Paper No.11
`Filed: January 4, 2021
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`
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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
`____________________
`CASE NO.: IPR2020-01449
`PATENT NO. 7,149,867
`____________________
`PETITIONER’S REPLY TO PRELIMINARY RESPONSE
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`Filed: January 4, 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 NO. 7,149,867
`____________________
`PETITIONER’S REPLY TO PRELIMINARY RESPONSE
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
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`Page
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`I. THE FINTIV FACTORS DO NOT FAVOR DENYING
`INSTITUTION .................................................................................................... 1
`II. THE ASSERTED PRIOR ART ARE PRINTED PUBLICATIONS ................. 2
`III. PO MISCHARACTERIZES THE ’867 PATENT AND PRIOR
`ART ...................................................................................................................... 4
`IV. NO NEXUS SUPPORTS SECONDARY CONSIDERATIONS ....................... 7
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`
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`
`
`i
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`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`Cases
`
`Fox Factory, Inc. v. SRAM, LLC,
`944 F.3d 1366 (Fed. Cir. 2019) ............................................................................ 7
`In re Hall,
`781 F.2d 897 (Fed. Cir. 1986) .............................................................................. 4
`
`In re Lister,
`583 F.3d 1307 (Fed. Cir. 2009) ............................................................................ 3
`Medtronic, Inc. v. Barry,
`891 F.3d 1368 (Fed. Cir. 2018) ............................................................................ 4
`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010) ............................................................................ 7
`Administrative Proceedings
`
`Cizion, LLC d/b/a Vulcan Industrial Manufacturing v. Kerr Machine
`Co. (“Cizion”), PGR2020-00065,
`Paper 10 (PTAB Dec. 3, 2020) ......................................................................... 1, 2
`Hulu, LLC v. Sound View Innovations, LLC (“Hulu”),
`IPR2018-01039,
`Paper 29, at 8 (PTAB Precedential Panel Dec. 20, 2019) .................................... 3
`
`Laboratory Corporation of America Holdings v. Quest Diagnostics
`Investments LLC (“Quest”), IPR2019-00738,
`Paper 14 (Sept. 4, 2019) ............................................................................ 3, 5, 6, 7
`Micron Tech., Inc. v. Good Kaisha IP Bridge 1 (“Micron”),
`IPR 2020-01009,
`Paper 8 at 9–10 (PTAB Dec. 7, 2020) .................................................................. 1
`Snap, Inc., v. SRK Technology LLC (“Snap”), IPR2020-00820,
`Paper 15 at 10 (PTAB Oct. 21, 2020) ................................................................... 2
`
`ii
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`
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`
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`Unified Patents v. NavBlazer LLC (“Unified Patents”), IPR2020-
`00983,
`Paper 11 at 6 (PTAB Dec. 6, 2020) ...................................................................... 1
`
`
`
`
`iii
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`
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`TABLE OF EXHIBITS
`
`Description
`Exhibit No.
`Exhibit 1001 U.S. Patent No. 7,149,867 to Daniel Poznanovic, et al., filed June
`16, 2004, and issued on December 12, 2006 (the “’867 patent”).
`Exhibit 1002 Prosecution history of the ’867 patent.
`Exhibit 1003 X. Zhang et al., Architectural Adaptation of Application-Specific
`Locality Optimizations, IEEE (1997) (“Zhang”).1
`Exhibit 1004 R. Gupta, Architectural Adaptation in AMRM Machines, IEEE
`(2000) (“Gupta”).
`Exhibit 1005 A. Chien and R. Gupta, MORPH: A System Architecture for
`Robust Higher Performance Using Customization,” IEEE (1996)
`(“Chien”).
`Exhibit 1006 Declaration of Stanley Shanfield, Ph.D.
`Exhibit 1007 RESERVED
`Exhibit 1008 RESERVED
`Exhibit 1009 RESERVED
`Exhibit 1010 Declaration of Rajesh K. Gupta
`Exhibit 1011 Chien et al., Safe and Protected Execution for the Morph/AMRM
`Reconfigurable Processor, IEEE (1999).
