`571-272-7822
`
`Paper 8
`Entered: April 27, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`XILINX, INC.,
`Petitioner,
`v.
`FG SRC LLC,
`Patent Owner.
`
`Case No. IPR2021-00633
`Patent 7,149,867
`
`
`
`
`
`
`
`
`
`Before KALYAN K. DESHPANDE, GREGG I. ANDERSON,
`and KARA L. SZPONDOWSKI, Administrative Patent Judges.
`
`
`PER CURIAM.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2021-00633
`Patent 7,149,867
`
`
`On March 15, 2021, Petitioner Xilinx, Inc. (“Petitioner”) filed a
`Petition requesting inter partes review of claims 1–19 of U.S. Patent
`No. 7,149,867 (“’867 patent”) (“Petition,” Paper 2). Petitioner also filed a
`Motion for Joinder, pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.22(b),
`requesting to join Intel Corp. v. FG SRC LLC, Case IPR2020-01449, which
`includes identical challenges to claims 1–19 of the ’867 patent (Paper 3).
`On April 15, 2021, Patent Owner FG SRC LLC (“Patent Owner”) filed an
`Opposition to Petitioner’s Motion for Joinder and Motion for Additional
`Discovery (Paper 7).1
`On April 22, 2021, Petitioner asserted that the parties had conferred
`on Petitioner’s Motion for Joinder and Patent Owner’s Opposition, and
`Patent Owner’s Motion for Additional Discovery. Ex. 3001. Petitioner and
`Patent Owner agreed to an expedited schedule, where Petitioner will file a
`Reply to Patent Owner’s Opposition no later than May 3, 2021, and Patent
`Owner will file a Sur-Reply no later than May 17, 2021. Id.
`On April 26, 2021, a conference call was held between Judges
`Szpondowski, Deshpande, and Anderson, and respective counsel for the
`parties to discuss the agreed upon briefing schedule. We authorize
`Petitioner to file a Reply to Patent Owner’s Opposition to Petitioner’s
`Motion for Joinder / Motion for Additional Discovery, and we similarly
`authorize Patent Owner to file a Sur-reply to Petitioner’s Reply. The Reply
`and Sur-reply shall not exceed ten (10) pages and are limited to the issues
`
`
`1 Patent Owner did not request authorization to file its Motion for Additional
`Discovery. Petitioner did not indicate that it objects to Patent Owner’s filing
`of a Motion for Additional Discovery. We permit Patent Owner’s Motion
`because we recognize the relationship between the Patent Owner’s
`arguments raised in the Opposition and its request for additional discovery.
`
`2
`
`
`
`IPR2021-00633
`Patent 7,149,867
`
`raised in Petitioner’s Motion for Joinder and Patent Owner’s Opposition /
`Motion for Additional Discovery. See Papers 3, 7.
`The parties have requested briefing to argue and/or further develop
`whether “Amazon should have been listed as an [real-party in interest] RPI
`or privy to Xilinx’s ’867 petition.” Paper 7, 5. The parties are further
`encouraged to explain the impact of such a determination on the issues of
`joinder. That is, the parties are encouraged to discuss the issue of joinder as
`it relates to a party that is statutorily barred from an inter partes review
`under 35 U.S.C. § 315(b). See Facebook, Inc. v. Windy City Innovations,
`LLC, 973 F.3d 1321 (Fed. Cir. 2020) (“Beginning with the statutory
`language, § 315(b) articulates the time-bar for when an IPR ‘may not be
`instituted.’ 35 U.S.C. § 315(b). But § 315(b) includes a specific exception
`to the time bar. By its own terms, ‘[t]he time limitation . . . shall not apply
`to a request for joinder under subsection (c).’ Id.”).
`
`In consideration of the foregoing, it is hereby:
`ORDERED that pursuant to Petitioner’s Reply to Patent Owner’s
`Opposition / Motion for Additional Discovery is due by May 3, 2021, and is
`limited to 10 pages; and
`FURTHER ORDERED that Patent Owner’s Sur-Reply to Petitioner’s
`Motion for Joinder and Reply to Patent Owner’s Motion for Additional
`Discovery is due by May 17, 2021, and is limited to 10 pages.
`
`
`
`
`3
`
`
`
`IPR2021-00633
`Patent 7,149,867
`
`FOR PETITIONER:
`
`David Hoffman
`Kenneth Darby
`FISH & RICHARDSON P.C.
`hoffman@fr.com
`kdarby@fr.com
`
`
`FOR PATENT OWNER:
`
`Jay Kesan
`DIMUROGINSBERG, PC
`DGKEYIP GROUP
`jay@jaykesan.com
`
`Ari Rafilson
`SHORE CHAN DEPUMPO LLP
`arafilson@shorechan.com
`
`4
`
`
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