier filed application only if the disclosure
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`of the earlier application provides support for the claims of the later
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`application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile
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`USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (citations omitted); see also
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`Research Corps. Techs. v. Microsoft Corp., 627 F.3d 859, 871–72 (Fed. Cir.
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`2010) (holding the later-filed application, with claims that were not limited
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`to a “blue noise mask,” was not entitled to the priority filing date of the
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`parent application, which was “limited to a blue noise mask”); ICU Med.,
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`Inc. v. Alaris Med. Sys., 558 F.3d 1368, 1377–78 (Fed. Cir. 2009) (holding
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`that “spikeless” claims “added years later during prosecution” were not
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`supported by the specification which “describe[d] only medical valves with
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`spikes”); Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158–60 (Fed. Cir. 1998)
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`(holding the generic shaped cup claims of the later-filed child application
`
`were not entitled to the filing date of the parent application that “disclosed
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`only a trapezoidal cup and nothing more”). “To satisfy the written
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`description requirement the disclosure of the prior application must convey
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`with reasonable clarity to those skilled in the art that, as of the filing date
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`sought, [the inventor] was in possession of the invention.” PowerOasis, 522
`
`F.3d at 1306 (citations omitted). The sufficiency of written description
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`support is based on “an objective inquiry into the four corners of the
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`specification from the perspective of a person of ordinary skill in the art.”
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`Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
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`(en banc).
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`Petitioner has the burden to persuade us that the ’756 PCT is prior art.
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`We make our decision on institution based on whether the information
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`presented in the Petition and the Preliminary Response “shows that there is a
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`reasonable likelihood that the petitioner would prevail with respect to at
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`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “In an
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`inter partes review, the burden of persuasion is on the petitioner to prove
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`‘unpatentability by a preponderance of the evidence,’ . . . and that burden
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`never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat’l Graphics,
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`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting 35 U.S.C. § 316(e)).
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`The burden of production can shift to the patent owner, however. See id.
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`at 1379. This shift happens where it is “warranted because the patentee
`
`affirmatively seeks to establish a proposition not relied on by the patent
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`challenger and not a necessary predicate for the unpatentability claim
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`asserted—effectively an affirmative defense.” In re Magnum Oil Tools Int’l,
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`Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Here, Petitioner asserts that the
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`’756 PCT (either alone or in combination with Wong) discloses each
`
`limitation of claims 2–7 and 11, and the ’394 provisional and the ’605 PCT
`
`do not provide written description support for those same claims, each of
`
`which either directly or indirectly depends from claim 1. Thus, Petitioner
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`has the burden of persuasion, based on all of the evidence, on both of these
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`assertions. See Dynamic Drinkware, 800 F.3d at 1378.
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`Petitioner argues that the priority applications do not disclose any sub-
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`integrated circuit blocks that have only one stage and pluralities of forward
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`and backward connecting links as required by claim 1. Pet. 14–15 (citing
`
`Ex. 1002 ¶ 56). Petitioner recognizes that the priority applications illustrate
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`a network with one stage in Figures 2A1–2A3, but argues that the only links
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`shown therein are inlet and outlet links. Id. at 9–10 (citing Ex. 1007, 7:19–
`
`21, Figs. 2A1–2A3; Ex. 1026, 4:13–15, Figs. 2A1–2A3; Ex. 1002 ¶ 50)
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`(emphasis omitted). Relying on Dr. Baker’s testimony, Petitioner argues
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`that a POSITA would have recognized that these inlet and outlet links are
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`different than “forward connecting links” and “backward connecting links,”
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`at least because claim 1 “recites ‘inlet links’ and ‘outlet links’ separately
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`from ‘forward connecting links’ and ‘backward connecting links.’” Id.
