Paper No. 22
`May 11, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`INTEL CORPORATION,
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`Petitioner,
`v.
`FG SRC LLC,
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`Patent Owner.
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`IPR2020-01449
`Patent No. 7,149,867
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`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL INFORMATION
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`May 11, 2021
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`INTEL CORPORATION,
`
`Petitioner,
`v.
`FG SRC LLC,
`
`Patent Owner.
`
`
`
`
`
`
`
`IPR2020-01449
`Patent No. 7,149,867
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`
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`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL INFORMATION
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`LIST OF EXHIBITS
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`2004
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`2005
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`2006
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`2007
`2008
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`Exhibit No. Descriptions
`Declaration of Dr. Vojin Oklobdzija
`2001
`Cray, Britannica Online Encyclopedia
`2002
`Declaration of Brandon Freeman dated 10/25/18
`2003
`SRC Labs LLC and Saint Regis Mohawk Tribe v. Microsoft
`Corporation, No. 2:18-cv-00321-JLR, Dkt. 125 (W.D. Wash. Oct.
`25, 2018)
`Plaintiff’s Original Complaint For Patent Infringement in FG SRC
`LLC v. Intel Corp., No. 6:20-cv-00315-ADA (W.D. Texas), filed
`April 24, 2020
`Plaintiff’s First Amended Complaint For Patent Infringement in
`FG SRC LLC v. Intel Corp., No. 6:20-cv-00315-ADA (W.D.
`Texas), filed April 24, 2020
`Declaration of Mark Wollgast dated 09/10/18
`Xilinx, Inc. v. Saint Regis Mohawk Tribe, IPR2018-0195
`COTS Journal, UAVs Lead Push for Embedded Supercomputing
`Press Release: SRC Computers Chosen by Lockheed Martin for
`U.S. Army Program
`Declaration of Henning Schmidt
`Declaration of Henning Schmidt, Exhibit A, IEEE Xplore:
`Advanced Search
`Declaration of Henning Schmidt, Exhibit B, IEEE Xplore:
`Advanced Search Results
`Declaration Of Ryan Kastner, Ph.D. In Support Of FG SRC
`LLC’s Opening Claim Construction Brief in FG SRC LLC v. Intel
`Corp., No. 6:20-cv-00315-ADA (W.D. Texas), filed April 24,
`2020
`Peter McMahon, High Performance Reconfigurable Computing for
`Science and Engineering Applications (Thesis Oct. 2006).
`Caliga, Delivering Acceleration: The Potential for Increased HPC
`Application Performance Using Reconfigurable Logic
`D. A. Buell, D. Caliga, J. P. Davis, G. Quan, “The DARPA
`boolean equation benchmark on a reconfigurable computer,”
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`2009
`2009-1
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`2009-2
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`2010
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`2011
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`2012
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`2013
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`i
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`2014
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`2015
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`2016
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`2017
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`2018
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`2019
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`2020
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`2021
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`2022
`2023
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`2024
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`Exhibit No. Descriptions
`Proceedings of the Military and Aerospace Programmable Logic
`Devices (MAPLD) Conference, Washington, DC, 8-10 September
`2004
`El-Araby, The Promise of High-Performance Reconfigurable
`Computing
`FG SRC LLC’s Opening Claim Construction Brief in FG SRC
`LLC v. Intel Corp., No. 6:20-cv-00315-ADA (W.D. Texas),
`filed April 24, 2020
`Kerr Machine Co. d/b/a Kerr Pumps v. Vulcan Industrial
`Holdings, LLC, No. 6:20-cv-00200, Text Order dated Aug. 2, 2020
`(W.D. Tex.)
`MultiMedia Content Mgmt LLC v. Dish Network L.L.C., No. 6:18-
`cv-00207, Dkt. 73 (W.D. Tex.)
