UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`Paper No. 10
`May 10, 2021
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`XILINX, LLC,
`Petitioner,
`v.
`FG SRC LLC,
`Patent Owner.
`
`
`
`
`
`
`
`IPR2021-00633
`Patent No. 7,149,867
`
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER FG SRC LLC’S
`SURREPLY IN SUPPORT OF ITS
`OPPOSITION TO PETITIONER’S MOTION FOR JOINDER
`AND REPLY IN SUPPORT OF ITS
`MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`
`
`
`
`
`
`Paper No. 10
`May 10, 2021
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`XILINX, LLC,
`Petitioner,
`v.
`FG SRC LLC,
`Patent Owner.
`
`
`
`
`
`
`
`IPR2021-00633
`Patent No. 7,149,867
`
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER FG SRC LLC’S
`SURREPLY IN SUPPORT OF ITS
`OPPOSITION TO PETITIONER’S MOTION FOR JOINDER
`AND REPLY IN SUPPORT OF ITS
`MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`
`
`Petitioner’s Reply (Paper 9, “Reply”) disingenuously dismisses its
`
`statutory obligations regarding the disclosure of all real parties in interest: “If
`
`Patent Owner raises that ineffectual issue in the Intel IPR, it will be because
`
`Patent Owner chose to do so, not because joinder imposed the issue.” Reply at
`
`1. Petitioner simply ignores 35 U.S.C.A. §312(a)(2), which requires that for
`
`every IPR, “the petition identifies all real parties in interest.” It is Patent
`
`Owner’s obligation as the adverse party to point out Petitioner’s shortcomings,
`
`particularly, when Petitioner explicitly admits that “Petitioner and Amazon
`
`have coordinated” on certain matters. Reply at 4. Petitioner then proceeds to
`
`discuss its relationship with Amazon over the next nine pages of its brief. None
`
`of this discussion is relevant to the Intel IPR. Petitioner’s suggestion that it
`
`would be able to join the Intel IPR as a “silent understudy” is plainly legal
`
`fiction.
`
`1. WHETHER AMAZON IS AN RPI IS A SINE QUA NON
`THRESHOLD ISSUE.
`Petitioner ignores the most basic aspect of joinder—that it requires a
`
`proper second petition which itself warrants the institution of an inter partes
`
`review: “the Director, in his or her discretion, may join as a party to [an already
`
`instituted IPR] any person who properly files a petition under section 311 that
`
`. . . warrants the institution of an inter partes review under section 314.” 35
`
`U.S.C.A. §315(c). Although Petitioner is correct in stating that a time-barred
`1
`
`
`
`
`
`
`party can still be joined to an existing IPR (Reply at 1), that does not relieve
`
`the Petitioner from its obligation to satisfy the RPI disclosure requirement of
`
`§312. 35 U.S.C.A. §312(b)(2). Failure to meet this requirement can itself be a
`
`reason to deny institution of a petition. See, e.g., Worlds Inc. v. Bungie, Inc.,
`
`903 F.3d 1237, 1240 (Fed. Cir. 2018) (“Under 35 U.S.C. §312(a)(2), an IPR
`
`petition ‘may be considered only if ... the petition identifies all real parties in
`
`interest.’”); ARRIS Int’l. PLC v. Chanbond, LLC, (Fed. Cir. Dec. 27, 2018)
`
`(accepting PTAB decision denying institution based upon a failure to disclose
`
`real parties in interest.). “Correctly identifying all real parties in interest with
`
`respect to each IPR petition is important, as the determination may impact
`
`whether a petition may be instituted.” Id. Petitioner’s failure to identify
`
`Amazon as an RPI in itself precludes its Petition from being instituted which
`
`renders its Motion to Join moot.
`
`2. THE FACTS STRONGLY SUPPORT THAT AMAZON IS AN
`RPI OF XILINX, AND THAT THEY ARE OPERATING IN
`CONCERT.
