UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`XILINX, LLC,
`Petitioner,
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`v.
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`FG SRC LLC,
`Patent Owner
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`Case IPR2021-00633
`Patent No. 7,149,867
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION FOR
`ADDITIONAL DISCOVERY
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`XILINX, LLC,
`Petitioner,
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`v.
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`FG SRC LLC,
`Patent Owner
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`Case IPR2021-00633
`Patent No. 7,149,867
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
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` &
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION FOR
`ADDITIONAL DISCOVERY
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`I.
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`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`INTRODUCTION AND REQUEST FOR RELIEF
`Petitioner’s Motion for Joinder (Paper 3) proposed a silent understudy role in
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`Case No. IPR2021-01449 (the Intel IPR) with no new issues, briefing, or discovery
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`regarding patentability of the ’867 Patent. Unable to dispute these points, Patent
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`Owner’s Opposition (Paper 7) attempts to complicate an otherwise routine matter by
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`contending that the one-year time bar precludes joinder because Amazon is an
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`unnamed RPI or privy. Patent Owner is wrong on both counts. Amazon is not
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`Petitioner’s RPI/privy, and joinder is an exception to the time bar. Patent Owner’s
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`suggestion that joinder necessarily will infect the Intel IPR with a new RPI/privity
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`issue is also wrong. If Patent Owner raises that ineffectual issue in the Intel IPR, it
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`will be because Patent Owner chose to do so, not because joinder imposed the issue.
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`Petitioner requests the following relief: (1) a finding that the time bar does not
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`preclude or impede joinder; (2) a finding that joinder will not negatively impact the
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`Intel IPR; (3) a rejection of Patent Owner’s discovery requests as premised on a
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`fundamental misunderstanding of the time bar; and (4) a show cause order requiring
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`Patent Owner to explain how a POPR will not unjustly delay joinder after the Board
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`considers the RPI/privity and time bar issues raised in the Opposition.
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`II. DENIAL OF JOINDER IS UNWARRANTED
`A. The Time Bar Does Not Preclude or Impede Joinder
`1.
`The time bar is irrelevant because Amazon is not an RPI/privy
`The undisputed operative facts portray a straightforward customer-supplier
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`1
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`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`relationship between Petitioner and Amazon, not an RPI or privy relationship.
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`Petitioner is a supplier of Amazon for certain FPGA products. On October
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`18, 2017, Patent Owner sued Amazon for direct infringement of the ’867 Patent
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`based on the custom manner in which Amazon chooses to configure Petitioner’s
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`products. See EX1019, 12-16, 26-27, 34-43. Patent Owner deliberately chose not
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`to name Petitioner in this suit, despite full knowledge of the customer-supplier
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`relationship between Amazon and Petitioner. Id. Patent Owner also chose not to
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`accuse Petitioner after demanding documents from Petitioner via subpoena in 2018.
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`See EX1024, 10-11. Amazon, the only party accused of infringement at the time,
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`petitioned for IPR of the ’867 Patent in July 2018 (Case No. IPR2018-01395).
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`On April 30, 2020, Patent Owner sued Petitioner on a new theory that
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`Petitioner’s FPGA products, separate and apart from their unique deployment by
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`Amazon, directly infringe the ’867 Patent. EX1020, 4-7, 12-13. Patent Owner’s
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`surprise suit came years after it first became aware of Petitioner’s accused products.
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`Petitioner reasonably relied on Patent Owner’s prolonged silence as confirmation
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`that Patent Owner was accusing Amazon’s customization and not Petitioner’s
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`products in general. But Patent Owner was really just lying in wait. Patent Owner’s
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`surprise suit is why Petitioner did not initiate an IPR sooner and why Petitioner
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`presently seeks joinder. Petitioner did not communicate, much less coordinate, with
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`Amazon in any way regarding the filing of this IPR or regarding joinder.
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`2
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`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`The Board’s precedent makes clear that an RPI relationship does not manifest
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`from a mere pre-existing relationship with a non-party who will benefit tangentially
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`from invalidation of the challenged claims. See RPX Corp. v. Applications in
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`Internet Time, LLC, IPR2015-01750, Paper 128 at 30-31 (Oct. 2, 2020)
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`(precedential) (“The inquiry does not end there[.]”). An RPI relationship further
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`requires that the petitioner “can be said to be representing [the non-party’s]
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`interest.” Id. at 31. Here, these critical puzzle pieces are missing.