`Solas OLED v. Dell Techs. Inc., No. 6:19-cv-00514, Text Order
`dated June 23, 2020
`Kerr Machine Co. v. Vulcan Indus. Holdings, LLC, No. 6:20-cv-
`200, Dkt. 28 (W.D. Tex. July 31, 2020)
`Kerr Machine Co. v. Vulcan Indus. Holdings, LLC, No. 6:20-cv-
`200, Dkt. 24 (W.D. Tex. June 14, 2020)
`Kerr Machine Co. v. Vulcan Indus. Holdings, LLC, No. 6:20-cv-
`200, Dkt. 12 (W.D. Tex., June 14, 2020)
`Email from J. Yi to Counsel (Aug. 3, 2020)
`FG SRC LLC v. Intel Corp., No. 1:20-cv-00834, Dkt. 48 (W.D.
`Tex. Nov. 23, 2020) (Amended Schedule)
`Continental Intermodal Group - Trucking LLC v. Sand Revolution
`LLC, No. 7:18-cv-00147, Text Order dated July 22, 2020 (W.D.
`Tex.)
`Solas OLED v. Dell Techs. Inc., No. 6:19-cv-00515, Text Order
`dated Jun. 23, 2020
`2019-07-11 - DirectStream MSFT - Huppenthal Declaration
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`2025
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`2026
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`ii
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`Pursuant to the Board’s April 14, 2021 Order (Paper 18), Patent Owner hereby
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`submits its opposition to Petitioner’s Motion to Submit Supplemental Information
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`Pursuant to 37 C.F.R. § 42.123(a) (Paper 21).
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`I.
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`PETITIONER MISCHARACTERIZES THE CONTROLLING
`LAW
`Petitioner suggests that the only consideration for a request under 37 C.F.R.
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`§ 42.123(a) is whether the submission is timely and relevant. Paper 21 at 12-13. The
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`Federal Circuit, however, has flatly rejected that position in a precedential opinion:
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`“Requiring admission of supplemental information so long as it was timely
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`submitted and relevant to the IPR would cut against this mandate [to assure efficient
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`and timely administration of IPRs] and alter the intended purpose of IPR
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`proceedings.” See Redline Detection, LLC, v. Star Environtech, Inc., 811 F.3d 435,
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`443-445 (Fed. Cir. 2015). Indeed, concerns such as a petitioner intentionally holding
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`back evidence, and promoting the goal of having petitioners “set forth their best
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`grounds of unpatentability and supporting evidence in their petitions” must be taken
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`into account. Id. It is a question of fundamental fairness. Here, Petitioner does not
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`even try to prove the evidence was unavailable, and even a cursory review
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`demonstrates it is comprised of opinions and evidence that was indisputably
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`available to a diligent Petitioner.
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`The supplemental information must, of course, be relevant. 37 CFR
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`§ 42.123(a). Petitioner ignores, however, that information that does nothing more
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`1
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`than demonstrate circumstances after the applicable date is not relevant. Clearone,
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`Inc. v. Shure Acquisition Holdings, Inc., IPR2019-00683, Paper 32 at 5 (PTAB Nov.
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`6, 2019).
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`Moreover, the information must not merely substitute new evidence to bolster
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`deficiencies in the timely presented evidence. “Permitting a petitioner to supplement
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`the record in a manner that effectively changes the evidence originally presented in
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`a petition is not in accord with the statutory requirement that the petition identify
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`‘with particularity … the evidence that supports the grounds for the challenge to
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`each claim.’” Yamaha Golf Car Co. v. Club Car, LLC, IPR2017-02141, 2018 WL
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`6428205 at *3 (PTAB Dec. 4, 2018). Thus, even where the request is timely and the
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`information is relevant, voluminous additional submissions and declarations that
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`alter positions are properly rejected. Id.
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`All of these factors must be considered, and here their consideration requires
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`denial.
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`II.
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`PETITIONER MISCHARACTERIZES THE SUPPLEMENTAL
`EVIDENCE
`To properly adjudicate Petitioner’s motion, its mischaracterizations of its
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`proposed supplemental evidence must first be corrected.
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`A. Exhibit 1027: MacPherson Declaration
`Petitioner proffers Mr. MacPherson’s testimony to support its allegations that
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`the Zhang, Gupta, and Chien references on which it bases its petition were
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`electronically available (through IEEE Xplore) and distributed at conferences.