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`at 10–11 (citing Ex. 1001, 35:25–27, 35:43–49; Ex. 1002 ¶ 51). Petitioner
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`further argues that a POSITA would have understood that there cannot be a
`
`plurality of forward connecting links that connect switches in a lower stage
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`to switches in its immediate preceding stage, or a plurality of backward
`
`connecting links that connect switches in a higher stage to switches in the
`
`immediate preceding lower stage, when there is only one stage in the
`
`network. Id. at 11 (citing Ex. 1002 ¶ 52).
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`Upon review of the disclosures of the priority applications, and based
`
`on the preliminary record, we agree with Petitioner’s position that the
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`priority applications do not provide sufficient written description support for
`
`the claims. More specifically, the priority applications do not reasonably
`
`convey to a POSITA that the inventor was in possession of the claimed
`
`routing network comprising a plurality of stages y when y=1 that also meets
`
`the additional limitations of claim 1.
`
`Figure 2A3 of the priority applications is reproduced below.
`
`Figure 2A3 depicts the VLSI layout of an example network described in the
`
`provisional applications, with Block 1_2 comprising switch 1. Ex. 1007,
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`26:26–28; Ex. 1026, 22:23–25. Switch 1 consists of input switches IL1 and
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`IL2, and output switches OL1 and OL2. Ex. 1007, 26:28–29; Ex. 1026,
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`22:25–26. The priority applications state that Figure 2A3 illustrates all of
`
`the connection links. Ex. 1007, 7:19–21; Ex. 1026, 4:13–15. Dr. Baker
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`testifies that the only links shown in Figure 2A3 are the inlet and outlet
`
`links, and a POSITA “would have recognized that [there] are no forward
`
`connecting links and no backward connecting links that connect switches in
`
`higher and lower stages to each other.” Ex. 1002 ¶ 51 (emphasis omitted).
`
`Dr. Baker further testifies that a POSITA
`
`would have understood that there cannot be “a plurality of
`forward connecting links connecting from switches in a lower
`stage to switches in its immediate succeeding higher stage” if
`there is only one stage in the network. If there is only one stage,
`there is no “immediate succeeding higher stage.” Similarly, if
`there is only one stage, a person of ordinary skill in the art would
`have understood that there cannot be “a plurality of backward
`connecting links connecting from switches in a higher stage to
`switches in its immediate preceding lower stage.” If there is only
`one stage, there is no “immediate preceding lower stage.”
`
`Ex. 1002 ¶ 52 (emphases added).
`
`Patent Owner agrees that “FIG. 2A3 illustrates the 2D-layout for a
`
`multistage network for N=2 wherein there is only one block . . . comprising
`
`stage 1.” Prelim. Resp. 19; see also id. at 33 (“[I]t is clear to a POSITA that
`
`there is only one stage in the 2D-layout of a multi-stage network disclosed in
`
`the ’523 Patent when there is only one block in the network with N=2 as
`
`illustrated in FIG. 2A3.”). Patent Owner contends that a POSITA would
`
`have understood that “there is only one stage when there is only one block.”
`
`Id. at 22. Patent Owner’s arguments, as we understand them, are directed to
`
`the disclosure of a network with only one stage (y=1). Id. at 15–39. Patent
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`Owner does not address the other limitations of claim 1, and does not point
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`to any disclosures in the priority applications that describe a sub-integrated
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`circuit block with only one stage that also comprises pluralities of forward
`
`connecting links and backward connecting links as required by claim 1.
`
`On the present record, we agree with Petitioner’s postition that the
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`“said routing network comprising a plurality of stages y, in each said sub-
`
`integrated circuit block, starting from the lowest stage of 1 to the highest
`
`stage of y, where y≧1” limitation of claim 1 lacks written description
`
`support in the priority applications when y=1. Accordingly, we determine
`
`that Petitioner has established a reasonable likelihood that it would prevail in
`
`showing that the challenged claims in the ’523 patent are not entitled to the
`
`benefit of the May 25, 2007 filing date of the ’394 provisional, or the May
`
`22, 2008 filing date of the ’605 PCT.