`First, Petitioner admits that the Amazon suit was filed on Oct. 18, 2017
`
`and that Petitioner was aware of and even participated in that suit, and that it
`
`even produced relevant technical documents. Reply at 2. Second, Petitioner
`
`admits that “Patent Owner sued Petitioner on a new theory that Petitioner’s
`
`FPGA products, separate and apart from their unique deployment by Amazon”
`
`
`
`2
`
`
`
`
`
`infringe the ’867 patent on April 30, 2020. Id. Petitioner, thus, admits two
`
`relevant points: (1) Patent Owner originally sued Amazon based on the unique
`
`deployment of Petitioner’s products by Amazon, and (2) when it became
`
`apparent that Petitioner’s products infringed the asserted patent “separate and
`
`apart from their unique deployment by Amazon,” Patent Owner timely initiated
`
`a separate suit against Petitioner. Petitioner effectively admits that Patent
`
`Owner proceeded in good faith against both Amazon and Xilinx on separate
`
`infringement theories as soon as it became aware of their infringement.
`
`Petitioner’s derogatory attorney argument that “Patent Owner was really just
`
`lying in wait” is unsupported conjecture and—even if true—would be
`
`irrelevant to Xilinx’s obligation to disclose all RPIs. Similarly, Petitioner’s
`
`attorney argument that “Patent Owner purposefully withheld its infringement
`
`allegations against Petitioner until after Amazon’s time bar” hardly deserves a
`
`response as it is belied by the fact that both Amazon and Xilinx actually filed
`
`timely IPRs, each strategically challenging only certain non-overlapping sets
`
`of Patent Owner’s patents.
`
`Petitioner even goes so far as to argue that “Patent Owner’s surprise suit
`
`is why Petitioner did not initiate an IPR sooner.” Reply at 2. This is a flat-out
`
`misdirection by omission. Petitioner did not initiate an IPR against this patent
`
`sooner, but it did initiate an IPR against U. S. Patent No. 9,153,311 (“’311
`
`
`
`3
`
`
`
`
`
`patent”), even though it had not been accused of infringement. The question as
`
`to “why” is answered by the fact that its RPI Amazon had been sued. Both the
`
`’867 patent and the ’311 patent were asserted against Xilinx’s RPIs
`
`Amazon.com, Inc. and Amazon Web Services, Inc. (“Amazon”) in SRC Labs,
`
`LLC et al., v. Amazon Web Services, Inc., et al., No. 1:17-cv-01227 (E.D.
`
`Virginia), filed Oct. 18, 2017; SRC Labs, LLC et al., v. Amazon Web Services,
`
`Inc., et al., No. 2:18-cv-00317 (W.D. Washington), filed Feb. 26, 2018; and
`
`SRC Labs, LLC et al. v. Amazon Web Services, Inc. et al., Case No. 2:17-00547
`
`(E.D. Virginia), filed Oct. 18, 2017.1 In each of these cases, Patent Owner
`
`alleged that Amazon’s products infringe both the ’867 patent and the ’311
`
`patent based on its usage of Xilinx FPGA products.
`
`In response, Xilinx has closely cooperated with Amazon in its defense.
`
`In a divide-and-conquer strategy, Xilinx challenged the ’311 patent in
`
`IPR2018-01395 and Amazon challenged the ’867 patent in IPR2019-00103.
`
`Both petitions were denied (IPR2018-01395, Paper 17 and IPR2019-00103,
`
`Paper 22). This time around, the Xilinx/Amazon team is challenging the ’867
`
`patent in Xilinx’s name. Allowing such gamesmanship will certainly
`
`encourage similarly situated defendants to cooperate in a likewise manner.
`
`
`1 Case No. 2-17-00547 was consolidated with Case No. 1-17-cv-01227, and the
`consolidated case was transferred to the Western District of Washington in Case No.
`2:18-cv-00317 on February 26, 2018.
`
`
`
`4
`
`
`
`
`
`Petitioner’s representations regarding its relationship and interactions
`
`with Amazon in its reply themselves are carefully crafted fool’s gold. For
`
`example, Petitioner states that “Petitioner did not communicate, much less
`
`coordinate, with Amazon in any way regarding the filing of this IPR or
`
`regarding joinder.” Reply at 2. Petitioner carefully did not address its
`
`cooperation with Amazon in the Amazon suit or their prior divide-and-conquer
`
`IPRs. Patent Owner is entitled to discovery to expose the true nature of Xilinx’s
`
`relationship with Amazon beyond the carefully crafted self-serving statements
`
`in its reply.
`
`Petitioner further argues that a “critical puzzle piece[]” is missing—
`
`referring to the “requirement” that an RPI relationship ought only be found if
`
`the “petitioner ‘can be said to be representing [the non-party’s] interest.’”
