Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Date: June 17, 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.
`SZPONDOWSKI, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 11
`Date: June 17, 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.
`SZPONDOWSKI, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`
`
`
`
`
`
`
`
`IPR2021-00633
`Patent 7,149,867
`
`
`On March 15, 2021, Petitioner Xilinx, Inc. (“Petitioner” or “Xilinx”)
`filed a Petition requesting inter partes review of claims 1–19 of U.S. Patent
`No. 7,149,867 (“’867 patent”) (Paper 2, “Petition” or “Pet.”). 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, IPR2020-01449,
`which also concerns claims 1–19 of the ’867 patent (Paper 3, “Motion for
`Joinder”). Patent Owner FG SRC LLC (“Patent Owner”) filed an
`Opposition to Petitioner’s Motion for Joinder and Motion for Additional
`Discovery (Paper 7, “Motion”). Petitioner filed a Reply to Patent Owner’s
`Opposition to Petitioner’s Motion for Joinder and Petitioner’s Opposition to
`Patent Owner’s Motion for Additional Discovery (Paper 9, “Opp.”). Patent
`Owner filed a Sur-reply In Support of its Opposition to Petitioner’s Motion
`for Joinder and Reply in Support of its Motion for Additional Discovery
`(Paper 10, “Reply”).
`This Order addresses Patent Owner’s Motion for Additional
`Discovery (Paper 7). Petitioner’s Motion for Joinder (Paper 3) will be
`addressed separately at a later date. For the following reasons, we deny
`Patent Owner’s Motion for Additional Discovery.
`I. BACKGROUND
`In October 2017 and February 2018, in separate lawsuits that were
`later consolidated, Patent Owner asserted the ’867 patent and U.S. Patent
`No. 9,153,311 (“the ’311 patent”) against Xilinx’s customer Amazon.com,
`Inc. and Amazon Web Services, Inc. (“Amazon”) relating to Amazon’s use
`of Xilinx’s FPGA products (“Amazon cases”). Motion 2–3; Opp. 2. Xilinx
`was not accused of infringement at that time, but was served with a
`
`2
`
`
`
`IPR2021-00633
`Patent 7,149,867
`
`subpoena in these cases in January 2018. Motion 3; Opp. 2; Pet. 5. The
`Amazon cases are currently stayed. Pet. 5.
`On July 13, 2018, Xilinx filed a petition for inter partes review in
`IPR2018-01395 against the ’311 patent, which was later denied. Motion 3–
`4. On October 19, 2018, Amazon filed a petition for inter partes review in
`IPR2019-00103 against the ’867 patent, which was also later denied.
`Motion 3–4; Opp. 2. In April 2020, Patent Owner asserted the ’867 patent
`against Xilinx. Pet. 5; Paper 5, 2.
`II. ANALYSIS
`In its Mandatory Notices, Petitioner Xilinx identifies itself as the real
`party in interest (“RPI”). Pet. 1. Xilinx further states:
`As to the related matters below, Amazon and Xilinx have a
`customer/supplier relationship. Although Xilinx Ultrascale+
`FPGAs and its Vivado Design Suite are referenced in a pending
`SRC Labs complaint against Amazon (identified below), Xilinx
`has not assumed the defense of any claim against Amazon in
`litigation and exercises no control over Amazon’s litigation
`defense. Similarly, Amazon does not exercise control over this
`Petition, has not funded this Petition, and has not participated in
`Xilinx’s preparation and filing of this Petition.
`
`
`Id. 1
`
`Patent Owner argues that “Amazon should have been listed as a real
`party in interest (“RPI”) or privy to Xilinx’s ’867 petition,” which “would
`have time barred the petition” and, therefore “requests discovery that goes to
`
`
`1 In a nearly identical statement, Xilinx identified only itself as the real party
`in interest in IPR2018-01395. IPR2018-01395, Paper 1 at 2–3. Amazon
`likewise identified only itself as the real party in interest in IPR2019-00103.
`IPR2019-00103, Paper 1 at 1–2.
