`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
`
`
`
`
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`IPR2020-01449
`Patent 7,149,867
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`
`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
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`IPR2020-01449
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`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).
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`3
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`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
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`4
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`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.
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`5
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`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.
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`6
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`IPR2020-01449
`Patent 7,149,867
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`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
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