`
`Reply at 3. That “missing piece” is Xilinx’s IPR of the ’311 patent before it
`
`had been sued. Why else would it willingly take on the substantial cost of an
`
`IPR when it had not been accused of infringement, and according to Xilinx, the
`
`Amazon suit related only to the “unique deployment [of Xilinx’s products] by
`
`Amazon” and was only “based on the custom manner in which Amazon
`
`chooses to configure Petitioner’s products?” Reply at 2. Petitioner’s actions
`
`at the PTAB are flatly inconsistent with a party representing only its own
`
`interests.
`
`
`
`5
`
`
`
`
`
`Petitioner’s explanation for challenging only the ’311 patent (while
`
`leaving Amazon to challenge only the ’867 patent) is dubious. Petitioner
`
`admits that 5 patents were asserted against Amazon but offers only that maybe
`
`it challenged the ’311 because “[f]or example, Petitioner was aware of prior art
`
`describing its FPGA products and construed that art as invalidating the ’311
`
`Patent. This fact made petitioning for IPR of the ’311 Patent efficient and
`
`inexpensive.” This fact is called into question by two observations. First, the
`
`IPR was not instituted—indicating that the prior art was not as strong as
`
`Petitioner says it believed. Second, Xilinx and Amazon, both sophisticated
`
`litigants, were faced with the same 5 patents and coincidentally found prior art
`
`that just so happened to facilitate a divide-and-conquer strategy.
`
`Petitioner further all but admits that some kind of agreement exists
`
`between itself and Amazon and does not deny that there is an indemnity
`
`obligation. Reply at 4. Instead, Petitioner strains to argue that an indemnity
`
`obligation is not the driving factor motivating Petitioner’s actions. Id. This is
`
`an easy argument to make when the adverse party and the Board are not looking
`
`at the same documents and communications—which are solely in the
`
`possession of Petitioner and Amazon. Indeed, Petitioner is under an obligation
`
`to produce these potentially adverse materials and has failed to do so. 37 C.F.R.
`
`§11.303. Petitioner’s carefully crafted statement that “Petitioner has not taken
`
`
`
`6
`
`
`
`
`
`any steps to indemnify Amazon nor indicated to Amazon that it would do so”
`
`again does not address the extent to which an indemnity obligation actually
`
`exists. Reply at 5.
`
`Finally, Petitioner explicitly admits that “Petitioner and Amazon have
`
`coordinated” on certain matters. Patent Owner and the Board are entitled to
`
`probe the nature and extent of this coordinated effort.
`
`Determining an RPI relationship requires “a flexible approach... with an
`
`eye toward determining whether the non-party is a clear beneficiary that has a
`
`preexisting, established relationship with the petitioner.” Applications in
`
`Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018)
`
`(“AIT”); Ventex Co., Ltd. v. Columbia Sportswear N.A. Inc., IPR2017-00651,
`
`Paper 148 at 6 (PTAB Jan. 24, 2019). Close analysis of the interconnected
`
`relationship between Amazon and Xilinx and the coordinated approach they
`
`have taken in the past is required. Amazon and Xilinx’s coordinated behavior
`
`supports—and Xilinx did not deny—the existence of a substantive legal
`
`relationship including an indemnity obligation. Through Amazon’s and
`
`Xilinx’s coordinated efforts, Xilinx is attempting to effectively assume the role
`
`of non-party Amazon as a proxy to relitigate the same issues Amazon did and
`
`could have previously raised. See RPX Corp. v. Applications in Internet Time,
`
`LLC, IPR2015-0170, Paper 128 at 30-38 (PTAB Oct. 2, 2020).
`
`
`
`7
`
`
`
`
`
`3. ADDITIONAL DISCOVERY ON THE RPI ISSUE IS JUSTIFIED.
`Patent Owner’s narrowly tailored discovery request set forth in its
`
`opposition meets the Garmin factors and will aid in demonstrating that
`
`institution of this IPR is barred.
`
`Regarding the first factor, the available circumstantial evidence strongly
`
`supports that Amazon and Xilinx have a supplier contract which likely includes
`
`indemnity provisions concerning the products accused of infringement in the
`
`Amazon litigations. Notably, Xilinx does not deny this. Further, Amazon and
`
`Xilinx took an uncanny coordinated approach which included Xilinx filing for
`
`an IPR on behalf of Amazon before Xilinx was ever sued on a different
`
`infringement theory. Xilinx’s explanation that “it knew of prior art” for just
`
`the ’311 patent, while Amazon knew of prior art for just the ’867 patent is
`
`implausible. Reply at 9. These facts fully support the minimal burden imposed
`
`by production of the relevant supplier agreement(s) and the requested
`
`communications between Amazon and Xilinx and supports that these requests
`
`are “necessary in the interest of justice.” 35 U.S.C. §316(a)(5).