`
`3
`
`
`
`IPR2021-00633
`Patent 7,149,867
`
`the status of Xilinx as a RPI and/or privy of Amazon.”2 Motion 5, 8. Patent
`Owner seeks the following documents:
`(1) the supplier contract[s] and any amendments or supplements
`thereto between Amazon and Xilinx concerning the Xilinx
`UltraScale+FPGA and Vivado Design Suite;
`
`(2) any communications between Amazon and Xilinx relating to the
`’867 or ’311 patents, or the products specifically identified and
`accused in the Amazon litigations (i.e., the Xilinx UltraScale+ FPGA
`and Vivado Design Suite) between Oct. 18, 2017 (the filing date of
`the first Amazon suit) and March 15, 2021 (the filing date of the
`current Petition); and
`
`(3) any confidentiality, joint defense, or indemnification agreements
`related to the Amazon litigations.
`
`
`Motion 14.
`
`Patent Owner argues that, under the factors set forth in Garmin
`Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 at 6–7
`(PTAB Mar. 5, 2013), the interests of justice support production of the
`foregoing documents. Motion 9. Petitioner opposes. See Opp.
`A. Relationship to the Motion for Joinder
`Patent Owner’s arguments in opposition to the Motion for Joinder are
`solely based upon Amazon’s alleged status as a real party in interest or
`privy. See Motion 4–8; Reply 1–2, 8. In authorizing further briefing on
`Patent Owner’s Motion for Additional Discovery, we requested that the
`Parties “explain the impact of a determination [that Amazon should have
`been listed as a real party in interest or privy to the Petition],” that is, “the
`
`
`2 We note that Patent Owner refers to “the status of Xilinx as a RPI and/or
`privy of Amazon,” but the proper inquiry is the reverse – whether Amazon is
`an RPI and/or privy of Xilinx.
`
`4
`
`
`
`IPR2021-00633
`Patent 7,149,867
`
`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).”3 Paper 8, 3. There is no dispute
`that Amazon was served with a complaint alleging infringement of the ’867
`patent more than one year before the Petition was filed. See Motion 2–3, 13;
`Opp. 2.
`Patent Owner explains that the impact of Amazon being a real party in
`interest is that the Petition would have been time-barred under § 315(b)
`because Amazon should have been listed as a real party in interest or privy
`to Xilinx’s Petition. Motion 5, 8; id. at 13 (“the requested discovery goes to
`the threshold question of whether the IPR Petitions are time-barred under
`§ 315(b).”).4 In the Reply, however, Patent Owner concedes that a time-
`barred party may be joined to an existing IPR under § 315(b), and appears to
`redirect its argument to deficiencies under § 312(a)(2). 5 Reply 1–2, 10.
`Petitioner argues that “[e]ven if Amazon were an unnamed RPI or
`privy . . . the one-year time bar would not preclude Petitioner’s Motion [for
`Joinder] because joinder is an exception to the time bar.” Opp. 6.
`Petitioner, therefore, argues “whether Amazon is an unnamed RPI or privy is
`of minimal importance to the Board’s decision on joinder.” Id. at 7.
`We agree with Petitioner. Section 315(b) states that “[a]n inter partes
`review may not be instituted if the petition requesting the proceeding is filed
`more than 1 year after the date on which the petitioner, real party in interest,
`
`
`3 Patent Owner did not request authorization to file its Motion for Additional
`Discovery before filing it, as required under 37 C.F.R. § 42.20(b). See Paper
`8, n. 1. However, after conducting a conference with the Parties, we
`authorized Patent Owner’s Motion. Id.
`4 Patent Owner refers to “IPR Petitions.” We assume this is a typographical
`error, as Xilinx has only filed one Petition.
`5 Patent Owner cites incorrectly 35 U.S.C. § 312(b)(2). Reply 2.
`
`5
`
`
`
`IPR2021-00633
`Patent 7,149,867
`
`or privy of the petitioner is served with a complaint alleging infringement of
`the patent. The time limitation set forth in the preceding sentence shall not
`apply to a request for joinder under subsection (c).” (emphasis added).
`Therefore, even if Amazon is a real party in interest or privy, the time bar of
`§ 315(b) would not preclude joinder of the Petition. See Facebook, Inc. v.
`Windy City Innovations, LLC, 973 F.3d 1321, 1333 (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).”)
`Patent Owner further argues that the Petition was not “properly filed”
`under 35 U.S.C. § 312(a)(2) because Petitioner did not satisfy the real party
`in interest disclosure requirement. Reply 1–2. As a result, Patent Owner
`argues that Petitioner’s failure to identify Amazon as a real party in interest
`precludes its Petition from being instituted, which “renders its Motion to
`Join moot.” Id. at 2; see also id. at 10 (“Xilinx’s Motion for Joinder should
`be denied for failure to disclose Amazon as an RPI”).