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`Petitioner asserts that Mr. MacPherson’s testimony shows “the date of publication
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`and additional publication data” of the asserted references “as populated by metadata
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`created and maintained as part of IEEE’s standard business practices.” Paper 21 at
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`4. Petitioner also claims that Mr. MacPherson “confirms” IEEE’s practice of making
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`copies of conference papers available “no later than the last day of a conference.”
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`Id. These characterizations grossly misrepresent the actual testimony.
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`Mr. MacPherson only testifies that, as a custodian of records, he was able to
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`identify and retrieve the Zhang, Gupta, and Chien references as of March 19, 2021.
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`Ex. 1027 at 2. That, of course, is almost 18 years after the priority date. Mr.
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`MacPherson offers no indication of the extent the references were available in 2003,
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`such as how they were indexed for searching. Mr. MacPherson also does not state
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`how long he has been with IEEE. There is, thus, no evidence that he has personal
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`knowledge as to how the Xplore database worked in 2003, or how papers were
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`distributed in 1997-2000. He, therefore, does not testify from personal knowledge
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`that the references were actually distributed as alleged by Petitioner. See Ex. 1027.
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`Finally, Mr. MacPherson does not state that he was previously unable to
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`provide his testimony. It must, therefore, be presumed that Mr. MacPherson’s
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`testimony could have been timely submitted by Petitioner. It simply was not.
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`3
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`B. Exhibit 1028: McCarrier Declaration
`Exhibit 1028 is a new declaration attaching new copies of two references,
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`Zhang and Gupta. According to Petitioner, Ms. McCarrier’s declaration purportedly
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`“support[s] the chain-of-custody of additional references that were retrieved at Mr.
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`Munford’s direction.” Paper 21 at 5. Petitioner is again less than forthcoming.
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`Ms. McCarrier, an employee of Petitioner’s counsel, testifies that copies of
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`the Zhang and Gupta references (but not Chien) were retrieved by unnamed staff at
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`other libraries and sent to her “as a pdf.” Ex. 1028 at 3. This was done because “the
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`safety protocols relating to COVID-19 continue[d]” at the time of the declaration.
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`Id. at 2. None of those protocols were produced and no witness from the libraries
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`offers testimony that such protocols exist or existed.
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`As an employee of Petitioner’s counsel, Ms. McCarrier was presumably
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`available to assist with retrieving additional copies of the references at the time
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`Petitioner’s petition was filed. In addition, as the express language of Ms.
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`McCarrier’s declaration indicates, the COVID-19 safety protocols were in place at
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`the time of the petition (i.e., they “continue”). Therefore, these additional copies of
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`the references being submitted now must have been equally available months ago.
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`Moreover, while the copies Ms. McCarrier received were apparently in the library’s
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`possession as of March 31, 2021, there is no indication of when either library first
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`received the reference or made it available, which is the key inquiry. See id. at 2-3.
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`C. Exhibit 1029: Schnell Declaration
`Mr. Schnell’s declaration is another new declaration that includes new copies
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`of the Gupta and Chien references.1 As with the other new declarations, Petitioner
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`seeks to obfuscate important points regarding Mr. Schnell’s declaration.
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`Like Ms. McCarrier, Mr. Schnell purportedly “support[s] the chain-of-
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`custody of additional references that were retrieved at Mr. Munford’s direction.”
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`Paper 21 at 5. Mr. Schnell, also an employee of Petitioner’s counsel, testifies that
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`he retrieved a copy of the Gupta and Chien (but not Zhang) references from the
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`University of Texas library. Ex. 1029 at 2. Mr. Schnell does not indicate when he
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`retrieved the copies being submitted with his declaration and provides no suggestion
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`that he could not have obtained the copies for submission with the petition. Id.
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`Moreover, the earliest date stamp on the Gupta reference is June 3, 2004, a year after
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`the June 18, 2003 priority date. Compare Ex. 1029 at 6 with Paper 1 at 13. The “Best
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`Evidence,” the document itself, indicates the Gupta reference is not prior art. Fed.
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`R. Evid. 1002-1003.
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`D. Exhibit 1030: Gupta Second Declaration
`Petitioner asserts that in his Second Declaration, Dr. Gupta “further confirms,
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`based on his personal knowledge, that each article [Zhang, Gupta, and Chien] was
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`1 The new copies are included as “appendices” to the declaration. The “appendices”
`that Petitioner’s witnesses attach to their declarations are actually additional
`exhibits, albeit not numbered according to the Board’s standard practice.