`
`The supplier contract between Amazon and Xilinx alone meets the “pre-
`
`existing substantive legal relationships between the parties” standard in the
`
`Taylor Factors, which under Ventex is sufficient to establish a privity
`
`relationship. Xilinx should not be permitted to deny the nature of its
`
`
`
`8
`
`
`
`
`
`relationship with Amazon without disclosing its supplier agreement[s] and
`
`related communications to Patent Owner and the Board. The specific requested
`
`agreements and communications between Amazon and Xilinx will go to the
`
`extent of Xilinx’s and Amazon’s coordinated efforts.
`
`Petitioner further argues that Patent Owner already has the discovery it
`
`seeks because of “Patent Owner’s access to Amazon’s and Petitioner’s
`
`documents in more expansive district court discovery, which Patent Owner
`
`does not deny.” Reply at 10. However, Patent Owner is obviously prevented
`
`from using that discovery in this proceeding due to the applicable protective
`
`orders.
`
`To the extent the Board shares Petitioner’s concern that the second
`
`request for discovery regarding relevant communications between Amazon and
`
`Xilinx in the relevant timeframe is overly burdensome, Patent Owner is willing
`
`to work with Petitioner to further revise the request to arrive at a reasonable
`
`dataset—possibly through the use of keyword searches of ESI. Petitioner’s
`
`argument that “[t]his is plainly an attempt to gather infringement-related
`
`documents for use in the district court case” is a nonsensical red herring because
`
`the request does not seek technical documents.
`
`Finally, Petitioner’s concerns regarding the scope of request (3) all but
`
`explicitly admit that some kind of indemnification agreements exist. If there
`
`
`
`9
`
`
`
`
`
`are truly so many such agreements that the scope of the request becomes
`
`problematic, Patent Owner is again willing to work with Petitioner to narrow
`
`the request to only the relevant agreements.
`
`4. CONCLUSION
`Xilinx’s Motion for Joinder should be denied for failure to disclose
`
`Amazon as an RPI. To the extent the Board requires additional evidence of the
`
`full nature of the relationship between Xilinx and Amazon, Patent Owner’s
`
`Motion for Additional Discovery should be granted.
`
`Date: May 10, 2021
`
`Respectfully submitted,
`
`
`
`
`
`/Jay P. Kesan /
`Jay P. Kesan, Reg. No. 37,488
`jkesan@dimuro.com
`DIMUROGINSBERG, PC
` DGKEYIP GROUP
`1750 Tyson’s Blvd., Suite 1500
`Tysons Corner, VA 22102
`Telephone: (703) 289-5118
`
`
`
`
`
`
`
`
`/Ari Rafilson /
`
`
`Ari Rafilson, Reg. No. 58,693
`arafilson@shorechan.com
`SHORE CHAN, LLP
`901 Main Street, Suite 3300
`Dallas, TX 75202
`Telephone: (214) 593-9110
`
`Attorneys for Patent Owner
`FG SRC LLC
`
`10
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 C.F.R. §§42.6(e)(4) and 42.25(b), the undersigned certifies that
`
`on May 10, 2021, a complete copy of Patent Owner FG SRC LLC’s Surreply in
`
`Support of Its Opposition to Petitioner’s Motion for Joinder and Reply in Support
`
`of Its Motion for Additional Discovery was filed electronically through the Patent
`
`Trial and Appeal Board’s PTABE2E System and provided, via electronic service, to
`
`the Petitioner by serving the correspondence address of record as follows:
`
`David Hoffman
`Kenneth W. Darby
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`hoffman@fr.com
`kdarby@fr.com
`IPR42653-0026IP1@fr.com
`PTABInbound@fr.com
`
`
`Dated: May 10, 2021
`
`
`
`
`
`
`
`
`
`/Jay P. Kesan /
`Jay P. Kesan
`Reg. No. 37,488
`
`
`
`
`
`
`
`
`
`
`11
`
`
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
