UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`
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`SONY CORPORATION,
`Petitioner
`
`v.
`
`RAYTHEON COMPANY,
`Patent Owner
`_______________
`
`Case IPR2016-00209
`
`Patent 5,591,678
`_______________
`
`PRELIMINARY RESPONSE TO PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 5,591,678
`
`
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`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`SONY CORPORATION,
`Petitioner
`
`v.
`
`RAYTHEON COMPANY,
`Patent Owner
`_______________
`
`Case IPR2016-00209
`
`Patent 5,591,678
`_______________
`
`PRELIMINARY RESPONSE TO PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 5,591,678
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`I.
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`II.
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ........................................................................................... 1
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`678 PATENT BACKGROUND ...................................................................... 2
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`III. RELEVANT RELATED MATTERS ............................................................. 3
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`A. District Court Litigation ........................................................................ 3
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`B.
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`C.
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`D.
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`IPR 2015-01201 .................................................................................... 4
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`IPR2016-00209 ..................................................................................... 4
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`The Defendants Are Using the Second Petition to Frustrate
`the Litigation ......................................................................................... 6
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`IV. THE BOARD SHOULD DENY INSTITUTION ........................................... 7
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`V.
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`CONCLUSION .............................................................................................. 10
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`CASES
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Butamax Advanced Biofuels LLC v. Gevo, Inc.,
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`IPR2014-00581, Paper No. 8 (PTAB October 14, 2014) ..................................... 8
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`Intelligent Bio-Systems, Inc., v. Illumina Cambridge Ltd.,
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`IPR2013-00324, Paper No. 19 (PTAB November 21, 2013) ............................ 7,9
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`LG Electronics, Inc. v. ATI Technologies, ULC,
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`IPR2015-00327, Paper No. 15 (PTAB September 2, 2015) .............................. 7,8
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`Unilever, Inc. v. Procter & Gamble Company,
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`IPR2014-00506, Paper No. 17 (PTAB July 7, 2014) ........................................... 7
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`STATUTES
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`35 U.S.C. §314(a) .................................................................................................. 7, 9
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`35 U.S.C. § 325(d) ..................................................................................................... 7
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`CODE OF FEDERAL REGULATIONS
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`37 C.F.R. § 42.108 (a) ............................................................................................... 9
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`ii
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`EXHIBIT LIST
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`EXHBIT
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`DESCRIPTION
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`First page of Docket Control Order in 15-cv-341, August
`17, 2015
`Defendants’ Invalidity Contentions and Disclosures
`Pursuant to Patent Rules 3-3 and 3-4, October 2, 2015
`Defendants’ Motion to Stay Cases Pending Inter Partes
`Review, January 4, 2016
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`2001
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`2002
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`2003
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`iii
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`Raytheon Company (“Patent Owner”) respectfully submits this Preliminary
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`Response to the Petition seeking inter partes review of U.S. Patent No. 5,591,678
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`(“678 Patent”). This filing is timely under 35 U.S.C. § 313 and 37 C.F.R. 42.107,
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`because it is within three months of the November 24, 2015 date of the Notice
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`granting the Petition a filing date. IPR2016-00209, at Paper 4, Notice of Filing
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`Date, November 18, 2015.
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`I.
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`INTRODUCTION
`Patent Owner respectfully submits that the Board should deny inter partes
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`review of the 678 Patent under 35 U.S.C. §§ 314(a) and 325(d) and 37 C.F.R. §
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`42.108(a). In a different proceeding, the Board has already instituted inter partes
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`review of claims 1-18 of the 678 patent – the same claims challenged in the present
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`proceeding – based on six separate grounds. Petitioner has not adequately
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`explained how the present Petition does not include substantially the same
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`arguments as those contained in the IPR that is already pending. Rather a review of
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`the petition shows it raises the same arguments that are being reviewed in the
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`instituted IPR. The Petition in the present proceeding is part of a strategy to gain a
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`tactical advantage in underlying litigation involving the same patent where Patent
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`Owner accuses Petitioner and three other defendants of infringement.
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`By filing this second petition over six months after the first, Petitioner has
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`caused the Patent Owner to answer two IPR petitions and a motion to join them
`1
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`while simultaneously briefing claim construction in district court. In addition, the
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`Petitioner and the three other co-defendants are relying upon this redundant
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`petition in seeking to stay the underlying litigation for an indeterminate time
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`beyond the December 2016 final decision date already set for the instituted IPR.
