VLSI Technology LLC

Patent Trials and Appeals Board

Dec 23, 2021

IPR2021-01056 (P.T.A.B. Dec. 23, 2021)

Trials@uspto.gov Paper No. 18
571-272-7822 Date: December 23, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

OPENSKY INDUSTRIES, LLC,
Petitioner,
v.
VLSI TECHNOLOGY LLC,
Patent Owner.

IPR2021-01056
Patent 7,523,373 B2

Before THOMAS L. GIANNETTI, BRIAN J. MCNAMARA, and
JASON W. MELVIN, Administrative Patent Judges.

MELVIN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

IPR2021-01056
Patent 7,523,373 B2
2
I. INTRODUCTION
OpenSky Industries, LLC (“Petitioner”) filed a Petition (Paper 2,
“Pet.”) requesting institution of inter partes review of claims 1–3, 5, 6, 9–11,
and 13 (“the challenged claims”) of U.S. Patent No. 7,523,373 B2 (Ex. 1001,
“the ’373 patent”). VLSI Technology LLC (“Patent Owner”) filed a
Preliminary Response. Paper 9 (“Prelim. Resp.”). As authorized, Petitioner
filed a Preliminary Reply (Paper 14 (“Prelim. Reply”)), and Patent Owner
filed a Preliminary Sur-Reply (Paper 17 (“Prelim. Sur-Reply”)). As also
authorized, Patent Owner filed a Supplemental Brief regarding In re Vivint,
Inc., 14 F.4th 1342 (Fed. Cir. 2021). Paper 12. Petitioner filed an opposition
brief. Paper 16.
A. RELATED MATTERS
The parties both identify the following matter related to the ’373
patent: VLSI Technology LLC v. Intel Corporation, No. 6:19-cv-00254-ADA
(consolidated as 1:19-cv-00977) (W.D. Tex.) (trial concluded with jury
verdict). Pet. 4; Paper 5. Patent Owner identifies the following additional
matters: VLSI Tech. LLC v. Intel Corp., No. 6:21-cv-00057 (W.D. Tex.);
VLSI Tech. LLC v. Intel Corp., No. 6:21-cv-00299 (W.D. Tex.); Intel Corp.
v. VLSI Tech. LLC, IPR2020-00158 (PTAB) (on appeal to Federal Circuit,
No. 21-1616). Paper 5.
B. REAL PARTIES IN INTEREST
Petitioner identifies only itself as the real party in interest. Pet. 4.
Patent Owner identifies VLSI Technology LLC and CF VLSI Holdings LLC
as real parties in interest. Paper 5.
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Patent 7,523,373 B2
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C. THE ’373 PATENT
The ’373 patent is titled Minimum Memory Operating Voltage
Technique. Ex. 1001, code (54). It describes a method of determining the
minimum operating voltage for integrated-circuit memory, storing the value
of that voltage in nonvolatile memory, and using the value to determine
when an alternative power-supply voltage may be switched to the memory
or ensuring that the minimum operating voltage is otherwise met. Id.,
code (57).
D. CHALLENGED CLAIMS
Challenged claim 1 is reproduced below:
1. A method, comprising:
providing an integrated circuit with a memory;
operating the memory with an operating voltage;
determining a value of a minimum operating voltage of the
memory;
providing a non-volatile memory (NVM) location;
storing the value of the minimum operating voltage of the
memory in the NVM location;
providing a functional circuit on the integrated circuit
exclusive of the memory;
providing a first regulated voltage to the functional circuit;
providing a second regulated voltage, the second regulated
voltage is greater than the first regulated voltage;
providing the first regulated voltage as the operating
voltage of the memory when the first regulated voltage
is at least the value of the minimum operating voltage;
and
providing the second regulated voltage as the operating
voltage of the memory when the first regulated voltage
is less than the value of the minimum operating voltage,
wherein while the second regulated voltage is provided
IPR2021-01056
Patent 7,523,373 B2
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as the operating voltage of the memory, the first
regulated voltage is provided to the functional circuit.
Ex. 1001, 13:7–28. Claims 9 and 16 are independent and recite limitations
similar to claim 1. Id. at 13:59–14:15, 14:40–62.
E. PRIOR ART AND ASSERTED GROUNDS
Petitioner asserts the following grounds of unpatentability:
Claim(s) Challenged 35 U.S.C. § References/Basis
1, 3, 5, 6, 9–11, 13 103 Harris,1 Abadeer,2 Zhang3
2, 11 103 Harris, Abadeer, Zhang, Cornwell4
Pet. 6. Petitioner relies also on the Declaration of Adit Singh, Ph.D.
(Ex. 1002) and the Declaration of Sylvia D. Hall-Ellis, Ph.D. (Ex. 1027).
II. ANALYSIS
Patent Owner argues that Petitioner relies on expert declarations filed
by Intel in another proceeding. Accordingly, unless cross-examination is
available, those declarations are hearsay in this proceeding.
Prelim. Resp. 27.5
The declarations of Dr. Singh (Ex. 1002) and Dr. Hall-Ellis
(Ex. 1027) were prepared for and filed in a prior IPR proceeding, Intel
Corporation v. VLSI Technology LLC, IPR2020-00158 (“the Intel IPR”).
The Board denied institution in the Intel IPR. IPR2020-00158, Paper 16

