Trials@uspto.gov
`571-272-7822
`
`Paper 33
`Date: June 25, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTEL CORPORATION,
`Petitioner,
`v.
`FG SRC LLC,
`Patent Owner.
`
`Case No. IPR2020-01449
`Patent 7,149,867
`
`
`
`
`
`
`
`
`
`Before KALYAN K. DESHPANDE, GREGG I. ANDERSON, and
`KARA L. SZPONDOWSKI, Administrative Patent Judges.
`SZPONDOWSKI, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 33
`Date: June 25, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTEL CORPORATION,
`Petitioner,
`v.
`FG SRC LLC,
`Patent Owner.
`
`Case No. IPR2020-01449
`Patent 7,149,867
`
`
`
`
`
`
`
`
`
`Before KALYAN K. DESHPANDE, GREGG I. ANDERSON, and
`KARA L. SZPONDOWSKI, Administrative Patent Judges.
`SZPONDOWSKI, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01449
`Patent 7,149,867
`
`
`On June 18, 2021, Patent Owner contacted the Board by email to
`request authorization “to file a Motion for Additional Discovery pursuant to
`37 C.F.R. § 42.52.” Ex. 3006. Specifically Patent Owner seeks
`authorization to file a motion compelling testimony of Mr. Zhang, the
`primary author of one of the references asserted1 in this proceeding (“the
`Zhang reference”), and to obtain a subpoena for Mr. Zhang’s testimony
`pursuant to 35 U.S.C. § 24. Id.2 Patent Owner also requested waiver of the
`requirement to file a formal motion “in order to obtain the requested
`discovery in time for the Patent Owner Response or Patent Owner Sur-
`reply.” Id. Patent Owner’s Response is due July 2, 2021. Paper 32
`(“Corrected Joint Stipulation to Revise Scheduling Order”).
`On June 22, 2021, a conference call with counsel for the parties was
`held with Judges Szpondowski, Deshpande, and Anderson. On the call,
`Patent Owner stated that it requested Mr. Zhang’s testimony as to factual
`questions regarding a simulation described in the Zhang reference. Patent
`Owner requested authorization to file a motion for additional discovery in
`order to obtain a subpoena from the district court to compel Mr. Zhang’s
`testimony. Patent Owner stated that it had contacted and spoken with Mr.
`Zhang, but Mr. Zhang declined to voluntarily testify. Patent Owner also
`requested the testimony of Dr. Gupta, a co-author on the Zhang reference
`
`1 Xingbin Zhang et al., Architectural Adaptation for Application-Specific
`Locality Optimizations, published in the Proceedings of the International
`Conference on Computer Design - VLSI in Computers and Processors
`(IEEE, October 12–15, 1997), 150–156 (Ex. 1003).
`2 Although Patent Owner requested authorization to file a Motion for
`Additional Discovery under 37 C.F.R. § 42.52, it appears Patent Owner is
`actually requesting authorization to file a motion compelling testimony
`under 37 C.F.R. § 42.52.
`
`2
`
`
`
`IPR2020-01449
`Patent 7,149,867
`
`and Declarant (Exs. 1010, 1030) in this proceeding, as to his understanding
`of the reference.3 According to Patent Owner, the experts in this case have
`taken opposing views as to what the Zhang reference discloses, so Patent
`Owner seeks testimony from Mr. Zhang and Dr. Gupta to aid in
`understanding what is described in the Zhang reference. Patent Owner
`contends such testimony would be helpful to the Board. Patent Owner also
`argued that during Dr. Gupta’s deposition, Petitioner foreclosed testimony as
`to the witness’s understanding of the Zhang reference.
`Petitioner opposes for three reasons. First, Petitioner argues that
`Patent Owner’s request is untimely. Second, Petitioner argues that the type
`of information sought by Patent Owner is not relevant and is not in the
`“interests of justice.” Third, Petitioner argues that Dr. Gupta’s testimony
`was limited to the printed publication status of the Zhang reference and the
`proffered testimony was beyond the authorized scope. See Paper 27, 3.
`A party in a contested case may apply to a United States District
`Court for a subpoena to compel testimony. 35 U.S.C. § 24. A party seeking
`to compel testimony must first obtain authorization from the Board. 37
`C.F.R. § 42.52(a). “[I]n inter partes review, discovery is limited as
`compared to that available in district court litigation.” Garmin Int’l, Inc. v.
`Cuozzo Speed Tech. LLC, IPR2012-00001, Paper 26, 5 (PTAB Mar. 5,
`2013) (informative). Additional discovery must be “necessary in the interest
`of justice.” 35 U.S.C. § 316(a)(5); 37 C.F.R. § 42.51(b)(2). In determining
`whether additional discovery in an inter partes review proceeding is
`
`
`3 We treat Patent Owner’s request as to Dr. Gupta as a request for
`authorization to file a motion for additional discovery pursuant to 37 C.F.R.