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`Patent Owner should not be subject to this serial petition strategy. Rather,
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`given that Petitioner has failed to distinguish the teachings of the references relied
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`on for the two petitions, and instead has combined with three other codefendants to
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`misuse the IPR process in an attempt to gain a tactical advantage in the underlying
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`litigation, Patent Owner respectfully requests the board exercise its discretion to
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`deny this second petition.
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`II.
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`678 PATENT BACKGROUND
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`The 678 Patent, titled “Process of Manufacturing a Microelectronic Device
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`Using a Removable Support Substrate and Etch-Stop,” relates to a method for
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`making a semiconductor developed by engineers at Hughes Corporation (later
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`acquired by Raytheon). Ex. 1001.
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`The inventors of the 678 Patent, working to improve semiconductors for
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`navigation and national defense applications, realized that enabling access to the
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`back side of a micro-circuit could improve the detection of radiation and light rays,
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`and provide a foundation for stacking other micro-circuits. But gaining access to
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`the back side without destroying the fragile and expensive thin micro-circuits was
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`a problem. Their solution was to create a novel fabrication method that would
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`transfer the thin and fragile micro-circuit and wafer from one support to another
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`and then remove the back-side support through the use of an etch stop. Their
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`patented method permits, inter alia, the fabrication of high resolution image
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`sensors known as back-side illuminated sensors. Raytheon has used the invention
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`in the 678 Patent to make high-resolution image sensors for defense and space
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`applications. Many years after the invention, manufacturers of cameras,
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`computers, and smart phones, in an effort to improve the resolution of cameras in
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`their devices, began using sensors made by the inventive process claimed in the
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`678 Patent.
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`III. RELEVANT RELATED MATTERS
`A. District Court Litigation
`Patent Owner asserted the 678 Patent against Petitioner and several other
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`defendants in Raytheon Company v. Sony Corporation, et al., C.A. No. 2:15-cv-
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`342, (E.D. Tex.) and Raytheon Company v. Samsung Electronics Co., Ltd. et al.,
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`C.A. No. 2-15-cv-00341 (E.D. Tex.) (collectively referred to as the “Litigation”).
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`Both cases were filed March 6, 2015 and remain pending. Trial is scheduled to
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`begin for the Litigation on September 6, 2016. Ex. 2001.
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`The defendants in the Litigation, including Petitioner, are coordinating with
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`respect to defenses, and submitted joint invalidity contentions asserting that the
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`678 Patent is invalid as anticipated and/or obvious in light of eighty (80) alleged
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`prior art references. Ex. 2002. As explained more fully below, the defendants are
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`now seeking to stay the Litigation pending inter partes review of the 678 Patent.
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`Ex. 2003.
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`B.
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`IPR 2015-01201
`On May 14, 2015, Petitioner filed a petition for inter partes review of claims
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`1-18 of the 678 Patent, alleging six separate grounds based on eleven different
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`references. IPR2015-01201, Paper 2, at pp. 2, 36. All of the references relied on
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`by Petitioner were cited in the joint invalidity contentions served in the Litigation.
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`Compare Id. with Ex. 2002, at 7-11. On December 3, 2015, the Board instituted
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`review of claims 1-18 based on six grounds and numerous references. IPR2015-
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`01201 at Paper 6, at pp. 23-24 (referred to herein as the “1201 IPR”).
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`C.
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`IPR2016-00209
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`Petitioner filed the Petition in the present proceeding on November 18, 2015,
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`just over six months after filing the Petition in the 1201 IPR. IPR2016-00209,
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`Paper 2 (referred to herein as the “0209 IPR”). The Petition alleges unpatentability
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`of claims 1-18 of the 678 Patent based on eight grounds and seven references. Id.
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`at pp. 2-3.
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`While the Petition contains a vague assertion that the validity challenges are
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`not redundant of those in the 1201 IPR, Petitioner gives no explanation as to any
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`4
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`specific differences between the arguments advanced in the two petitions or
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`between the teachings of the references supporting the validity challenges in the
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`present Petition versus the references at issue in the 1201 IPR. IPR2016-00209, at
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`Paper 2 at 1-2. To the contrary, Petitioner concedes that the present Petition
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`involves “common issues” and several of the same references as the 1201 IPR.
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`IPR2016-00209, at Paper 3, at 3, 5 (The 0209 Petition “raises eight grounds of
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`unpatentability involving several of the same prior art references as IPR2015-
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`01201.”) (emphasis added). Petitioner also concedes that the numerous grounds
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`involve related arguments and overlapping prior art. Id. at 5 (“Although the
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`petitions include many individual grounds, these grounds involve related
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`arguments and overlapping prior art.”)