1 US 5,867,719, issued Feb. 2, 1999 (Ex. 1003).
2 US Pub. 2006/0259840 A1, published Nov. 16, 2006 (Ex. 1004).
3 US Pub. 2003/0122429 A1, published July 3, 2003 (Ex. 1005).
4 US 7,702,935 B2, issued Apr. 20, 2010 (Ex. 1006).
5 Fed. R. Evid. 804(b)(1) provides a hearsay exception for former testimony
offered against a party who had an “opportunity and similar motive” to
develop it by cross-examination. That does not apply here.
IPR2021-01056
Patent 7,523,373 B2
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(denying institution), Paper 20 (denying rehearing). Petitioner filed
Dr. Singh’s and Dr. Hall-Ellis’s declarations here without change, as
reflected by the title pages indicating the Intel IPR. See Exs. 1002, 1027.
Patent Owner argues that Petitioner will be unable to produce its
declarants for cross examination, and therefore their statements should be
given little weight in this proceeding.6 Prelim. Resp. 27–29. In that regard,
Patent Owner relies on statements in a petition challenging the ’373 patent
filed by another party, Patent Quality Assurance (“PQA”), in
IPR2021-01229 (“the PQA IPR”), in which PQA asserts that it has
“‘exclusively’ engaged Dr. Singh and Dr. Hall-Ellis.” Id. at 28–29 (quoting
IPR2021-01229, Paper 1, 4–5).7 Since filing its petition, PQA has corrected
itself to confirm that it has an exclusive arrangement with Dr. Singh but not
with Dr. Hall-Ellis. IPR2021-01229, Paper 8, 8 n.2 (stating that the
petitioner in that case “erroneously claimed exclusivity with Dr. Hall-Ellis.”
(citing IPR2021-01229, Ex. 1033 ¶ 9); id., Ex. 1034 (engagement agreement
between PQA and Dr. Singh)). Thus, we consider only the effect of
Dr. Singh’s agreement with PQA.
Petitioner’s Preliminary Reply addresses Patent Owner’s arguments,
and submits that we should not decline institution on the basis of Dr. Singh’s
expert declaration for a number of reasons. First Petitioner submits that
expert testimony is not necessary in every case. Prelim. Reply 8–9. That
argument is beside the point. Whether it is necessary or not, the Petition

