UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`APPLE, INC.,
`
`Petitioner,
`
`v.
`
`FUTURE LINK SYSTEMS, LLC,
`
`Patent Owner.
`__________________________
`
`Case No.: IPR2021-01488
`
`U.S. Patent No. 6,807,505
`_____________________________
`
`PATENT OWNER FUTURE LINK SYSTEMS, LLC’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`APPLE, INC.,
`
`Petitioner,
`
`v.
`
`FUTURE LINK SYSTEMS, LLC,
`
`Patent Owner.
`__________________________
`
`Case No.: IPR2021-01488
`
`U.S. Patent No. 6,807,505
`_____________________________
`
`PATENT OWNER FUTURE LINK SYSTEMS, LLC’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`IPR2021-01488
`U.S. Patent No. 6,807,505
`
`TABLE OF CONTENTS
`INTRODUCTION .......................................................................................... 1
`I.
`II. OVERVIEW OF ’505 PATENT AND CHALLENGED CLAIMS .............. 2
`III. PETITIONER FAILS TO PRESENT A PROPER BASIS FOR
`INSTITUTION ............................................................................................... 3
`A.
`Petitioner Fails To Apply The Claim Elements Consistently .............. 4
`B.
`Petitioner Fails To Apply Its Own Claim Construction ....................... 5
`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`INSTITUITION .............................................................................................. 7
`1. Whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted .................................. 9
`2. Proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision ............................. 10
`3. Investment in the parallel proceeding by the court and the
`parties ........................................................................................... 10
`4. Overlap between issues raised in the petition and in the
`parallel proceeding ....................................................................... 11
`5. Whether the petitioner and the defendant in the parallel
`proceeding are the same party ..................................................... 12
`6. Other circumstances that impact the Board’s exercise of
`discretion, including the merits .................................................... 12
`7. All factors favor denying institution ............................................ 12
`CONCLUSION ............................................................................................ 13
`
`V.
`
`
`
` i
`
`
`
`
`
`Exhibit No.
`2001
`
`2002
`
`
`
`
`EXHIBITS
`
`Description
`Joint Agreed Scheduling Order, dated October 7, 2021 (Dkt. 29)
`
`Defendant’s Preliminary Invalidity Contentions, dated
`September 16, 2021
`
`
`
`ii
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`The Petition seeks review of claims 1, 6, and 8 of U.S. Patent No. 6,807,505
`
`(the “’505 patent”) on a single asserted ground of single reference obviousness
`
`under 35 U.S.C. § 103. Claim 1 is the only challenged independent claim. The
`
`challenged claims relate to testing electronic circuits and the use of a test unit to
`
`test interconnects between the electronic circuit and other electronic circuits using
`
`a combinatorial circuit. The claims contemplate an electronic circuit comprising
`
`various elements, including interconnects – input/output nodes, a main unit, and a
`
`test unit. The Petition, however, contains significant inconsistencies in its attempt
`
`to identify the claim elements in the prior art. These inconsistencies constitute a
`
`failure of the Petition to meet the basic standard for institution.
`
`Additionally, the Board should exercise its discretion and decline to institute
`
`the Petition under the Fintiv criteria. Petitioner conceded that the trial date
`
`proposed for the parallel District Court action is approximately two months before
`
`the final decision date for this matter. Since the filing of the Petition, the District
`
`Court entered the schedule proposed by the parties. Petitioner offers little more
`
`than speculation to suggest that this date will change based on unproduced and
`
`unverifiable data. But even if Petitioner’s “evidence” in Exhibit 1010 were to be
`
`accepted, it shows that even if the average amount of “slippage” of the trial date
`
`occurred, trial would still occur well before the final decision date for this
`
`
`
`1
`
`
`
`IPR2021-01488
`U.S. Patent No. 6,807,505
`proceeding. Thus, Patent Owner respectfully submits that the Board should apply
`
`its discretion to deny institution of the Petition for this additional reason.
`
`II. OVERVIEW OF ’505 PATENT AND CHALLENGED CLAIMS
`
`The ’505 patent (Ex. 1001) issued October 19, 2004 from a U.S. Application
`
`filed July 16, 2003. It claims priority to several foreign applications, the earliest of
`
`which was filed February 22, 1998. The ’505 patent discloses improved electronic
`
`circuits containing test units for testing interconnects of the electronic circuits. In
`
`particular, the patent teaches the use of test units comprising a combinatorial
`
`circuit implementing at least one of an XNOR and an XOR function.
