UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`XILINX, LLC,
`Petitioner,
`
`v.
`
`FG SRC LLC,
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2021-00633
`Patent No. 7,149,867
`
`
`
`
`
`
`
`
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`XILINX, LLC,
`Petitioner,
`
`v.
`
`FG SRC LLC,
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2021-00633
`Patent No. 7,149,867
`
`
`
`
`
`
`
`
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`
`
`I.
`
`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`STATEMENT OF PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner Xilinx,
`
`LLC moves for joinder with the inter partes review instituted against U.S. Patent
`
`No. 7,149,867 (“the ’867 Patent”) in Intel Corporation, v. FG SRC LLC, IPR2021-
`
`01449 (“the 1449 Proceeding”). This motion is timely filed within one month of
`
`institution in the 1449 Proceeding. Xilinx has consulted with counsel for Intel
`
`Corporation, the current petitioner in the 1449 Proceeding, and Intel does not does
`
`not oppose Xilinx’s request for joinder.
`
`Xilinx requests institution of the Petition for inter partes review filed
`
`concurrently herewith. Xilinx’s Petition is materially the same as the petition filed
`
`in the 1449 Proceeding. Xilinx’s Petition and the petition in the 1449 Proceeding
`
`challenge the same claims, on the same grounds, and rely on the same prior art and
`
`evidence, including an identical declaration from the same expert.1
`
`Xilinx agrees to proceed solely on the grounds, evidence, and arguments
`
`advanced, or that will be advanced, in the 1449 Proceeding as instituted. Xilinx’s
`
`Petition therefore warrants institution under 35 U.S.C. § 314, and 35 U.S.C. § 315(c)
`
`permits Xilinx’s joinder to the instituted 1449 Proceeding.
`
`
`
`
`
`1 The declaration is an exact duplicate of the declaration in the 1449 Proceeding.
`
`1
`
`
`
`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`Further, upon joining the 1449 Proceeding, Xilinx will act as an “understudy”
`
`and will not assume an active role unless Intel ceases to participate in the 1449
`
`Proceeding. Intel will maintain the lead role in the proceeding so long as it remains
`
`in the proceeding. These limitations will avoid lengthy and duplicative briefing.
`
`Xilinx also will not seek additional depositions or deposition time. Xilinx agrees to
`
`the foregoing conditions even in the event that other IPRs filed by other, third-party
`
`petitioners are joined with the 1449 Proceeding. Accordingly, the proposed joinder
`
`will neither unduly complicate the 1449 Proceeding nor delay its schedule.
`
`In fact, joinder will help efficiently resolve the disputes among the parties. By
`
`joinder, a single Board decision may dispose of the issues raised in the 1449
`
`Proceeding for all interested parties. Further, joinder will narrow the issues in the
`
`co-pending district court actions because Xilinx and Intel have each, contingent upon
`
`institution/joinder, stipulated to forego raising the same grounds of unpatentability
`
`in their respective parallel litigations. These considerable efficiencies at the district
`
`courts incur only de minimis cost at the PTAB. Joinder will not complicate or delay
`
`the 1449 Proceeding, and will not adversely affect any schedule set in that
`
`proceeding.
`
`Joinder will not unduly prejudice any party. Because joinder will not add any
`
`new substantive issues, delay the schedule, burden deponents, or increase needless
`
`filings, any additional costs on Patent Owner will be minimal. On the other hand,
`
`2
`
`
`
`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`denial of joinder would prejudice Xilinx. Xilinx’s interests may not be adequately
`
`protected in the 1449 Proceeding, particularly if Intel settles with Patent Owner.
`
`Xilinx should be allowed to join in a proceeding affecting a patent asserted against
`
`it. Joinder is especially appropriate here, where Patent Owner withheld its
`
`infringement allegations against Xilinx for 2.5 years. See Pet. at 14-15. Patent
`
`Owner’s litigation tactics should not exclude Xilinx from the PTAB.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`FG SRC LLC is the purported owner of the ’867 Patent. The ’867 Patent is
`
`involved in at least each of the following litigations:
`
`Court
`Number
`2-18-cv-00317 W.D. Wash.
`
`Filed
`Feb. 26, 2018
`
`Name
`SRC Labs, LLC et al v.
`Amazon Web Services, Inc et
`al
`FG SRC, LLC v. Intel
`Corporation
`1-20-cv-00601
`Apr. 30, 2020
`D. Del.