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`D. Anticipation by the ’756 PCT
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`Petitioner contends that the subject matter of claims 2–7 of the ’523
`
`patent is unpatentable under 35 U.S.C. § 102(b) as anticipated by the ’756
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`PCT. Pet. 27–82. Petitioner relies on the Baker Declaration in support of its
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`contentions. Id.
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`The ’756 PCT was published on September 12, 2008. Ex. 1009,
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`code (43). Petitioner’s challenge largely relies on the disclosure of the ’394
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`provisional, which is incorporated by reference in its entirety into the ’756
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`PCT. Pet. 20–21; Ex. 1009, 3:14–17. Petitioner argues that the ’394
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`provisional became publicly available as of the date the ’756 PCT was
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`published. Pet. 22. We agree. 37 C.F.R. § 1.14(a)(1)(vi) provides, in
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`relevant part, that if an unpublished application is incorporated by reference
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`in an international publication of an international application (such as
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`the ’756 PCT), a copy of “the unpublished pending application may be
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`provided to any person, upon written request and payment of the appropriate
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`fee.” Accordingly, once the ’756 PCT published, the ’394 provisional that is
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`incorporated by reference therein became open to the public for inspection.
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`The ’394 provisional therefore is prior art by virtue of the fact that it became
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`publicly available due to its incorporation into the ’756 PCT, and in addition
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`is prior art because it is part of the ’756 PCT itself. For purposes of this
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`Decision, we treat the disclosure of the ’394 provisional as prior art entitled
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`to an effective date of September 12, 2008, when the ’756 PCT published.1
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`Petitioner asserts, with supporting testimony from Dr. Baker, that
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`the ’756 PCT, by way of its incorporation of the ’394 provisional, discloses
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`all of the elements of claim 2, and of independent claim 1 from which it
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`depends. Pet. 27–73.2 For example, Petitioner contends that the ’394
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`provisional discloses “said routing network comprising a plurality of stages
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`y, in each said sub-integrated circuit block, starting from the lowest stage of
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`1 to the highest stage of y, where y≧1” as recited in claim 1 because “it
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`discloses a network with a number of stages (y) equal to five, and 5 ≥1.”
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`
`1 Patent Owner contends that, because 37 C.F.R. § 1.14(a)(1)(vi) also
`provides that “[t]he Office will not provide access to the paper file of a
`pending application, except as provided in paragraph (c) or (i) of this
`section,” the ’394 provisional was not available to the public when the ’756
`PCT published. Prelim. Resp. 40–44. This sentence, however, is directed to
`the entire file history of the unpublished application. It does not preclude
`access to the application alone.
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`2 Claim 1 is not challenged in the Petition, but is discussed therein because
`the challenged claims ultimately depend from claim 1. Pet. 1, n.1.
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`Pet. 36 (citing Ex. 1002 ¶ 92). Petitioner uses an annotated version of
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`Figure 1B of the ’394 provisional, shown below, to depict its contentions.
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`
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`Figure 1B is a diagram of a symmetrical folded multi-link routing network,
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`with Petitioner’s annotations highlighting the five stages in the top-most
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`sub-integrated circuit block. Id. (citing Ex. 1026, 2:12–14; Ex. 1002 ¶ 92).
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`Petitioner further contends that the ’756 PCT, by way of its
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`incorporation by reference of the ’394 provisional, discloses an integrated
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`circuit device where the stages and switches in each stage of the two-
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`dimensional grid of the sub-integrated circuit block are scalable by any
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`power of two, and with each multiplication by two, one more stage of
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`switches is added and the cross links between the one more stage of switches
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`are connected in hypercube format, as required by claim 2. Pet. 69–73
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`(citing Ex. 1002 ¶¶ 137–140). Petitioner contends that “[a] POSITA would
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`have understood that the ’394 provisional application’s disclosure of the
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`possible extension of the network of figure 1C ‘for any arbitrarily large’
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`network . . . discloses the scalability of the network by any power of two.”