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`included in the IEEE printed publication that was distributed to attendees of each
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`respective conference, and that each article was subsequently made available online
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`and in libraries.” Paper 21 at 5. Petitioner’s characterization of Dr. Gupta’s new
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`testimony as mere “further confirmation” is a disingenuous attempt to disguise the
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`substantial alteration of his testimony.
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`First, the Second Gupta Declaration (Ex. 1030) expands Dr. Gupta’s
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`testimony from 10 pages consisting of 26 paragraphs and 2 exhibits to an additional
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`67 pages consisting of 13 new paragraphs and 4 new exhibits. Moreover, in his
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`original declaration, Dr. Gupta stated only that he “believes” the references were
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`distributed at the respective conference based on his general experience in attending
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`conferences and the “general practice” in the scientific industry, not that he has first-
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`hand knowledge about the actual distribution of the references. Ex. 1010, ¶¶ 18-19,
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`21-22, 24-25. He likewise never stated that he obtained any copies from the IEEE
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`Xplore website or that he was familiar with how the website is structured or operates.
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`Id., ¶¶ 19, 22, 25. Patent Owner has expressly raised all the foregoing issues with
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`Dr. Gupta’s testimony. See Paper 16.
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`Now, even though it is more remote in time, Dr. Gupta states in his Second
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`Declaration a miraculous clarification to his memory, and “confirm[s] based on [his]
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`personal knowledge” that each reference was “included in the IEEE printed
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`publication that was distributed to the conference attendees during the conference.”
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`Ex. 1030, ¶¶ 5, 8, 11. For the Chien reference, Dr. Gupta now states definitively that
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`he “received a printed copy of … published papers no later than the last day” of the
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`conference at which the Chien reference was presented. These affirmative
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`statements are distinctly different than the equivocal statements of “belief” to which
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`Dr. Gupta originally testified.
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`Regarding the Zhang and Gupta references, Dr. Gupta can only state in his
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`Second Declaration that they were part of conference materials “that were typically
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`printed in advance so they could be distributed at the conference, as it would have
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`been impractical to mail the conference presentations to all the conference
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`participants.” Id., ¶¶ 8, 11. Dr. Gupta does not state that he has actual knowledge of
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`distribution of the references or that he is aware of what the IEEE actually did in
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`1996 and 1997, the years of the relevant conferences. See id., ¶¶ 7-11.
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`E. Exhibit 1031: Munford Second Declaration
`Mr. Munford’s original declaration consisted of 46 paragraphs, his CV, and 9
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`appendices for a total of 60 pages. See Ex. 1012. Mr. Munford’s Second Declaration
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`consists of 90 paragraphs, his CV, and 34 appendices for a total of 293 pages. See
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`Ex. 1031. Petitioner seeks to downplay the substantial enlargement of Mr.
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`Munford’s testimony, see Paper 21 at 10, but under any metric, Mr. Munford’s
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`Second Declaration is many times larger, with approximately 5 times more exhibits
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`than his original declaration.
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`7
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`Petitioner misrepresents Mr. Munford’s Second Declaration in other ways as
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`well. Petitioner asserts that Mr. Munford “reviewed library copies of each reference
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`that were previously unavailable due to COVID-19 related library restrictions.”
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`Paper 21 at 5. However, in his Second Declaration, Mr. Munford reiterates that he
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`has been dealing with the same COVID-19 restrictions, namely his inability to visit
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`libraries in person and obtain a physical copy of the references, that were in effect at
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`the time of his initial declaration. Ex. 1031 at 8. He, therefore, “identified materials
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`at other libraries throughout the country and instructed individuals at [Petitioner’s
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`counsel] to retrieve those documents for [his] review.” Id. Because the same
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`COVID-19 restrictions have been in effect since before his first declaration, the
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`additional copies of the references Mr. Munford now submits could have been
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`retrieved based on his instruction months ago before the petition was filed.