`
`The ’505 patent explains that the invention provides for efficient testing of
`
`interconnects without the need for compliance with a particular protocol. Ex. 1001
`
`at col. 2:25-54. It further relates to an electronic circuit that includes a test unit for
`
`testing interconnects as part of the circuit itself. Id. at col. 1:7-15. The patent goes
`
`on to provide various examples of test units implemented using combinatorial
`
`circuits. See generally, Ex. 1001 at col. 9:57-12:20.
`
`The Petition challenges claims 1, 6, and 8. Only claim 1 is independent. It
`
`recites:
`
`1.
`
`An electronic circuit comprising:
`
`a plurality of input/output (I/O) nodes for connecting the electronic circuit to
`
`a further electronic circuit via interconnects,
`
` 2
`
`
`
`IPR2021-01488
`U.S. Patent No. 6,807,505
`a main unit for implementing a normal mode function of the electronic
`
`circuit,
`
`and a test unit for testing the interconnects,
`
`the electronic circuit having a normal mode in which the I/O nodes are
`
`logically connected to the main unit and a test mode in which the I/O nodes are
`
`logically connected to the test unit,
`
`wherein the test unit comprises at least one combinatorial circuit
`
`implementing at least one of an XNOR function and an XOR function with at least
`
`two function inputs and a function output, the function inputs being connected to
`
`particular I/O nodes arranged to operate as input nodes of the test circuit and the
`
`function output being connected to a particular I/O node arranged to operate as
`
`output node of the test circuit.
`
`III. PETITIONER FAILS TO PRESENT A PROPER BASIS FOR
`INSTITUTION
`
`Independent claim 1 of the ’505 patent claims an electronic circuit that has
`
`1) input/output nodes, 2) a main unit, and 3) a test unit comprising at least one
`
`combinatorial circuit. All three of these components are part of the same
`
`electronic circuit of the preamble. Multiple claim elements reference one or more
`
`of these components, but Petitioner fails to apply them consistently within the
`
`petition. Further, Petitioner fails to present evidence showing that the asserted
`
` 3
`
`
`
`IPR2021-01488
`U.S. Patent No. 6,807,505
`prior art meets the claim construction for which Petitioner advocated in the
`
`Petition. Each of these is an independent reason why institution should be denied.
`
`A.
`Petitioner Fails To Apply The Claim Elements Consistently
`In discussing the preamble, Petitioner highlights what it contends to be the
`
`“electronic circuit” in the Hong reference corresponding to the electronic circuit of
`
`the challenged claims. Petitioner draws a red box around this alleged electronic
`
`circuit at page 23 of the Petition. In connection with claim element 1c (the test
`
`unit), however, Petitioner draws from not only the previously-identified electronic
`
`circuit, but from a separate, adjacent electronic circuit. Petitioner creates a new
`
`figure (never shown in the Hong reference) at page 31 of the Petition in which the
`
`alleged “electronic circuit” of Hong is replicated, adjacent to the previously-
`
`identified electronic circuit. Petitioner appears to suggest that the “test unit” spans
`
`not just the electronic circuit identified in connection with the preamble, but also
`
`another, separate electronic circuit. However, the test unit of the challenged claims
`
`is part of the same electronic circuit as the other components, not part of a further
`
`electronic circuit as Petitioner seems to argue. This inconsistency between the
`
`claimed invention and the cited Hong reference is fatal to the Petition. This is
`
`particularly important because in claim element e, the test unit must include a
`
`combinatorial circuit implementing an XNOR or XOR function. Petitioner points
`
`to the purported combinatorial circuit in an annotated figure on page 32 of the
`
` 4
`
`
`
`IPR2021-01488
`U.S. Patent No. 6,807,505
`Petition (labeling it “Exclusive-OR Tree”). But when referring back to Petitioner’s
`
`figure on page 31, the combinatorial circuit in the flow of Petitioner’s supposed
`
`test unit is not located on the electronic circuit of the preamble, but on a second,
`
`further electronic circuit.