`Exhibit 1012 Declaration of Jacob Munford
`Exhibit 1013 RESERVED
`
`
`1 For ease of reference and citation, Petitioner has added line numbers to Exhibits
`
`1003, 1004, 1005 and 1011. For example, the citation “EX1003-15 C2:4-16” refers
`
`to Exhibit 1003, Page 15, Column 2, Lines 4-16, and the subsequent citation “id.-
`
`12 C1:12-C2:5” refers to Exhibit 1003, Page 12, Column 1, Line 12 through
`
`Column 2, Line 5.
`
`iv
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`
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`
`
`Description
`Exhibit No.
`Exhibit 1014 Order Governing Proceedings - Patent Case by Judge Alan D
`Albright, filed on June 30, 2020 in FG SRC LLC v. Intel
`Corporation, No. 6:20-cv-00315-ADA (W.D. Tex.)
`Exhibit 1015 Scheduling Order by Judge Alan D Albright, filed on August 1,
`2020 in FG SRC LLC v. Intel Corporation, No. 6:20-cv-00315-
`ADA (W.D. Tex.)
`Exhibit 1016 Plaintiffs SRC Labs, LLC & Saint Regis Mohawk Tribe's
`Opening Claim Construction Brief, filed on November 5, 2018 in
`SRC Labs, LLC et al. v. Amazon Web Services, Inc. et al., No.
`2:18-cv-00317-JLP (W.D. Was.)
`Exhibit 1017 Provisional Patent Application No. 60/479,339
`Exhibit 1018 Plaintiff's Preliminary Infringement Contentions, submitted on
`July 23, 2020 in FG SRC LLC v. Intel Corporation, No. 6:20-cv-
`00315-ADA (W.D. Tex.)
`Exhibit 1019 Amended Scheduling Order by Judge Alan D Albright, filed
`on December 18, 2020 in UNM Rainforest Innovations v. Dell
`Technologies et al., No. 6:20-cv-00468-ADA (W.D. Tex.)
`Exhibit 1020 Docket Sheet from UNM Rainforest Innovations v. Dell
`Technologies et al., No. 6:20-cv-00468-ADA (W.D. Tex.)
`Exhibit 1021 Scheduling Order by Judge Alan D Albright, filed on
`November 19, 2020 in Theta IP, LLC v. Samsung Electronics
`Co., Ltd. et al., No. 6:20-cv-00160-ADA (W.D. Tex.)
`Exhibit 1022 Agreed Post-Markman Scheduling Order by Judge Alan D
`Albright, filed on December 3, 2020 in Videoshare, LLC v.
`Google LLC and Youtube, LLC, No. 6:19-cv-00663-ADA
`(W.D. Tex.)
`Exhibit 1023 Docket Sheet from H-E-B, LP v. Wadley Holdings, LLC, dba
`nICE Coolers et al., No. 6:20-cv-00081-ADA (W.D. Tex.)
`Exhibit 1024 Western District of Texas Order by Chief Judge Orlando L.
`Garcia regarding Court Operations Under the Exigent
`Circumstances Created by the COVID-19 Pandemic, filed on
`March 13, 2020 in all cases.
`
`v
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`
`
`
`
`Description
`Exhibit No.
`Exhibit 1025 Western District of Texas Eleventh Supplemental Order by
`Chief Judge Orlando L. Garcia Regarding Court Operations
`Under the Exigent Circumstances Created by the COVID-19
`Pandemic, filed on December 10, 2020 in all cases.
`Exhibit 1026 December 23, 2020 email from H. Santasawatkul to Counsel
`
`NOTE ON EMPHASIS: All emphasis herein is added unless otherwise noted.
`
`
`
`vi
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`Pursuant to Paper 10, Petitioner replies to Patent Owner’s (PO) Paper 9 as follows:
`
`I.
`
`THE FINTIV FACTORS DO NOT FAVOR DENYING INSTITUTION
`
`The first Fintiv factor is at least neutral. PO argues Petitioner must proffer
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`evidence that a stay would be granted, but the Board has repeatedly rejected that
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`argument. Micron, IPR 2020-01009 at 9–10; Unified Patents, IPR2020-00983 at 6.
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`Meanwhile, PO’s purported “evidence” is merely cases with different facts and
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`circumstances, which do not support speculating how the court might rule here. Id.