`FG SRC LLC v. Xilinx, Inc.
`III. STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`
`1-20-cv-00834 W.D. Tex.
`
`Apr. 24, 2020
`
`A. Legal Standards and Applicable Rules
`
`The Board has discretion to join a properly filed IPR petition to an existing
`
`IPR proceeding. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell Inc.
`
`v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 19, at 4-6; Sony Corp. v.
`
`Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013- 00326, Paper
`
`15, at 3-4; Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15, at 3-4.
`
`3
`
`
`
`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`“The Board will determine whether to grant joinder on a case-by-case basis, taking
`
`into account the particular facts of each case, substantive and procedural issues, and
`
`other considerations.” Dell, IPR2013-00385, Paper 19, at 3. The movants bear the
`
`burden of proof in establishing entitlement to the requested relief. 37 §§ 42.20(c),
`
`42.122(b). A motion for joinder should:
`
`(1) set forth the reasons why joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review; and (4) address specifically how briefing and discovery may be
`simplified.
`
`Dell, IPR2013-00385, Paper 19, at 4.
`
`B.
`Joinder with the 1449 Proceeding Is Appropriate
`The Board “routinely grants motions for joinder where the party seeking
`
`joinder introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper No.
`
`12 at 9 (Aug. 24, 2016) (emphasis added) (internal quotations and citations omitted).
`
`Here, joinder with the 1449 Proceeding is appropriate because Xilinx’s Petition
`
`introduces identical unpatentability arguments and the same grounds raised in the
`
`petition of the 1449 Proceeding. In other words, both petitions contain the same
`
`grounds based on the same prior art combinations and supporting evidence against
`
`the same claims. Indeed, there are no material changes to the facts, citations,
`
`4
`
`
`
`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`evidence, or arguments used in demonstrating satisfaction of the implicated claims
`
`by the applied prior art.
`
` Because these proceedings introduce identical
`
`unpatentability arguments and the same grounds, good cause exists for joinder, so
`
`that the Board, consistent with 37 C.F.R. § 42.1(b), can efficiently “secure the just,
`
`speedy, and inexpensive resolution” of this proceeding and the 1449 Proceeding.
`
`Moreover, Xilinx notes that the Board has indicated that the factors outlined
`
`by General Plastics are not particularly relevant here “where a different petitioner
`
`files a ‘me-too’ or ‘copycat’ petition in conjunction with a timely motion to join.”
`
`See, e.g., Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 at 9-11 (PTAB
`
`Oct. 30, 2018); Pfizer, Inc. v Genentech, Inc., IPR2017-02063, Paper 25 at 7-8
`
`(PTAB Feb. 21, 2018). And the present facts stand in stark contrast to the recent
`
`Apple Inc. v. Uniloc 2017 LLC case where the Board denied institution and joinder
`
`based on General Plastic. See IPR2020-00854, Paper 9 (PTAB “Precedential” Oct.
`
`28, 2020). In that case, the second-in-time petitioner seeking joinder had previously
`
`petitioned for, and been denied, inter partes review of the same patent. Id. at 2. Not
`
`so here. This is Xilinx’s first challenge against the ’867 Patent at the PTAB, and
`
`there is no risk of prejudice or abuse. Rather, through grant of this joinder, the Board
`
`is simply offered the opportunity to ensure that the 1449 Proceeding is not
`
`prematurely terminated based on opportunistic settlement by Patent Owner with
`
`fewer than all parties against which it has asserted the subject patent.
`
`5
`
`
`
`C.
`
`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`Joinder Will Not Add Any New Grounds of Unpatentability or
`Impact the Trial Schedule
`The Petition is based on the same grounds and combinations of prior art in the
`
`1449 Proceeding. For simplicity and efficiency, Xilinx has copied the substance of
`
`the petition in the 1449 Proceeding and its accompanying expert declaration. Xilinx
`
`does not seek to introduce grounds or claims not currently in the 1449 Proceeding
`
`and seeks only to join the proceeding as instituted. Patent Owner should not require
`
`any discovery beyond that which it may need in the 1449 Proceeding—nor should
`
`the Board permit any. The present Petition introduces no new substantive issues
`
`relative to the 1449 Proceeding and does not seek to broaden the scope of the 1449
`
`Proceeding.