`Petitioner asserts that the Petition correctly names all real parties in
`interest and further contends that “the typical remedy when the Board finds
`an RPI left unnamed in good faith is simply for the petitioner to update its
`mandatory notices.” Opp. 4–6, 8 (citing Mayne Pharma Int’l Pty. Ltd. v.
`Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019);
`SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 18
`(Oct. 6, 2020) (precedential)); see also Wi-Fi One, LLC v. Broadcom Corp.,
`878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc) (“if a petition fails to
`
`6
`
`
`
`IPR2021-00633
`Patent 7,149,867
`
`identify all real parties in interest under § 312(a)(2), the Director can, and
`does, allow the petitioner to add a real party in interest”).
`We are not persuaded by Patent Owner’s arguments. Section
`312(a)(2) states that “[a] petition . . . may be considered only if . . . the
`petition identifies all real parties in interest.” See also 37 C.F.R. § 42.104
`(requiring inter partes review petitions to include mandatory notices,
`including identifying real parties in interest). “This provision serves
`important notice functions to patent owners, to identify whether the
`petitioner is barred from bringing an IPR due to an RPI that is time-barred or
`otherwise estopped, and to the Board, to identify conflicts of interests that
`are not readily apparent from the identity of the petitioner.” SharkNinja,
`Paper 11 at 17 (footnote omitted) (citations omitted). Petitioners must
`comply with these requirements in good faith. See 37 C.F.R. § 42.11(a).
`
`Even if Petitioner failed to identify Amazon as a real party in interest,
`denial of institution is not the appropriate remedy. Our jurisdiction to
`consider a petition does not require a “correct” identification of all real
`parties in interest in a petition. Lumentum Holdings, Inc. v. Capella
`Photonics, Inc., IPR2015-00739, Paper 38 at 5 (PTAB Mar. 4, 2016)
`(precedential) (holding that “a lapse in compliance with” the requirements of
`35 U.S.C. § 312(a) “does not deprive the Board of jurisdiction over the
`proceeding, or preclude the Board from permitting such lapse to be
`rectified”); Mayne Pharma, 927 F.3d at 1232 (“[I]f a petition fails to identify
`all real parties in interest under § 312(a)(2), the Director can, and does,
`allow the petitioner to add a real party in interest.” (quoting Wi-Fi One, 878
`F.3d at 1374 n.9)).
`
`7
`
`
`
`IPR2021-00633
`Patent 7,149,867
`
`
`In SharkNinja, the Board explained that we need not address whether
`a party is an unnamed real party in interest unless the time bar or estoppel
`provisions under 35 U.S.C. § 315 would be implicated. SharkNinja, Paper
`11 at 18. Due to the lack of allegations regarding either a time bar or
`estoppel, the Board declined to decide the real party in interest issue at the
`institution stage because deferring that decision for after institution “better
`serves the interest of cost and efficiency.” Id. at 19–20 (footnote omitted).
`Here, although Patent Owner argues that “Petitioner seeks to
`circumvent the § 315(b) time bar through its Petition and Motion for
`Joinder,” Patent Owner concedes that a time-barred party may be joined to
`an existing IPR. Motion 5; Reply 1–2, 10. Given that Patent Owner
`concedes that a time-barred party may be joined to an existing IPR,
`addressing allegations of time bar are not necessary in the context of the
`Motion for Joinder. We, therefore, are not convinced at this stage of the
`proceeding in the context of the Motion for Joinder that it best serves the
`interest of cost and efficiency to engage in an exercise to determine whether
`Amazon should have been named as a real party in interest or is a privy to
`Xilinx. See SharkNinja, Paper 11 at 19–20.
`B. Patent Owner’s Requests for Additional Discovery
`Our procedures are designed “to secure the just, speedy, and
`inexpensive resolution of every proceeding” and thus provide for limited
`discovery during inter partes reviews. 37 C.F.R. §§ 42.1(b), 42.51. Under
`Section 42.51(b)(2)(i), a party requesting additional discovery “must show
`that such discovery is in the interests of justice.” The Board has identified
`factors important in determining whether a request for additional discovery
`meets the standard of being “in the interest of justice” as: (1) more than a
`
`8
`
`
`
`IPR2021-00633
`Patent 7,149,867
`
`possibility and mere allegation that something useful will be found; (2)
`requests that do not seek the other party’s litigation positions and the
`underlying basis for those positions; (3) ability to generate equivalent
`information by other means; (4) easily understandable instructions; and (5)
`requests that are not overly burdensome to answer. Garmin, Paper 26 at 6–
`7. The first of these factors weighs decisively in our consideration of Patent
`Owner’s Motion for Additional Discovery.