`
`While Petitioner never clearly identifies the particular components it
`
`contends make up the “test unit” in Hong, it certainly cannot suggest that the
`
`purported combinatorial circuit must be a part of the “test unit” and that the “test
`
`unit” must be a part of the same “electronic circuit” identified in the preamble (and
`
`not a separate electronic circuit). Consequently, the Petition is inconsistent in its
`
`presentation of these elements. That inconsistency can also be seen in the flow
`
`diagram Petitioner creates on page 39 of the Petition where the “test unit” is
`
`depicted as spanning multiple separate electronic circuits, contrary to the structure
`
`of the claims. These inconsistencies are fatal to the Petition and provide a
`
`sufficient basis to deny institution as it affects the only challenged independent
`
`claim, and therefore all dependent claims as well.1
`
`B. Petitioner Fails To Apply Its Own Claim Construction
`Petitioner advocates for a construction of “testing the interconnects” from
`
`independent claim 1 of the ’505 patent. It asserts that this phrase should be
`
`
`1 Patent Owner here identifies exemplary bases on which the Petition fails to carry its burden to
`warrant institution. These bases are identified without prejudice to Patent Owner identifying
`additional bases on which the Petition is defective should a trial be instituted on the Petition.
`
` 5
`
`
`
`IPR2021-01488
`U.S. Patent No. 6,807,505
`construed as “applying test data to one end of an interconnect and observing
`
`response data at the other end.” Petition at 12. Petitioner further explains that
`
`“testing the interconnects” refers to the interconnects “connecting the input and
`
`output nodes of one electronic circuit to a further electronic circuit.” Id.
`
`Despite advocating for this construction, however, Petitioner makes no
`
`mention of it in the discussion of the relevant claim elements, nor does Petitioner
`
`endeavor to show that the asserted prior art meets this construction.
`
`In discussing claim element 1(a) (referring to a plurality of input/output
`
`nodes for connecting the electronic circuit to a further electronic circuit via
`
`interconnects), Petitioner provides several figures, but it identifies only inputs 12
`
`and outputs 14 as “module-to-module conductors”. Petition at 25. Petitioner
`
`provides a similar illustration of the interconnections it relies upon in the figure at
`
`page 26 of the Petition. Thus, Petitioner asserts that these are the interconnects of
`
`the “electronic circuit” of Hong to be tested.
`
`Claim element 1(c) refers to “a test unit for testing the interconnects.”
`
`Petitioner discusses this claim element at pages 30-34 of the Petition. However,
`
`nowhere in these pages does Petitioner even reference its proffered construction for
`
`“testing the interconnects,” nor explain how that construction is met by the
`
`proffered Hong reference. Petitioner does not suggest where test data is applied to
`
`one end of an interconnect, nor the observation of response data at the other end of
`
` 6
`
`
`
`IPR2021-01488
`U.S. Patent No. 6,807,505
`that interconnect. To the extent Petitioner attempts to do so, it does not appear to
`
`rely on the same interconnects that it identified as connected to a further electronic
`
`circuit in claim element 1(a). Petitioner seems to show (on page 31) test data being
`
`input separately from a different input (not one of the inputs connected to a further
`
`electronic circuit that it referenced in connection with element 1(a), and then test
`
`data being output not from the other end of one of the interconnects identified in
`
`connection with element 1(a), but from a separate output (labeled 14a) on an
`
`entirely separate electronic circuit. Petitioner does not explain in the Petition 1)
`
`how either 12a or 14a are interconnects to a further electronic circuit (instead it
`
`points to other elements of the Hong figures); or 2) how the pathway involving
`
`these elements shown on page 31 of the Petition meets the proffered construction
`
`of “applying test data to one end of an interconnect and observing response data at
`
`the other end.” Petitioner’s failure is particularly notable in the figure on page 31
`
`of the Petition because, as discussed in the preceding section, the alleged input and
`
`output of test data are not even a part of the same electronic circuit. Petitioner’s
`
`failure to apply its own proffered claim construction is an additional, independent
`
`reason to deny institution of the Petition.
`
`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION TO
`DENY INSTITUITION
`
`
` 7
`
`
`
`IPR2021-01488
`U.S. Patent No. 6,807,505
`The Board has discretion to deny institution where the same parties are already
`
`litigating the same issues in a district court proceeding where those issues will be
`
`resolved in the district court before the time when a final written decision would be
`
`issued by the Board. See 35 U.S.C. § 314(a); NHK Spring Co., Ltd. v. Intri-Plex
`
`Technologies, Inc., IPR2018-00752, Paper No. 8 (PTAB Sept. 12, 2018)
`
`(Precedential); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper No. 11 (PTAB Mar.