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`Petitioner represents that much of Mr. Munford’s Second Declaration is “prior
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`testimony as context.” Paper 21 at 10. That testimony is subject to the same material
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`infirmities Patent Owner identified and to which Petitioner seeks to respond with its
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`supplemental submission. See Paper 16. For example, Mr. Munford still cannot
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`confirm when the references were shelved, indexed, and available for distribution at
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`the various libraries he cites. The new testimony contains substantial adoption and
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`restatement of the declaration testimony of Mr. MacPherson, Ms. McCarrier, Mr.
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`Schnell, and the Gupta Second Declaration. Ex. 1031 at 9-10, 15-16 and 20-21. Mr.
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`Munford’s additional testimony is, therefore, subject to the same limitations and
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`infirmities as those other declarations and their accompanying exhibits.
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`RUNS
`SUBMISSION
`SUPPLEMENTAL
`III. PETITIONER’S
`COUNTER TO THE JUST, SPEEDY, AND INEXPENSIVE
`RESOLUTION OF THESE PROCEEDINGS
`Other than its skewed representation of the substance of its proposed
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`submission, Petitioner’s brief is mainly devoted to the argument that its motion
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`should be granted because of the timing of its request. See Paper 21 at 2, 6-9, 11-14.
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`The form-over-substance approach
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`that Petitioner advocates, however,
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`is
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`subordinate to the concern about guarding against a Petitioner taking a “wait-and-
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`see” approach until it has the advantage of seeing Patent Owner’s and the Board’s
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`positions regarding the veracity of its evidence.
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`Two cases illustrate the point. In Redline Detection, the petitioner moved to
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`submit four pieces of evidence as supplemental information, which the Board
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`denied. 811 F.3d at 441. The proposed supplemental information included was a 60-
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`page expert declaration and two patents that had not been relied on in the petition.
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`Id. at 443. The petitioner conceded that, as a matter of its convenience (i.e., cost
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`savings), it had not submitted the extensive declaration and patents before. Id. The
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`Federal Circuit found that the Board properly denied petitioner’s motion because
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`rather than a short supplementation, the proposed supplement was a new declaration
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`being submitted de novo. Id. at 447-448.2
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`In Yamaha Golf, the petitioner sought to submit as supplemental information
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`multiple expert declarations and multiple prior art references “reflecting the state of
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`the art” as of the priority date. 2018 WL 6428205 at *1. The proposed submission
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`included a 256-page declaration with 70 pages of new testimony that petitioner
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`proposed to substitute for a 183-page declaration submitted with the petition. Id. at
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`*3. The Board, following and applying Redline Detection, denied petitioner’s
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`motion because it found that the voluminous new filings “amounts to a substantial
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`change” in the original showing in the petition. Id. As the Board noted, “the sheer
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`volume of new evidence that [petitioner] proposes to submit renders the request
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`immediately suspect. … And, perhaps most egregious, the expert goes from relying
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`on eleven (11) documents in support of his original testimony to relying on twenty-
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`nine (29) documents to support his new testimony.” Id.
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`These decisions are directly on point here. As illustrated below, Petitioner is
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`attempting to bloat the record with voluminous new filings and exhibits that
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`undeniably could have been produced earlier and/or are irrelevant, and is doing so
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`only after having studied the Board’s and Patent Owner’s positions.
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`2 Redline Detection also distinguishes the very same authority relied on by Petitioner
`here. Compare id. (distinguishing Pacific Market Int’l, LLC v. Ignite USA, LLC,
`IPR2014-00561, Paper 23 (PTAB Dec. 2, 2014)) with Paper 21 at 11-12.
`10
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`A. The MacPherson Declaration Is Irrelevant And Untimely
`The MacPherson Declaration (Ex. 1027) does nothing more than demonstrate
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`that IEEE’s custodian of records can locate the Zhang, Gupta, and Chien references
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`in 2021. Mr. MacPherson does not state that he has any personal knowledge as to
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`the facts and circumstances regarding the references as of June 18, 2003, the priority
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`date. See Part II(A), supra. His testimony as to the availability of these references
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`18 years after the fact is irrelevant. Clearone, IPR2019-00683, Paper 32 at 5.
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`Moreover, the exhibits Petitioner now seeks to introduce through Mr. MacPherson
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`were available well before the petition was filed and Petitioner has not explained
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`why the declaration and exhibits were not obtained earlier. See Part II(A), supra.