6 Under our rules, cross examination of declaration testimony of retained
experts is authorized as mandatory discovery. 37 C.F.R. § 42.51(b)(1)(ii).
7 The PQA IPR was filed July 7, 2021, and the institution decision in that
proceeding is due by January 27, 2021.
IPR2021-01056
Patent 7,523,373 B2
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relies on expert support,8 and Petitioner has not explained why such support
is unnecessary. Rather that retaining an expert who would be available for
cross examination, Petitioner chose to rely on Dr. Singh’s declaration
throughout the Petition. Having made that choice, it strains credibility for
Petitioner to say that its reliance on Dr. Singh’s testimony was, after all,
unnecessary.
In the Preliminary Response, Patent Owner raises multiple factual
disputes that may depend on more than the references themselves—Patent
Owner relies on its own expert declaration to dispute Petitioner’s assertions.
See Prelim. Resp. 33–41 (disputing Harris’s low-power embodiment and
how it would be combined with Zhang’s voltage regulators) (citing Ex. 2002
¶¶ 23–34, 46–52, 78–82, 85–89), 42 (disputing Petitioner’s support for
combing Harris’s low-power embodiment with Abadeer and Cornwell)
(citing Ex. 2002 ¶¶ 63–66), 42–46 (discussing Harris’s failure mode,
including how a skilled artisan would understand the disclosures, and how it
would be combined with Zhang) (citing Ex. 2002 ¶¶ 91, 92, 96, 97), 47–52
(discussing the relative voltages of Harris’s supplies and how skilled artisans
would read Harris in light of related disclosures) (citing Ex. 2002 ¶¶ 93, 98–
100), 55–59 (asserting the Petition relies on multiple of Harris’s
embodiments) (citing Ex. 2002 ¶¶ 35–39, 41–43, 59–72). While some of the
disputes may turn on plain disclosures in the prior art, the Petition cites to
Dr. Singh’s declaration in some instances as the sole support for an
assertion. See Pet. 26–28 (justifying combining Abadeer with Harris), 30–33
(justifying combining Zhang with Harris). We do not address those disputes

8 Patent Owner asserts that the Petition contains “over 100 citations to
Dr. Singh’s declaration.” Prelim. Sur-Reply 8.
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Patent 7,523,373 B2
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in this decision, but they confirm the potential significance of expert
testimony here.
Petitioner contends further that it will seek Dr. Singh’s cooperation if
trial is instituted. Prelim. Reply 9. That suggestion, however, stands at odds
with Dr. Singh’s agreement to work exclusively with PQA. See
IPR2021-01229, Ex. 1033 (declaration describing PQA’s engagement of
Dr. Singh), Ex. 1034 (engagement agreement between PQA and Dr. Singh).
Petitioner submits that because Dr. Singh submitted his declaration in the
Intel IPR and in the PQA IPR, “[i]t is unfathomable that a witness who
submits two declarations would refuse to testify.” Prelim. Reply 10. But that
argument ignores that Dr. Singh has agreed to work exclusively with PQA,
which has not given any indication that it would release Dr. Singh from his
agreement. Moreover, we have no evidence from Dr. Singh that he would be
willing to testify here. Without some factual support to demonstrate that it
reasonably expects Dr. Singh to cooperate, in light of the exclusive
agreement with PQA, Petitioner’s assertion is speculation and does not
demonstrate sufficiently that Dr. Singh would likely participate in this
proceeding.
Petitioner challenges PQA’s assertion of its exclusive agreement with
Dr. Singh as “vague and ethically questionable” (id. at 9–10). This is more
speculation. As noted above, PQA has produced its agreement with
Dr. Singh (IPR2021-01229, Ex. 1034) and we have no basis to question the
agreement’s legitimacy. Petitioner allowed this unusual situation by relying
on a prior declaration by Intel’s expert, rather than retaining its own expert
for a new declaration. Whether the agreement with Dr. Singh complies with
ethical rules and whether it permits Dr. Singh to testify here are matters not
before us. Moreover, they may present issues of contract law for the courts
IPR2021-01056
Patent 7,523,373 B2
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to decide, which may cause delay and prevent us from meeting our statutory
deadlines, were we to institute a trial with the issues unresolved.
Petitioner argues next that the Board can allow a substitute witness,
citing Corning Gilbert Inc. v. PPC Broadband, Inc., IPR2013-00347,
Paper 18. That nonprecedential case does not support Petitioner. In Corning
Gilbert, the panel considered an already-instituted proceeding in which a
willing declarant was diagnosed with cancer and appeared unlikely to be
available for a deposition. IPR2013-00347, Paper 18, 2. The panel permitted
the petitioner there to secure an alternative declarant who would execute the
same declaration as the original declarant. Id. at 3. Here, the circumstances
are different. This case is also distinguished from the circumstances in
Google LLC, v. Hammond Development Int’l, Inc., IPR2020-00020, Paper
18 (PTAB July 2, 2020). There, prior to institution, Petitioner certified that,
for reasons unrelated to the merits of the matter, it could no longer work
with the expert whose declaration was filed in support of the petition (see
id., Paper 13). The Board permitted Petitioner to substitute another expert
who executed a declaration that was in substance the same as that of the
previous expert. See id., Paper 18. Petitioner has not proposed such an
alternative in this case.
While departing from the Board’s usual procedure may be justified by
unforeseen circumstances that arise with no warning and at no fault of the
party, Petitioner has placed itself in this situation by relying on another
party’s expert declaration. There is no indication that Petitioner ever spoke
to Dr. Singh or attempted to retain him for this proceeding or secure his
availability for cross examination before filing his declaration. Under these
circumstances we see no basis for permitting Petitioner to substitute for
Dr. Singh.
IPR2021-01056
Patent 7,523,373 B2
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We conclude that the circumstances here do not justify instituting
review with the mere expectation that Petitioner will find an acceptable
substitute declarant once trial is instituted.
Petitioner argues that the best approach would be to institute review
first and consider Patent Owner’s objections later. Prelim. Reply 11
(distinguishing cases cited by Patent Owner). We agree that, under normal
circumstances, Patent Owner’s objections might be addressed in a trial.
However, this is not a normal situation. Other than speculation, Petitioner
has not provided any showing that Dr. Singh would be released from his
obligation to PQA. Here, the facts suggest that this would be unlikely, for
Patent Owner has shown that Dr. Singh has agreed to work exclusively for a
party other than Petitioner, and Petitioner has not provided any factual
support from Dr. Singh or PQA. There is no indication in the record that
Petitioner has even met Dr. Singh, much less discussed what he might do if
released from his agreement with PQA.
Given the facts surrounding Dr. Singh’s testimony, we do not consider
him likely to be a willing participant in this proceeding. It is Petitioner’s
burden to show unpatentability, and in support of its case Petitioner has
brought forth the testimony of an expert that Petitioner likely cannot produce
for cross-examination and would likely be excluded.9 Under the
circumstances, we determine that the Petition does not warrant institution.