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`Id. at 70 (citing Ex. 1026, 20:14; Ex. 1002 ¶ 138). Therefore, according to
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`Petitioner, “the ’394 provisional application discloses that the network can
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`be expanded by any power of two by adding additional stages and switches
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`to each of the sub-integrated circuit block, where the layout of the blocks
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`continues in a two-dimensional grid.” Id. at 72 (citing Ex. 1026, 20:20–28,
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`Figs. 1C, 1H; Ex. 1002 ¶ 140).
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`Although Patent Owner generally states that “for each proposed
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`ground, at least one claim element is missing from the references” (Prelim.
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`Resp. 2), Patent Owner does not present arguments in the Preliminary
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`Response addressing the specific merits of Petitioner’s contentions. See
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`generally Prelim. Resp. Having reviewed all of Petitioner’s assertions
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`regarding claims 1 and 2, as well as the supporting evidence, we determine
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`on this record that Petitioner has established a reasonable likelihood of
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`establishing that claim 2 is anticipated by the ’756 PCT by way of its
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`incorporation of the ’394 provisional. Pet. 27–73. We have also reviewed
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`Petitioner’s arguments and evidence with respect to claims 3–7, which
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`depend, directly or indirectly, from claim 2. Id. at 73–82. Based on the
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`record before us, we also find Petitioner’s arguments and evidence are
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`sufficient to show a reasonable likelihood that Petitioner would prevail in
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`proving the unpatentability of claim 3–7.
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`E. Obviousness over the ’756 PCT and Wong
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`Petitioner contends that the subject matter of claim 11 of the ’523
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`patent would have been obvious over the combined teachings of the ’756
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`PCT and Wong. Pet. 83–90. Petitioner relies on the Baker Declaration in
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`support of its contentions. Id.
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`At this stage of the proceeding, Patent Owner does not offer any
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`arguments with respect to the portions of the cited references that
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`purportedly teach the limitations of claim 11. See generally Prelim. Resp.
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`Patent Owner argues that Petitioner “failed to address known evidence of
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`secondary considerations regarding” claim 11. Prelim. Resp. 50. Patent
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`Owner argues that “[t]he Board has repeatedly ‘cautioned Petitioners in prior
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`proceedings that petitions may be denied if they do not address known
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`evidence of secondary considerations.’” Id. (citing Stryker Corp. v. KFx
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`Medical, LLC, IPR2019-00817, Paper 10 (PTAB Sept. 16, 2019)). These
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`prior proceedings are distinguishable, however, because in each case,
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`evidence of objective indicia of non-obvious was considered in a prior
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`proceeding of which Petitioner was aware. See, e.g., Stryker, IPR2019-
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`00817, Paper 10 (finding that Petitioner’s failure to address objective indicia
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`evidence from a previous litigation weighs in favor of denying institution);
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`Robert Bosch Tool Corp. v. SD3 LLC, IPR2016-01751, Paper 15 (PTAB
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`Mar. 22, 2017) (denying institution for failure to address objective indicia
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`presented during an ITC proceedings); Coalition for Affordable Drugs V
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`LLC v. Hoffman-LaRoche, Inc., IPR2015-01792, Paper 14 (PTAB Mar. 11,
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`2016) (denying institution for failure to address objective indicia considered
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`by the Examiner during the original prosecution). Moreover, although
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`Patent Owner argues that Petitioner is “well aware of the objective evidence
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`of non-obviousness,” Patent Owner does not provide evidence that
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`demonstrates Petitioner had such knowledge. Prelim. Resp. 50.
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` To the extent that Patent Owner is arguing that objective indicia
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`supports the non-obviousness of the claims of the ’523 patent, however, we
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`note that the issue of objective indicia of non-obviousness is highly fact-
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`specific. At th