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`Petitioner’s actions at the PTAB are consistent with a party representing its
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`own interests and nothing more. For one, Petitioner did not seek IPR of the ’867
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`Patent until after Patent Owner’s surprise suit. Timing aside, the joinder mechanism
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`corroborates that Petitioner is not representing Amazon. Amazon does not need
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`Petitioner to act for it. Nothing prevents Amazon from pursuing joinder itself. See
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`35 U.S.C. 315(b)-(c) (noting joinder as an exception to the one-year time bar); 35
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`U.S.C. 315(e)(1) (limiting IPR estoppel to petitioners that receive a final decision).
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`Patent Owner turns a blind eye to the plain fact that its own litigation tactics
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`are the impetus for Petitioner’s Joinder Motion. And Patent Owner’s circumstantial
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`reasoning to support its RPI allegation strains credulity. First, Patent Owner
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`contends that Petitioner and Amazon devised a “divide-and-conquer strategy”
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`because Petitioner previously sought IPR of U.S. 9,153,311, one out of five patents
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`asserted against Amazon. See Opp., 3; EX1019, 4. But there is a simpler
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`3
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`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`explanation than Patent Owner’s conspiracy theory: The ’311 Patent’s claims are
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`different from those of the ’867 Patent, which led Petitioner to conduct a different
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`analysis. For example, Petitioner was aware of prior art describing its FPGA
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`products and construed that art as invalidating the ’311 Patent. This fact made
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`petitioning for IPR of the ’311 Patent efficient and inexpensive. To be clear, though,
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`Petitioner did not expect Patent Owner to assert either patent, otherwise Petitioner
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`would have searched for additional art and also petitioned for IPR of the ’867 Patent.
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`Next, Patent Owner infers an RPI relationship based on a supposed existence
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`of an indemnity obligation between Petitioner and Amazon. Opp., 4. The mere
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`existence of such an obligation is irrelevant, though. The relevant question is
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`whether indemnity is driving Petitioner to pursue joinder. It is not. The Amazon
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`case has been stayed for years, and Petitioner has little concern about any potential
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`indemnity claim. Petitioner’s Joinder Motion is entirely responsive to Patent
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`Owner’s surprise suit. Again, Petitioner has never discussed this with Amazon.
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`Patent Owner further contends that coordination between Petitioner and
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`Amazon is sufficient to infer an RPI relationship. Opp., 5-6. No so. Again, the
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`simple explanation is the right one. Petitioner and Amazon have coordinated on
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`technical matters because Amazon is a customer and because Patent Owner’s suit
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`against Amazon involves Petitioner’s products. This fact lends no support to Patent
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`Owner’s conclusion that Petitioner somehow represents Amazon’s interests.
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`4
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`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
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`Amazon is not Petitioner’s RPI.
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`Amazon, an arms-length customer of Petitioner, is also not Petitioner’s privy.
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`In other words, it cannot be said that Petitioner has had a “full and fair opportunity
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`to litigate” invalidity through Amazon. WesternGeco LLC v. ION Geophysical
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`Corp., 889 F.3d 1308, 1319 (Fed. Cir. 2018). The Taylor v. Sturgell factors bear
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`this out. See 533 U.S. 880, 894-94 (2008).
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`(1) an agreement between the parties to be bound: No such agreement exists.
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`(2) pre-existing substantive legal relationships between the parties: As
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`discussed, while Amazon is Petitioner’s customer, the case against Amazon involves
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`customizations to Petitioner’s products made by Amazon. Petitioner has not taken
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`any steps to indemnify Amazon nor indicated to Amazon that it would do so.
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`(3) adequate representation by the named party: Amazon never represented
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`Petitioner concerning the ’867 Patent. Patent Owner sued the parties separately on
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`different infringement theories over two years apart.
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`(4) the non-party’s control of the prior litigation: Amazon has no control
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`over Petitioner’s Joinder Motion. Likewise, Petitioner had no control over
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`Amazon’s Petition. The same is true in the two lawsuits Patent Owner filed.
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`(5) where the non-party acts as a proxy for the named party: As discussed,
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`Petitioner and Amazon are exclusively representing their own interests.
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`(6) where special statutory schemes foreclose successive litigation by the
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`5
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`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`non-party: Neither Amazon nor Petitioner is barred/estopped from pursuing joinder.
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`2.