9 Patent Owner’s suggestion that the Board issue a subpoena to compel
Dr. Singh’s testimony has no merit. Our rules and procedures place the
responsibility of producing Dr. Singh on Petitioner. Consolidated Trial
Practice Guide 23 (November 2019); 37 C.F.R. § 42.53(g).
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Patent 7,523,373 B2
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III. CONCLUSION
Having weighed the parties’ arguments and the full record, we
conclude that the Petition does not warrant institution. See Consolidated
Trial Practice Guide, 58 (“There may be other reasons besides the ‘follow-
on’ petition context where the ‘effect . . . on the economy, the integrity of
the patent system, the efficient administration of the Office, and the ability
of the Office to timely complete proceedings,’ 35 U.S.C. § 316(b), favors
denying a petition even though some claims meet the threshold standards for
institution under 35 U.S.C. §§ 314(a), and 324(a).”). Accordingly, we deny
institution.
IV. ORDER
Accordingly, it is
ORDERED that, pursuant to § 314(a), no inter partes review of the
’373 patent is instituted in this proceeding.
IPR2021-01056
Patent 7,523,373 B2
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PETITIONER:

Andrew T. Oliver
Vinay V. Joshi
AMIN, TUROCY & WATSON LLP
aoliver@atwiplaw.com
vjoshi@thepatentattorneys.com

PATENT OWNER:

Baback Redjaian
IRELL & MANELLA LLP
bredjaian@irell.com

Kenneth J. Weatherwax
Bridget Smith
Flavio Rose
Edward Hsieh
Parham Hendifar
Patrick Maloney
Jason C. Linger
LOWENSTEIN & WEATHERWAX LLP
weatherwax@lowensteinweatherwax.com
smith@lowensteinweatherwax.com
rose@lowensteinweatherwax.com
hsieh@lowensteinweatherwax.com
hendifar@lowensteinweatherwax.com
maloney@lowensteinweatherwax.com
linger@lowensteinweatherwax.com