`
`In Kerr, unlike here, the Court set a trial date by order, see EX2020, and the stay
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`motion was filed before institution. Kerr is thus irrelevant to how the Court might
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`rule on a post-institution stay motion. Moreover, PO’s argument that Kerr is
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`“factually identical” only serves to support institution because the Board ultimately
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`instituted despite similar Fintiv factor arguments. Cizion, PGR2020-00065 at 21-30.
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`The second Fintiv factor weighs against denial. The Court’s scheduling order
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`did not set a trial date. EX1015-2. That is consistent with the Order Governing
`
`Proceedings (OGP), which states that “[t]he Court expects to set a trial date at the
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`conclusion of the Markman hearing.” EX1014-9. PO relies on an email from the
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`Court’s clerk in August that, by its very terms, only provided an “estimated trial
`
`date” and invited the parties to raise moving that date at the Markman hearing.
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`EX2022. The Court has since moved Markman back by a month and issued an
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`amended scheduling order that again does not set a trial date. EX2023. Moreover, at
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`1
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`
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`least four other patent cases (including one with PO’s counsel, Shore Chan
`
`DePumpo) list the same trial date, see EXS1019 to 1023, the Austin courthouse is
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`and has been closed to trials due to COVID-19, see EX1024 & EX1025, and the
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`OGP’s Appendix A Default Schedule calculates trial as 52 weeks from Markman,
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`see EX1014-9, all further evincing the uncertainty of a date estimated by email back
`
`in August. Cizion, PGR2020-00065 at 26. Compared with a Final Written Decision
`
`date of February 17, 2022, see Paper 8 at 2, this factor weighs against denial.
`
`The third Fintiv factor also weighs against denial. The Court has not issued
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`substantive orders concerning the ’867 patent and the institution decision will
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`precede the Markman. See Snap, IPR2020-00820 at 10. In the meantime, fact
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`discovery is stayed until after Markman, as the Court recently reinforced in denying
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`PO’s attempt to seek early discovery. See EX1026; EX1014-2.
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`II. THE ASSERTED PRIOR ART ARE PRINTED PUBLICATIONS
`
`PO’s attempt to discount Dr. Gupta’s testimony is misplaced. Based on his
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`personal knowledge as an author, presenter, conference attendee, and decades of
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`practice in the field, Dr. Gupta testified that: (1) he presented Zhang, Gupta, and
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`Chien at IEEE conferences in 1996, 1997, and 2000, respectively; (2) each was
`
`distributed to attendees before or during the conference; (3) each was published by
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`IEEE the same year as part of the conference proceedings; and (4) each was uploaded
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`to IEEE’s Xplore by at least 2002. EX1010 ¶¶ 18-26. PO questions the lack of
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`2
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`
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`corroboration but ignores that such testimony has been found to support a reasonable
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`likelihood of public availability. E.g., Quest, IPR2019-00738 at 12-13. PO makes
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`much of the reference to “1997” and “VLSI ’97” in ¶¶ 25-26, but it is clear from Dr.
`
`Gupta’s testimony in ¶ 24 and from the reference itself that these were typographical
`
`errors that should read “2000” & “VLSI ’00” instead. EX1010 ¶ 24; EX1004. As to
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`Xplore, PO’s self-serving search term is not the test for public accessibility, see In
`
`re Lister, 583 F.3d 1307, 1315 (Fed. Cir. 2009), Dr. Gupta’s testimony that each was
`
`available on that platform since 2002 is unrebutted, and that availability is just one
`
`piece in a totality of evidence showing a reasonable likelihood that each was publicly
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`accessible before the priority date. See Hulu, IPR2018-01039 at 17-18.
`
`PO’s attempt to discount Mr. Munford’s testimony is also unavailing. PO first
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`argues that the MARC records do not identify author or title of the papers within
`
`each conference publication, Paper 9 at 34, but that is not the test. As the Board has
`
`found, libraries often treat media containing a set of cataloged conference
`
`proceedings as a single “book” and that retrieving information from such a book
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`“can require that the interested person physically open the book to access the
`
`information contained inside.” Quest, IPR2019-00738 at 14. Here, Mr. Munford
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`testified that the conference publications containing each reference were cataloged
`
`at various libraries well prior to the earliest alleged priority date and that a POSA
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`could find those proceedings with reasonable diligence by using the libraries’
`
`3
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`
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`catalogs. As to PO’s argument that Mr. Munford’s testimony addresses cataloging
`
`but not when each was shelved, Paper 9 at 34, there is no such requirement in the
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`case PO relied on or otherwise. See In re Hall, 781 F.2d 897, 898-99 (Fed. Cir.