`
`20, 2020) (Precedential). In the Apple decision denying institution, the Board set
`
`forth six factors for considering whether a discretionary denial of institution is
`
`warranted under Section 314(a):
`
`
`1. whether the court granted a stay or evidence exists that one may be granted
`
`if a proceeding is instituted;
`
`2. proximity of the court’s trial date to the Board’s projected statutory
`
`deadline for a final written decision;
`
`3. investment in the parallel proceeding by the court and the parties;
`
`4. overlap between issues raised in the petition and in the parallel proceeding;
`
`5. whether the petitioner and the defendant in the parallel proceeding are the
`
`same party; and
`
`6. other circumstances that impact the Board’s exercise of discretion,
`
`including the merits.
`
` 8
`
`
`
`IPR2021-01488
`U.S. Patent No. 6,807,505
`Apple, IPR2020-00019, Paper No. 11 at 6. Here, the factors favor denying
`
`institution.
`
`1. Whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted
`Here, no stay of District Court proceedings has either been requested or
`
`granted in relation to this pending IPR Petition. Further, the District Court has
`
`scheduled trial in the parallel proceeding for January 11, 2023. Ex. 2001. Petitioner
`
`concedes that this date is approximately two months before the deadline for a final
`
`written decision in this proceeding even if instituted (actually closer to three
`
`months). Petitioner cannot show any reasonable likelihood that the District Court
`
`will enter a stay if this proceeding is instituted. Though it suggests this factor
`
`somehow favors institution, Petitioner cites no case where this District Court has
`
`granted a stay, particularly on facts similar to those present here. The District Court
`
`has previously denied motions to stay proceedings pending IPR petitions,
`
`particularly where trial in the District Court is set before the statutory deadline for a
`
`final written decision. See, e.g., Multimedia Content Management LLC v. Dish
`
`Network L.L.C., Case No. 6:18-CV-00207-ADA, Dkt. # 73, (W.D. Tex. May 30,
`
`2019) (denying motion to stay); Continental Intermodal Group-Trucking LLC v.
`
`Sand Revolution LLC, Case No. 7:18-CV-00147-ADA, (W.D. Tex. July 22, 2020),
`
`Order Denying Motion to Stay. This factor thus favors denial of institution.
`
` 9
`
`
`
`IPR2021-01488
`U.S. Patent No. 6,807,505
`Proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision
`As noted above, the District Court has set trial in the parallel proceeding for
`
`2.
`
`January 11, 2023. The projected statutory deadline for a final written decision in
`
`this proceeding, if instituted, would be in April 2023, approximately three months
`
`after the District Court trial date. Thus, the District Court’s trial date would
`
`substantially predate completion of this proceeding if instituted. Petitioner argues
`
`that trial dates often “slip” and thus should not be relied upon. To support this,
`
`Petitioner presents an article (Ex. 1010) purporting to summarize some unspecified
`
`data about changes in trial dates. This “evidence” reveals little about the manner in
`
`which it was collected, or even the actual nature of the information used for the
`
`conclusions. Moreover, even if taken at face value, this exhibit purports to show
`
`that the “average” shift in trial date in the Western District of Texas where this case
`
`is pending is 23 days. Even if such an average shift occurred, the District Court
`
`would still try this case more than two months before the final written decision date.
`
`As such, this fact clearly favors denial of institution.
`
`3.
`
`Investment in the parallel proceeding by the court and the
`parties
`The District Court has already begun claim construction proceedings in the
`
`parallel proceeding. The parties have completed all claim construction briefing and
`
`the District Court has scheduled a claim construction hearing for February 23, 2022.
`
` 10
`
`
`
`IPR2021-01488
`U.S. Patent No. 6,807,505
`The District Court has also already conducted claim construction proceedings on a
`
`related patent to the ’505 patent - the ’108 patent - in a related action between Patent
`
`Owner and Advanced Micro Devices. The ’505 Patent is a divisional from the
`
`application that issued as the ’108 patent. Thus, the District Court has had to
`
`familiarize itself with the intrinsic record of the patent. The parties have also
`
`exchanged preliminary infringement and invalidity contentions, engaged in early
`
`discovery relating to licensing and venue issues, and are about to begin full fact
`
`discovery pursuant to the schedule set by the District Court. The parties and the
`
`Court have thus invested substantial resources, including substantial investments by
`
`both the Court and the parties on the merits of the case. This factor favors denial of
`
`institution.
`
`4.
`
`Overlap between issues raised in the petition and in the
`parallel proceeding
`The Petition presents grounds based on the Hong prior art reference.