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`An RPI/privy relationship does not invoke the time bar or
`otherwise support discretionary denial of joinder
`Even if Amazon were an unnamed RPI or privy (it isn’t), the one-year time
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`bar would not preclude Petitioner’s Motion because joinder is an exception to the
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`time bar. See 35 U.S.C. §§ 315(b)-(c). The Federal Circuit stated this principle
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`unambiguously in Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321,
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`1333 (Fed. Cir. 2020). See also LG Elecs. Inc. v. Uniloc 2017 LLC, IPR2019-01530,
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`Paper 8 at 7 (Mar. 3, 2020) (“the 35 U.S.C. § 315(b) time bar does not apply to a
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`request for joinder”); Sun Pharm. Indus. Ltd. v. Merck Sharp & Dohme Corp.,
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`IPR2020-01072, Paper 12 at 6, n9 (Sep. 1, 2020) (similar).
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`A hypothetical RPI or privy relationship with Amazon also would not favor
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`discretionary denial of Petitioner’s Joinder Motion. Patent Owner is flat wrong to
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`suggest that “when a time bar under 35 U.S.C. § 315(b) exists, the Board will only
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`exercise its discretion to grant joinder under § 315(c) in limited circumstances.”
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`Opp., 4 (citing Proppant Express Investments, LLC, et al., v. Oren Tech., LLC,
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`IPR2018-00914, Paper 38 at 11 (March 13, 2019) (precedential)). Patent Owner
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`misapplies Proppant Express by expanding its holding beyond the issues
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`adjudicated. As other panels have noted, “[b]ecause the present Petition does not
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`seek same party or issue joinder, the Board’s concerns in Proppant Express do not
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`apply here.” LG Elecs. Inc. v. CyWee Group Ltd., IPR2019-01203, Paper 12 at 47-
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`6
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`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`48 (Dec. 17, 2019); see also Kingston Tech. Co., Inc. v. SecureWave Storage Sols.,
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`Inc., IPR2020-0139, Paper 12 at 14 (Mar. 23, 2020) (similar).
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`Regardless, even if there were a higher discretionary bar for joining time-
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`barred parties (there isn’t), this case would easily clear it. Multiple strong reasons
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`weigh in favor of joinder. First, Patent Owner purposefully withheld its
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`infringement allegations against Petitioner until after Amazon’s time bar, and Patent
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`Owner should not be permitted to “wield [its] litigation activities as a shield.”
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`Samsung Elecs. Co. v. Iron Oak Techs., LLC, IPR2018-01554, Paper 9 at 30 (Feb.
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`13, 2019). Second, the ’867 Patent is reasonably likely to be invalid, and joinder
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`reduces the probability of premature termination precluding a final written decision.
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`Patent Owner has asserted the ’867 Patent’s claims against several different entities,
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`and a final decision on validity will serve the public interest. Third, joinder will
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`attach the § 315(e)(2) estoppel on the ’867 Patent to Petitioner before any future
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`district court trial and potentially preserve future judicial resources.1
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`B.
`Joinder Need Not Introduce New Issues Into the Intel IPR
`The Board should not allow Patent Owner to prevent joinder by threatening
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`to disrupt the Intel IPR with its contrived RPI/privity argument. As discussed,
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`whether Amazon is an unnamed RPI or privy is of minimal importance to the
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`Board’s decision on joinder. See supra § II.A.2. And yet, if Patent Owner is
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`1 Patent Owner recently withdrew its infringement allegations without prejudice.
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`7
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`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`dissatisfied with the Board’s decision, rehearing is the appropriate tool to voice that
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`concern. Rehearing would occur in this proceeding, not the Intel IPR. Patent Owner
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`could also appeal the Board’s joinder decision. But a proceeding at the Federal
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`Circuit would not disrupt the Intel IPR at the PTAB.
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`Amazon’s RPI/privy status will be even less significant in the Intel IPR after
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`the Board’s joinder decision. There is no statutory requirement for a petitioner to
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`list its privies, and the typical remedy when the Board finds an RPI left unnamed in
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`good faith is simply for the petitioner to update its mandatory notices. See Mayne
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`Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed.
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`Cir. 2019); SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11
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`at 18 (Oct. 6, 2020) (precedential). The fact that Patent Owner may choose in the
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`Intel IPR to press an RPI/privity argument with no bearing on whether the Board
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`invalidates the ’867 Patent should not affect joinder. The relevant inquiry is how
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`joinder would impact the Intel IPR, not whether Patent Owner will attempt to create
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`a sideshow in the Intel IPR if displeased with joinder. Petitioner took affirmative
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`steps to ensure that the impact of joinder will be minimal. See Mot., 7-8. It is telling
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`that Patent Owner does not identify any negative impact beyond its own decision to
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`“explore[]” non-dispositive issues. Opp., 7-8.