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`They are, therefore, untimely and prejudicial.
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`Supplemental submission of Exhibit 1027 should, therefore, be denied. See
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`Clearone, IPR2019-00683, Paper 32 at 8; Redline Detection, 811 F.3d at 443-449.
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`B. The Second Gupta Declaration Changes The Evidence And Is
`Otherwise Irrelevant And Untimely
`The Second Gupta Declaration (Ex. 1030) expands Dr. Gupta’s testimony
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`from 10 pages consisting of 26 paragraphs and 2 exhibits to an additional 67 pages
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`consisting of 13 paragraphs and 4 exhibits. See Part II(D), supra. This is at least
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`double what was submitted with the petition. Moreover, Dr. Gupta now claims to be
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`testifying based on actual first-hand knowledge, rather than the speculative “beliefs”
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`on which he based his original testimony. See id. This sudden clarity comes, of
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`course, only after both the Board and Patent Owner pointed out the speculative
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`nature of his testimony. This about-face is the precise change in evidence that is
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`prohibited. See Yamaha Golf, 2018 WL 6428205 at *3. The Rule of Law and due
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`process do not allow witnesses to be coached to “say what they need to say” in sham
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`declarations crafted to overcome objections and deficiencies pointed out by
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`opponents. See Brand Management, Inc. v. Menard, 1998 WL 15241 n. 5 (Fed. Cir.
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`1998) (sham declarations should be prevented).
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`Regarding the Zhang and Gupta references, the Second Gupta Declaration
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`does nothing more than reproduce copies as they exist in 2021, without any
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`indication of personal knowledge about their availability in 2003. This testimony is,
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`therefore, irrelevant. Clearone, IPR2019-00683, Paper 32 at 5.
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`In addition to changing the evidence, Dr. Gupta’s new testimony regarding
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`the Chien reference could have been presented earlier. He claims to be presenting a
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`copy of the reference from his personal files but provides no explanation as to why
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`that could not have been submitted with the petition. See Part II(D), supra.
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`Supplemental submission of Exhibit 1030 should, therefore, be denied.
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`Clearone, IPR2019-00683, Paper 32 at 8; Redline Detection, 811 F.3d at 443-449.
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`C. The Second Munford Declaration Changes The Evidence And Is
`Otherwise Irrelevant And Untimely
`The Second Munford Declaration (Ex. 1031) suffers from the same issues as
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`the Second Gupta Declaration and the other declarations on which it depends. In his
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`Second Declaration, Mr. Munford almost doubles the volume of his testimony,
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`increases the number of attached exhibits almost 5-fold, and presents a total of over
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`3 times the number of pages as his original declaration. See Part II(E), supra. This
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`represents a substantial change in his testimony. Indeed, the sheer volume of the
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`increase, including a reliance on 5 times more exhibits, is “immediately suspect.”
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`Yamaha Golf, 2018 WL 6428205 at *3.
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`Moreover, Mr. Munford’s supplement is not relevant because, like the
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`declarations on which he relies, all that he has demonstrated is the availability of the
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`Zhang, Gupta, and Chien references in 2021. See Part II(E), supra. That is well after
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`the pertinent date and is, thus, irrelevant. Clearone, IPR2019-00683, Paper 32 at 5.
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`Finally, Mr. Munford provides no logical explanation why this voluminous
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`testimony and exhibits could not have been submitted earlier. He could have
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`requested assistance from counsel’s employees earlier because the COVID-19
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`circumstances at the time of his original declaration were, according to his new
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`testimony, the same as they were on March 31, 2021 when he signed the Second
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`Declaration. See id. at 8.
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`Supplemental submission of Exhibit 1031 should, therefore, be denied.
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`Yamaha Golf, 2018 WL 6428205 at *3; Redline Detection, 811 F.3d at 443-449.
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`13
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`D. The McCarrier And Schnell Declarations Are Irrelevant And
`Untimely
`The McCarrier and Schnell Declarations (Ex. 1028-1029), like the
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`MacPherson Declaration, establish no more than the availability of the Zhang,
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`Gupta, and Chien references in certain libraries in 2021. See Part II(B)-(C), supra.