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`Indeed, there is substantial overlap between the Petition and the arguments
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`and evidence presented in the 1201 IPR. Just by way of example, asserted grounds
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`2, 4, 5, and 6 of the 1201 IPR allege obviousness based on Morimoto in view of
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`various secondary references, while asserted grounds 2-8 in the 0209 IPR allege
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`obviousness based on Liu in view of secondary references, many of which are the
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`same as the secondary references from the 1201 IPR. Compare IPR2015-01201,
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`Paper 2, at 2, 36 with IPR2016-00209, Paper 2, at 3. The Petition, however,
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`contains no explanation how the substance of its arguments for those grounds (or
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`any other alleged grounds, for that matter) differ.
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`5
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`D. The Defendants Are Using the Second Petition to Frustrate the
`Litigation
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`The two petitions show that the IPR procedure is being used to gain a
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`tactical advantage in the Litigation. Petitioner asserts that the Petition is based, in
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`part, on a new prior art reference that was not known at the time of the filing.
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`IPR2016-00209, at Paper 2 at 1-2. The Petition, however, provides no evidence
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`supporting Petitioner’s claim that it did not previously know of the reference, no
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`detail on when and how Petitioner learned of the reference,1 and no further
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`explanation for why Petitioner waited several months to file the 0209 IPR.
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`On January 4, 2016, the defendants in the underlying Litigation, which
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`include Petitioner, moved to stay the Litigation pending resolution of the 1201 IPR
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`and the 0209 IPR, if instituted. Ex. 2003, at p. 8. In support of the stay, defendants
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`assert the Petitioner acted with dispatch in filing the 1201 IPR. Id., at 5. But,
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`similar to this proceeding, defendants do not explain to the District Court why
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`Petitioner waited several months to file the 0209 IPR. Further, in connection with
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`the stay motion, while defendants offer to agree to an estoppel under 35 U.S.C.
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`315(e)(2), defendants refuse to agree to an estoppel under 35 U.S.C. § 315(e)(1),
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`1 Petitioner’s joinder motion contains an unsupported assertion that it
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`learned of the reference in August or September of 2015. IPR2016-00209, at Paper
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`3, at 4.
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`which means that defendants, including Petitioner, are keeping open the option of
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`filing additional IPR petitions challenging the 678 patent. Ex. 2003, at pp. 7-8.
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`Accordingly, Petitioner has used its two IPR Petitions, filed many months apart, as
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`leverage to obtain a stay of the Litigation, and has not agreed to refrain from filing
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`additional IPR petitions.
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`IV. THE BOARD SHOULD DENY INSTITUTION
`The Board has discretion on whether to institute an IPR. See Intelligent Bio-
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`Systems, Inc., v. Illumina Cambridge Ltd., IPR2013-00324, Paper 19, at 4 (PTAB
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`November 21, 2013) (“Congress made institution discretionary.”); see also 35
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`U.S.C. §314(a). In determining whether to institute, the Board may deny
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`institution on some or all grounds for unpatentability, and may deny institution for
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`some or all challenged claims. Id. Further, the Board can reject a petition where
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`the same or substantially the same arguments were previously presented. Id. (citing
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`35 U.S.C. § 325(d)).
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`The Board has routinely denied petitions where the Petitioner has failed to
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`establish that the arguments in a second petition are not substantially the same or
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`cumulative to arguments made in a first petition. See, e.g., LG Electronics, Inc. v.
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`ATI Technologies, ULC, IPR2015-00327, Paper 15, at 2-4 (PTAB September 2,
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`2015); Unilever, Inc. v. Procter & Gamble Company, IPR2014-00506, Paper 17, at
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`6 (PTAB July 7, 2014); Intelligent Bio-Systems at 5-6. The Board has noted the
`7
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`impropriety of allowing petitioners to present serial challenges against Patent
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`Owners. See Butamax Advanced Biofuels LLC v. Gevo, Inc., IPR2014-00581,
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`Paper 8, at 13 (PTAB October 14, 2014) (“Allowing similar serial challenges to the
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`same patent, by the same petitioner, risks harassment of patent owners and
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`frustration of Congress’s intent in enacting the Leahy-Smith America Invents
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`Act.”)
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`As previously explained, the present Petition challenges the same claims of
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`the 678 Patent as those that are already at issue in an IPR that was instituted on
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`multiple grounds and numerous references. Petitioner made no effort to
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`distinguish the teachings of the references relied on in the present Petition from
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`those that support the grounds in the 1201 IPR. In addition, Petitioner concedes
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`that the grounds of the present Petition involve related arguments and overlapping
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`prior art to the 1201 IPR.