`
`1986); see also Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)
`
`(finding that for references stored in libraries, “we generally inquire whether the
`
`reference was sufficiently indexed or cataloged”). Moreover, as Mr. Munford
`
`testified, the pandemic precluded in-person investigation, which may have otherwise
`
`allowed testimony on shelving dates. See EX1012 at ¶ 14.
`
`III. PO MISCHARACTERIZES THE ’867 PATENT AND PRIOR ART
`
`PO mischaracterizes the patent by arguing that it requires a “fully”
`
`reconfigurable processor that instantiates an algorithm as hardware. E.g., Paper 9 at
`
`13, 19, 39, 41, 60. The undisputed construction for “reconfigurable processor”
`
`comes from the patent and requires only “a computing device that contains
`
`reconfigurable components,” not a computing device that is “fully” reconfigurable.
`
`See EX1001 5:26-29; Paper 1 at 14. Similarly, the claims recite a reconfigurable
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`processor that instantiates an algorithm and some configurable components. EX1001
`
`at claim 1 (“first memory and data prefetch unit” are “configured to conform”); id.
`
`at claim 9 (“data prefetch unit” is “configured to conform”); id. at claim 13
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`(“computational unit and the data access unit and the data prefetch unit” are
`
`“configured to conform”). Petitioner showed that the asserted combination’s
`
`4
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`
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`reconfigurable processor contains reconfigurable components, including each of
`
`these claimed components. E.g., Paper 1 at 17-21, 24-25, 46-49, 67-68, 85. No more
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`reconfigurability is required. As to the combination’s computational algorithms,
`
`including Zhang’s matrix multiplication algorithms, those are implemented in
`
`reconfigurable processing elements. E.g., Paper 1 at 42-43, 64, 67-68; EX1003-13
`
`C2:44-50, Fig. 2. Zhang also teaches using programmable logic/FPGAs to
`
`instantiate data prefetching algorithms, e.g., Paper 1 at 46-49, 51-53, 67-69, 85,
`
`which are also computations performed in the data prefetch unit, e.g., id. at 58-59.
`
`The applicant attempted a similar argument during prosecution by arguing
`
`that Paulraj’s “reconfigurable cache” was not a reconfigurable processor. See
`
`EX1002-79, -131. The Examiner rejected that characterization, noting that because
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`Paulraj’s reconfigurable cache was “an element of CPU 110,” and that the cache is
`
`configured “based on the application ... that is to execute on the processor,” it
`
`discloses a reconfigurable processor that instantiates an algorithm. See EX1002-105,
`
`-146. The applicant overcame the rejection with other limitations. See id. 197-201.
`
`PO similarly argues the patent requires “replacing” a microprocessor with a
`
`reconfigurable processor (RP) and suggests it precludes use with conventional
`
`CPUs. E.g., Paper 9 at 24, 39. But nothing in the claims excludes a CPU or requires
`
`“replacement” with entirely reconfigurable components. Rather, the patent can be
`
`used with a conventional system, such as implementing “a number of RPs 100 . . .
`
`5
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`
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`
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`within a memory subsystem of a conventional computer,” which “coexist well with
`
`a more conventional hardware platform.” EX1001 6:19-25; see also id. at claim 7
`
`(“said processor memory is a microprocessor memory”). The cited testimony does
`
`not support PO’s position either. Compare Paper 9 at 24 (citing EX2001 ¶ 54); with
`
`EX2001 ¶ 54. Similarly, PO is wrong to argue that reference to “instructions” is
`
`inconsistent with the claims, see Paper 9 at 9, 23, because nothing precludes the
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`claimed components from working in a system that also handles instructions.
`
`PO also argues the first memory and data prefetch unit must “match the exact
`
`needs of the algorithm,” Paper 9 at 46, but the claims only require that one or both
`
`be “configured to conform,” which Petitioner has shown. E.g., Paper 1 at 46-49.