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`Thus, like Mr. MacPherson, the after-the-fact testimony presented by these
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`witnesses is irrelevant. Clearone, IPR2019-00683, Paper 32 at 5.
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`There is also no indication as to why Ms. McCarrier and Mr. Schnell, both of
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`whom are employees of Petitioner’s counsel, could not have presented their
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`testimony earlier. The COVID-19 circumstances cited by Ms. McCarrier were the
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`same at the time of her declaration as existed at the time of the petition, and Mr.
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`Schnell is entirely silent as to when he obtained the copies of the Gupta and Chien
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`references or why he could not have obtained them earlier. See Part II(B)-(C), supra.
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`Supplemental Exhibits 1028 and 1029 should therefore be denied. Clearone,
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`IPR2019-00683, Paper 32 at 8; Redline Detection, 811 F.3d at 443-449.
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`E. Allowing Submission Will Prejudice Patent Owner And The
`Proceedings
`Petitioner is dismissive of the prejudice the supplemental submission of the
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`irrelevant and untimely information will be to Patent Owner and these proceedings.
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`See Paper 21 at 9-14. Petitioner’s position smacks of the precise arrogance and
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`prohibited behavior the Rules are designed to guard against.
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`14
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`Efficiency includes not only time but costs. Petitioner is proposing to double
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`or triple the testimony of Dr. Gupta and Mr. Munford alone. Moreover, Petitioner is
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`seeking to bloat the record with multiple additional 3 copies of the references, and
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`an additional 2 copies of the Chien reference. Notably, these additional copies
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`introduce inconsistencies, such as the 2004 version of the Gupta reference attached
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`to the Schnell Declaration. See Part II(C), supra. It is naive to suggest that the
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`needless multiplication of exhibits will not sow confusion and, thus, increase costs
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`throughout the life of these proceedings, including appeal. These facts must be
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`balanced against the extent to which the supplemental information will inform,
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`rather than obfuscate, the record. As detailed above, Petitioner’s proposed
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`supplemental information is consistently irrelevant to the circumstances in or around
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`the pertinent date, merely duplicative, and inexplicably untimely.
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`Allowing the record to be supplemented with such information will be
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`counter-productive to the efficient administration of these proceedings. Petitioner’s
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`motion should, therefore, be denied. Yamaha Golf, 2018 WL 6428205 at *3.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner’s Motion to Submit Supplemental
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`Information should be denied.
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`15
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`Respectfully submitted,
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`/s/ Jay P. Kesan
`
`DiMuroGinsberg, PC-
`DGKeyIP Group
`Jay P. Kesan, Reg. No. 37,488
`Cecil E. Key (admitted pro hac vice)
`Henning Schmidt (admission pro hac
`vice pending)
`1750 Tyson’s Blvd., Suite 1500
`Tysons Corner, VA 22102
`Telephone: 703-289-5118
`jkesan@dimuro.com
`ckey@dimuro.com
`hschmidt@dimuro.com
`
`Ari B. Rafilson
`arafilson@shorechan.com
`SHORE CHAN LLP
`901 Main Street, Suite 3300
`Dallas, Texas 75202
`Telephone: 214-593-9110
`Facsimile: 214-593-9111
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`16
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.25(b), the undersigned certifies
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`that on May 12, 2021, a complete copy of Patent Owner’s Opposition to
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`Petitioner’s Motion to Submit Supplemental Information Pursuant to 37
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`C.F.R. § 42.123(a) was filed electronically through the Patent Trial and Appeal
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`Board’s PTABE2E System and provided, via electronic service, to the Petitioner
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`by serving the correspondence address of record as follows:
`
`Brian C. Nash, brian.nash@pillsburylaw.com
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`401 Congress Avenue, Ste. 1700
`Austin, Texas 78701
`
`Evan Finkel, evan.finkel@pillsburylaw.com
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`725 South Figueroa Street, Ste. 2800
`Los Angeles, CA 90017-5406
`
`Matthew W. Hindman, matthew.hindman@pillsburylaw.com
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`2550 Hanover Street
`Palo Alto, CA 94304
`
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`/s/ Jay P. Kesan
`Jay P. Kesan
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`17
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