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`Petitioner asserts that the present Petition is not redundant to the 1201 IPR
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`merely because it is based on a different primary reference (Liu) than those relied
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`upon in the 1201 IPR (Morimoto and Bertin). Paper 2, at 1-2. But Petitioner
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`makes no attempt to distinguish the teachings of Liu from Morimoto or Bertin.
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`Petitioner cannot establish that its challenges are not redundant simply by relying
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`on a different primary reference. See, e.g., LG Electronics, Inc. at 2.
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`(“Notwithstanding Petitioner’s application of different primary references, in view
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`8
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`of the overlapping arguments and our institution of inter partes review of the same
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`claims in the Companion Case, we exercised our discretion under 35 U.S.C. §
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`314(a) and 37 C.F.R. § 42.108 (a) and declined to institute against the same claims
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`in this proceeding.”)
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`In IPR2013-00324, the Board denied institution of a second IPR, where --
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`like the scenario here -- the second Petition was based on a different primary
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`reference (but some of the same secondary references) as a first IPR that had been
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`instituted, and Petitioner had not adequately distinguished the primary reference of
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`the second petition from those involved in the first IPR. Intelligent Bio-Systems at
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`4-6. Specifically, the Board stated the following:
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`Furthermore, we note that IBS [Petitioner] has not provided any
`justification for filing the instant petition, other than its representation
`that it became aware of the relevance of Odedra after the filing of the
`128 Petition. Pet. 2. IBS does not distinguish any teaching present
`in Odedra that is lacking from Ju, Tsien, or any of the other
`references cited in the 128 Petition. We therefore conclude that the
`128 Petition presented the same, or substantially the same, prior art
`and arguments to the Office as those in the instant petition.
`Id., at 6-7 (emphasis added).
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`Similarly, in the present Petition, Petitioner represented that it learned of Liu
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`after filing of 1201 IPR petition. Petitioner, however, made no effort to distinguish
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`the teachings of Liu from Bertin, Morimoto, or any of the other many references
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`9
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`cited in the petition in the 1201 IPR. Thus, as in IPR2013-00324, the Board should
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`also deny the petition in this proceeding.
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`V. CONCLUSION
`Petitioner’s second Petition is a strategic second bite at the apple that is
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`intended to burden Patent Owner and/or lengthen a stay in the underlying
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`Litigation. Even though filed six months after the 1201 IPR, Petitioner has not
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`adequately distinguished the arguments or teachings in the references in the present
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`petition from those already at issue in the 1201 IPR, in which all claims of the 678
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`patent are under review on multiple grounds. Accordingly, the Board should deny
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`institution of the present Petition.
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`Respectfully submitted,
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`/Thomas J. Filarski Reg No 31612/
`Thomas J. Filarski
`Reg. No. 31,612
`tfilarski@steptoe.com
`John L. Abramic
`Reg. No. 51,031
`jabramic@steptoe.com
`Brian Fahrenbach
`Reg. No. 72,603
`bfahrenbach@steptoe.com
`STEPTOE & JOHNSON, LLP
`115 South LaSalle Street, Suite 3100
`Chicago, IL 60603
`Telephone: 312-577-1300
`Facsimile: 312-577-1370
`
`Counsel for Raytheon Company
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`Date: January 22, 2016
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`Customer Number: 27890
`STEPTOE & JOHNSON LLP
`115 S. LaSalle St.
`Chicago, IL 60603
`Telephone: (312) 577-1252
`Facsimile: (312) 577-1370
`
`
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`11
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing
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`
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`PRELIMINARY RESPONSE TO PETITION FOR INTER PARTES
`
`REVIEW OF U.S. PATENT NO. 5,591,678, was served in its entirety on
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`January 22, 2016 by filing this document through the Patent Review Processing
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`System as well as by delivering a copy via electronic email to the attorneys of
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`record for the Patent Owner’s as follows:
`
`Matthew A. Smith
`Zhuanjia Gu
`TURNER BOYD LLP
`702 Marshall St., Ste. 640
`Redwood City, CA 94063
`smith@turnerboyd.com
`gu@turnerboyd.com
`
` Robert Hails
`BAKER & HOSTETLER LLP
`1050 Connecticut Avenue, NW
`Washington, D.C. 20036
`rhails@bakerlaw.com
`
`
`By:
`
`/Thomas J. Filarski, Reg No. 31612/
`Thomas J. Filarski
`Registration No. 31,612
`Steptoe & Johnson LLP
`115 S. LaSalle St.
`Chicago, IL 60603
`Telephone: 312-577-1252
`Facsimile:
`312-577-1370
`
`Counsel for Raytheon Company
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`
`
`
`
`Date: January 22, 2016
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