`“The party requesting discovery should already be in possession of
`evidence tending to show beyond speculation that in fact something useful
`will be uncovered.” Garmin, Paper 26 at 6 (Garmin Factor 1). In Garmin
`the Board clarified that “[t]he mere possibility of finding something useful,
`and mere allegation that something useful will be found, are insufficient to
`demonstrate that the requested discovery is necessary in the interest of
`justice.” Id. “Useful” in this context does not mean merely “relevant”
`and/or “admissible,” but means favorable in substantive value to a
`contention of the party moving for discovery. Id.
`Patent Owner contends that its requested discovery “directly pertains
`to this IPR petition regarding the ’867 patent because (1) Xilinx failed to
`name all RPIs in its petition, as required by 37 C.F.R. § 42.8(b)(1); and (2)
`this IPR petition is time-barred by 35 U.S.C. § 315(b) because RPI Amazon
`was served with a complaint for patent infringement more than a year prior
`to filing of this petition.” Motion. 8. Specifically, Patent Owner argues:
`Amazon’s and Xilinx’s actions strongly indicate that: (1) they
`have a supplier contract which likely includes indemnity
`provisions concerning the products accused of infringement in
`the Amazon litigations; (2) the ’867 patent at issue in this IPR
`Petition was asserted in the Amazon litigation and applies to
`products made by Xilinx that are being used by its customer,
`
`9
`
`
`
`IPR2021-00633
`Patent 7,149,867
`
`
`Amazon; and (3) based on its commonality of interests with
`Amazon, Xilinx filed an IPR against the ’311 patent (which was
`denied) even though it had not been asserted against Xilinx,
`while Amazon, on the other hand, filed a corresponding IPR
`against the ’867 patent (which was also denied).
`
`
`Motion 9–10; see also Reply 8.
`Petitioner argues that Patent Owner’s arguments are based on
`speculation and further argues that “Patent Owner utterly fails to establish
`that additional discovery would produce ‘useful’ information.” Opp. 9.
`
`Patent Owner does not explain persuasively how information related
`to any relationship between Xilinx and Amazon would be “useful” to this
`specific proceeding, particularly in light of the pending Motion for Joinder.
`Patent Owner argues that “the requested discovery is useful because it goes
`to the threshold question of whether the IPR Petitions are time-barred.”
`Motion 13. However, as discussed above, even if Amazon were a real party
`in interest or privy in this proceeding, the time bar of § 315(b) would not
`prohibit joinder. Thus, the “threshold question of whether the IPR Petition[]
`[is] time-barred” does not establish that Patent Owner’s requested discovery
`is based on more than a mere possibility of finding something useful, as
`required under the first Garmin factor. See Opp. 9–10.
`At this time, Patent Owner’s allegations, without more, are merely
`speculative. We, therefore, determine Patent Owner has failed to show that
`it is already “in possession of evidence tending to show beyond speculation
`that in fact something useful will be uncovered.” On this record, and at this
`time, we find Patent Owner’s desire to verify Petitioner’s identification of
`real parties in interest does not warrant additional discovery.
`
`10
`
`
`
`IPR2021-00633
`Patent 7,149,867
`
`
`Accordingly, because Patent Owner has not shown “more than a
`possibility and mere allegation that something useful will be discovered,” we
`deny Patent Owner’s Motion for Additional Discovery.
`III. CONCLUSION
`In consideration of the above, we are not persuaded that Patent Owner
`has demonstrated that the discovered information would serve any useful
`purpose to advance its arguments under 35 U.S.C. § 315(b), § 315(c) and/or
`35 U.S.C. § 312(a)(2) in this proceeding or is in the interest of justice at this
`time. We, therefore, deny Patent Owner’s Motion for Additional Discovery.
`However, Patent Owner may seek our authorization to renew its request
`during the course of trial.
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Motion for Additional Discovery is
`denied.
`
`11
`
`
`
`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
`
`
`12
`
`
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