`§ 42.51(b)(2).
`
`3
`
`
`
`IPR2020-01449
`Patent 7,149,867
`
`necessary in the interest of justice, the Board considers the following factors:
`(1) the request is based on more than a mere possibility of finding something
`useful; (2) the request does not seek the litigation positions of the other
`party; (3) the information is not reasonably available through other means;
`(4) the request is easily understandable; and (5) the request is not overly
`burdensome to answer. Garmin, Paper 26 at 6–7.
`We are not persuaded that Patent Owner has shown a basis for
`authorizing a motion for additional discovery in order to obtain a subpoena
`from the district court to compel Mr. Zhang’s testimony or a motion for
`additional discovery for Dr. Gupta’s testimony. Specifically, Patent Owner
`has not demonstrated a prima facie showing that there is more than a mere
`possibility that the testimony it anticipates Mr. Zhang and Mr. Gupta will
`provide will be useful to our determination of the patentability of the
`challenged claims.
`Patent Owner is requesting the testimony of two of the authors of the
`Zhang reference relating to the substantive content of that reference. The
`first Garmin factor requires us to consider the likelihood that the additional
`discovery will uncover something useful. The mere possibility of finding
`something useful is not sufficient to demonstrate that the requested
`discovery is necessary in the interest of justice. Garmin, Paper 26, 6, 7–13.
`The third Garmin factor is whether the party seeking the additional
`discovery can reasonably figure out or assemble by other means the
`information sought to be discovered. Garmin, Paper 26, 6, 13–14.
`Patent Owner has not presented sufficient information to demonstrate
`that the requested testimony from Mr. Zhang or Dr. Gupta is likely to yield
`useful information not reasonably available through other means. Although
`
`4
`
`
`
`IPR2020-01449
`Patent 7,149,867
`
`the Zhang reference is an article describing a proposed machine architecture
`and performed simulation, Patent Owner asserts that the testimony of Mr.
`Zhang and Dr. Gupta might provide more information on the simulation
`itself. However, the relevant issue is what a person skilled in the art at the
`time of the invention would understand the Zhang reference discloses, not
`what the authors intended to describe, or how the simulation itself, outside
`of its description in the article, operates. See, e.g., HVLPO2, LLC v. Oxygen
`Frog, LLC, 995 F.3d 685, 688 (Fed. Cir. 2020) (“Obviousness and each of
`its underlying components are analyzed from the perspective of a person of
`skill in the art”); In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998)
`(“Obviousness is determined from the vantage point of a hypothetical person
`having ordinary skill in the art to which the patent pertains.”). That is,
`Patent Owner does not require the testimony of the authors of the Zhang
`reference in order to ascertain what a person with ordinary skill in the art at
`the time of the invention would have understood the Zhang reference to
`disclose. Rather, Petitioner and Patent Owner have offered the testimony of
`experts in this regard. See, e.g., Ex. 1006 ¶¶ 30–44, 104–110, 127–164; Ex.
`2001 ¶¶ 21, 22, 30, 31, 34–49, 75–107. Both parties’ experts may be
`deposed through routine discovery as to their opinions about the disclosure
`in the Zhang reference. At most, Patent Owner has demonstrated that the
`parties’ experts dispute what the Zhang reference teaches. We are not
`persuaded that testimony from Dr. Gupta4 or third party Mr. Zhang as to
`these topics would resolve this dispute or is necessary.
`
`
`4 Although Dr. Gupta provided a Declaration in this proceeding (Ex. 1010,
`Ex. 1030), his testimony related to the printed publication status of the
`article, not to the substantive content or disclosure. Under 37 C.F.R.
`
`5
`
`
`
`IPR2020-01449
`Patent 7,149,867
`
`
`In addition, we are not persuaded that the trial schedule allows for the
`time required to depose Mr. Zhang. By the time any deposition would be
`completed, the current schedule is likely to be adversely impacted.
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s request for authorization to file a
`motion for additional discovery pursuant to 37 C.F.R. § 42.52 is denied; and
`FURTHER ORDERED that Patent Owner’s request for authorization
`to file a motion for additional discovery pursuant to 37 C.F.R. § 42.51(b)(2)
`is denied.
`
`
`§ 42.53(d)(5)(ii), the scope of cross examination testimony is limited to the
`scope of the direct testimony.
`
`6
`
`
`
`IPR2020-01449
`Patent 7,149,867
`
`FOR PETITIONER:
`
`Brian Nash
`Brian.nash@pillsburylaw.com
`
`Evan Finkel
`Evan.finkel@pillsburylaw.com
`
`Matthew Hindman
`Matthew.hindman@pillsburylaw.com
`
`
`FOR PATENT OWNER:
`
`Jay Kesan
`jay@jaykesan.com
`
`Ari Rafilson
`arafilson@shorechan.com
`
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