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`III. ADDITIONAL DISCOVERY IS UNNECESSARY
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`Additional discovery is not “necessary in the interest of justice,” 35 U.S.C. §
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`8
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`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`316(a)(5), when the requesting party relies on speculation, misunderstands the law,
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`and fails to tailor its requests narrowly. The Garmin factors reveal Patent Owner’s
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`discovery plea as one the Board should reject. Garmin Int’l, Inc. v. Cuozzo Speed
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`Techs. LLC, IPR2012-00001, Paper 26 at 6-7 (Mar. 5, 2013) (precedential).
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`A.
`Factor 1: Less Than a Possibility and Mere Allegation
`“The party requesting discovery should already be in possession of evidence
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`tending to show beyond speculation that in fact something useful will be uncovered.”
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`Garmin at 6. But speculation about Petitioner’s motives is all Patent Owner can
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`muster. Patent Owner fails to provide even a scintilla of evidentiary support for its
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`claim that “Xilinx would have had no reason to challenge either the ’311 [P]atent or
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`the current ’867 [P]atent other than to comply with its contractual obligations [to
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`Amazon].” Opp., 10. That is because no such evidence exists. As discussed,
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`Petitioner had a very good reason to challenge the ’311 Patent years ago (it knew of
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`prior art) and has a separate very good reason to now challenge the ’867 Patent
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`(Patent Owner’s surprise suit). See supra § II.A.1. This straightforward explanation
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`is far more plausible than Patent Owner’s “divide-and-conquer” fiction.
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`Worse than its lack of evidence, Patent Owner utterly fails to establish that
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`additional discovery would produce “useful” information. According to Patent
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`Owner, “the requested discovery is useful because…if Amazon is a RPI or privy of
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`Xilinx…institution is barred based on the express and unambiguous language of §
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`9
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`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`315(b).” Opp., 13-14. But Patent Owner has it wrong. See supra § II.A.2. The
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`time bar is irrelevant. Information supporting an irrelevant argument is not “useful.”
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`B.
`Factor 3: Other Means to Generate Equivalent Information
`Patent Owner broadly contends that it “is not able to obtain the requested
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`information through any other reasonable means.” Opp., 14. That assertion is hard
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`to believe given Patent Owner’s access to Amazon’s and Petitioner’s documents in
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`more expansive district court discovery, which Patent Owner does not deny.
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`C.
`Factor 5: Overly Burdensome Requests
`Patent Owner’s discovery requests are “overly burdensome” because they are
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`not “responsibly tailored.” Garmin at 7. Request (2) is particularly egregious. Its
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`scope includes four years’ worth of “any communications between Amazon and
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`Xilinx,” which would consist almost entirely of technical discussions that have no
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`connection with invalidity or IPR of the ’867 Patent. Opp., 9. This is plainly an
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`attempt to gather infringement-related documents for use in the district court case.
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`Such documents are not relevant to Patent Owner’s RPI/privity allegations. The
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`scope of Request (3) is also problematic because it is not limited to the ’867 Patent
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`and the accused FPGA products. The Board should not grant Patent Owner’s
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`requests at all. But if the Board is so inclined, the requests should be narrowed
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`significantly to just address discussions (if any) regarding the PTAB.
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`10
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`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
` Respectfully submitted,
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`/Kenneth Wayne Darby Jr./
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` David M. Hoffman, Reg. No. 54,174
` Kenneth Wayne Darby Jr., Reg. No. 65,068
` Attorneys for Petitioner
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`Date: May 3, 2021
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`Customer Number 26191
`Fish & Richardson P.C.
`Telephone: (202) 783-5070
`Facsimile: (877) 769-7945
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`11
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`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on May 3, 2021,
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`a complete and entire copy of this Petitioner’s Reply To Patent Owner’s
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`Opposition To Petitioner’s Motion For Joinder & Petitioner’s Opposition To Patent
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`Owner’s Motion For Additional Discovery was provided by email, to the Patent
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`Owner by serving the correspondence email address of record as follows:
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`Jay P. Kesan
`DIMUROGINSBERG, PC
`DGKEYIP GROUP
`1750 Tysons Blvd., Suite 1500
`Tysons Corner, VA 22102
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`Ari Rafilson, Reg. No. 58,693
`SHORE CHAN LLP
`901 Main Street, Suite 3300
`Dallas, TX 75202
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`Email: jkesan@dimuro.com
`arafilson@shorechan.com
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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