`
`Joinder will not impact the 1449 Proceeding trial schedule because the present
`
`Petition presents no new issues or grounds of unpatentability. See LG, IPR2015-
`
`01353, Paper No. 11 at 6 (granting IPR and motion for joinder where “joinder should
`
`not necessitate any additional briefing or discovery from Patent Owner beyond that
`
`already required in [the original IPR]”). Further, Xilinx explicitly consents to the
`
`trial schedule as adopted in the 1449 Proceeding. There are no new issues for the
`
`Board to address, and Patent Owner will not be required to present any additional
`
`responses or arguments.
`
`The Patent Owner’s Response will also not be negatively impacted because
`
`the substantive issues presented in the present Petition are identical to the issues
`
`6
`
`
`
`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`presented in the 1449 Proceeding. Patent Owner will not be required to provide any
`
`additional analysis or arguments beyond what it will already provide in responding
`
`to the petition in the 1449 Proceeding. Also, because the present Petition relies on
`
`the same expert declaration, only a single deposition is needed for the proposed
`
`joined proceeding.
`
`Accordingly, joinder with the 1449 Proceeding does not unduly burden or
`
`negatively impact the trial schedule.
`
`D.
`Procedures to Simplify Briefing and Discovery
`Xilinx explicitly agrees to take an “understudy” role, which will simplify
`
`briefing and discovery. Specifically, Xilinx explicitly agrees, upon joining the 1449
`
`Proceeding, that the following conditions, as previously approved by the Board in
`
`similar circumstances, shall apply so long as Intel remains an active party:
`
`a) Xilinx will join all of Intel’s filings and oral arguments in the 1449
`
`Proceeding, unless a filing or oral argument concerns issues solely
`
`involving Xilinx;
`
`b) Xilinx shall not be permitted to raise any new grounds not instituted by
`
`the Board in the 1449 Proceeding, or introduce any argument or
`
`discovery not introduced by Intel;
`
`c) Xilinx shall be bound by any agreement between Patent Owner and the
`
`current Xilinx concerning discovery and/or depositions; and
`
`7
`
`
`
`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`d) Xilinx at deposition shall not receive any direct, cross examination or
`
`redirect time beyond that permitted under either 37 C.F.R. § 42.53 or
`
`any agreement between Patent Owner and Intel.
`
`See Noven Pharmaceuticals, Inc. v. Novartis AG, IPR2014-00550, Paper No. 38 at
`
`5 (Apr. 10, 2015). Unless and until Intel ceases to participate, Xilinx will not assume
`
`an active role in the 1449 Proceeding.
`
`Thus, by Xilinx accepting an “understudy” role, the parties can comply with
`
`the trial schedule assigned to the 1449 Proceeding without needing any duplicative
`
`efforts by the Board or Patent Owner. These steps minimize the possibility of any
`
`complication or delay from joinder. See LG, IPR2015-01353, Paper No. 11 at 6-7
`
`(granting IPR and motion for joinder because “joinder would increase efficiency by
`
`eliminating duplicative filings and discovery, and would reduce costs and burdens
`
`on the parties as well as the Board” where petitioners agreed to an “understudy”
`
`role). Xilinx is further willing to agree to any other reasonable conditions the Board
`
`deems necessary.
`
`IV. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the 1449
`
`Proceeding. Xilinx files this motion under the statutory joinder provisions as
`
`contemplated by the AIA. Joinder will simplify the issues and promote efficiency,
`
`justice, and speed.
`
`8
`
`
`
`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`For the foregoing reasons, Xilinx respectfully requests inter partes review of
`
`U.S. Patent No. 7,149,867 and joinder with Intel Corporation, v. FG SRC LLC,
`
`IPR2021-01449.
`
`
`
`
`Date: March 15, 2021
`
`
`
`
`Customer Number 26191
`Fish & Richardson P.C.
`Telephone: (202) 783-5070
`Facsimile: (877) 769-7945
`
` Respectfully submitted,
`
`/Kenneth Wayne Darby Jr./
`
` David M. Hoffman, Reg. No. 54,174
` Kenneth Wayne Darby Jr., Reg. No. 65,068
` Attorneys for Petitioner
`
`
`
`9
`
`
`
`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on March 15,
`
`2021, a complete and entire copy of this Petitioner’s Motion for Joinder was
`
`provided via FedEx to the Patent Owner by serving the correspondence email
`
`address of record as follows:
`
`LARKIN HOFFMAN DALY & LINDGREN, LTD.
`8300 Norman Center Drive
`Suite 1000
`Minneapolis MN 55437
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
`
`10
`
`
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