`
`Finally, PO makes various unsupported mischaracterizations about the art. PO
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`contends Zhang only discloses a “static” conventional CPU/microprocessor rather
`
`than reconfigurable processing, e.g., Paper 9 at 17-19, 22-24, 40-41, but Zhang
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`teaches integrating “small blocks of programmable logic into key elements of a
`
`baseline architecture, including processing elements,” Paper 1 at 28-29; see also id.
`
`42-43; EX1003-13 C2:44-49, i.e., not a conventional microprocessor. Thus, Zhang’s
`
`programmable logic is also used for the CPU’s processing elements. EX1003 Fig. 2.
`
`Zhang teaches an application drives the architectural adaptation, which “can be done
`
`statically or at runtime.” EX1003-13 C2:44 to -14 C1:8. That adaptation is
`
`configurable, not static. PO misleads by noting Zhang’s application remains in
`
`6
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`
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`software while hardware is adapted, e.g., Paper 9 at 39-40, but that is consistent with
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`the patent, which also describes a software application used to adapt hardware. See
`
`EX1001 6:48-57; EX1003-14 C1:32-35. Petitioner has shown Zhang instantiates an
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`application’s algorithm(s) as hardware. E.g., Paper 1 at 29-30, 39-40, 42-43.
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`Similarly, PO’s contention that the combination’s memories are not implemented in
`
`programmable logic, see Paper 9 at 50, are contradicted by Zhang teaching that
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`“programmable logic” is integrated into the “memory components.” E.g., EX1003-
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`14 C1:28-30; EX1003-18 C1:5-8. PO also argues that Zhang’s L1 cache is only
`
`configurable to 32 or 64 bytes, but no testimony supports that mischaracterization.
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`See Paper 9 at 19, 38. Zhang’s Fig.1 simply reflects what was chosen for line sizes
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`in that simulation, see EX1003-15 C1:19-20, but does not limit Zhang from adapting
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`to other line sizes to “match an application,” id. EX1003-12 C1:20-23, C2:23-26.
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`IV. NO NEXUS SUPPORTS SECONDARY CONSIDERATIONS
`
`PO’s purported evidence of secondary considerations cannot overcome the
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`strong obviousness showing. Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed.
`
`Cir. 2010). PO also ignores that it must show a nexus between its purported evidence
`
`of secondary considerations and what is claimed. Fox Factory, Inc. v. SRAM, LLC,
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`944 F.3d 1366, 1373 (Fed. Cir. 2019). Indeed, by asserting SRC has many patents
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`covering numerous aspects of reconfigurable computing, PO shows nexus cannot be
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`presumed. Id. (no presumption if system includes features covered by other patents).
`
`7
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`Respectfully submitted,
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`
`
`Dated: January 4, 2021
`
`
`
`
`
`By: /s/ Brian C. Nash
`
`
`Brian C. Nash (Reg. No. 58,105)
`Pillsbury Winthrop Shaw Pittman LLP
`401 Congress Avenue, Suite 1700
`Austin, TX 78701
`Telephone: (512) 580-9629
`Facsimile: (512) 580-9601
`Email: brian.nash@pillsburylaw.com
`
`Counsel for Petitioner Intel Corporation
`
`8
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`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of “PETITIONER’S REPLY TO
`
`PRELIMINARY RESPONSE” and supporting materials (Exhibits 1019-1026)
`
`were served electronically via e-mail on January 4, 2021 via e-mail, in their entirety
`
`on the following:
`
`Jay P. Kesan, Reg. No. 37,488
`DIMUROGINSBERG, PC
`DGKEYIP GROUP
`1750 Tyson’s Blvd. Suite 1500
`Tysons Corner, VA 22102
`jkesan@dimuro.com
`
`Ari Rafilson, Reg. No. 58,693
`Shore Chan DePumpo LLP
`901 Main Street, Suite 3300
`Dallas, TX 75202
`arafilson@shorechan.com
`
`
`Dated: January 4, 2021
`
`
`
`By: /s/ Brian C. Nash
`
`
`Brian C. Nash (Reg. No. 58,105)
`Pillsbury Winthrop Shaw Pittman LLP
`401 Congress Avenue, Suite 1700
`Austin, TX 78701
`Telephone: (512) 580-9629
`Facsimile: (512) 580-9601
`Email: brian.nash@pillsburylaw.com
`
`Counsel for Petitioner Intel Corporation
`
`9
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`
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