`
`Petitioner has indicated its intention to rely on this reference as invalidating art in
`
`the District Court. See Ex. 2002 at 71. Thus, the overlap between the issues raised
`
`in the Petition and the parallel proceeding is essentially complete. Petitioner makes
`
`the hollow offer that if its Petition is instituted, it will not rely on the Hong art in the
`
`District Court. Such a proffer is virtually meaningless because if the Petition is
`
`instituted but unsuccessful, Petitioner would be estopped from reliance on Hong, or
`
` 11
`
`
`
`IPR2021-01488
`U.S. Patent No. 6,807,505
`indeed any patent or printed publication that could have been identified in the
`
`Petition. See generally 35 U.S.C. § 315(e). This factor favors denial of institution.
`
`5. Whether the petitioner and the defendant in the parallel
`proceeding are the same party
` Here, there is no dispute that the parties to the Petition are the same as the
`
`parties to the District Court action.
`
`6.
`
`Other circumstances that impact the Board’s exercise of
`discretion, including the merits
`As shown above, the Petition substantively lacks merit in its failure to present
`
`evidence or argument sufficient to warrant institution. However, as the Board has
`
`indicated in its prior decisions, even if the merits issues alone would not lead to
`
`denial of institution, the weakness of Petitioner’s showing may also be considered
`
`in weighing whether the Board should exercise its discretion to deny institution. See
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper No. 11 at 14-16 (PTAB Mar. 20,
`
`2020) (Precedential). Here, this factor favors denial of institution.
`
`All factors favor denying institution
`7.
`In summary, the Board’s six factors all favor denial of institution. Petitioner
`
`will have a full and fair opportunity to present its invalidity challenges to the District
`
`Court, and the District Court will address those challenges well before this Board
`
`would reach the time to issue a final written decision. Under such circumstances, it
`
`would be a waste of the Board’s and the parties’ resources to pursue both
`
` 12
`
`
`
`IPR2021-01488
`U.S. Patent No. 6,807,505
`proceedings. The Board should exercise its discretion and deny institution of this
`
`Petition.
`
`V. CONCLUSION
`
`The Petition fails to present proper evidence and argument supporting
`
`institution on the merits by inconsistently applying the claim elements. Further,
`
`the Petition fails to apply the very claim construction for which it advocates. Each
`
`of these provide an independent basis to deny institution. As the Petition
`
`acknowledges, trial in the District Court in a completely parallel proceeding is
`
`scheduled to occur months before the deadline for a final written decision. Under
`
`the various factors considered by the Board, it should decline institution for this
`
`additional reason.
`
`Date: January 12, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Reza Mirzaie /
`
`Reza Mirzaie, Reg. No. 69,138
`Russ, August & Kabat
`12424 Wilshire Blvd., 12th Floor
`Los Angeles, CA 90025
`
`Counsel for Patent Owner
`
` 13
`
`
`
`
`
`CERTIFICATION REGARDING WORD COUNT
`
`Pursuant to 37 C.F.R. §42.24(d), Patent Owner certifies that there are 2,918
`
`words in the paper excluding the portions exempted under 37 C.F.R. §42.24(a)(1).
`
`Date: January 12, 2022
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Reza Mirzaie /
`
`Reza Mirzaie, Reg. No. 69,138
`Russ, August & Kabat
`12424 Wilshire Blvd., 12th Floor
`Los Angeles, CA 90025
`
`Counsel for Patent Owner
`
`
`
`14
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`The undersigned hereby certifies that the above document was served on
`
`January 12, 2022, by filing this document through the Patent Trial and Appeal Board
`
`End to End System as well as delivering a copy via electronic mail upon the
`
`following attorneys of record for the Petitioner:
`
`Adam P. Seitz (Reg. No. 52,206)
`Adam. Seitz@erisei p. com
`Postal and Hand-Delivery Address:
`Erise IP, P.A.
`7015 College Blvd., Ste. 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Fax: (913) 777-5601
`
`Paul R. Hart (Reg. No. 59,646)
`Paul .Hart@erisei p. com
`Postal and Hand-Delivery Address:
`Erise IP, P.A.
`5299 DTC Blvd., Ste. 1340
`Greenwood Village ,
`Colorado 80111
`Telephone: (913) 777-5600
`
`Date: January 12, 2022
`
`RUSS AUGUST & KABAT 12424
`Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`(310) 826-7474
`
`/ Reza Mirzaie /
`Reza Mirzaie
`Reg. No. 69,138 Attorney
`for Patent Owner
`
`1
`
`
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
