Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 10
`
`Filed: January 24, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`STMICROELECTRONICS, INC.
`Petitioner,
`
`v.
`
`SEMCON IP INC.,
`Patent Owner.
`
`Case IPR2017-01432
`Patent 5,978,876
`____________
`
`
`
`Before BRYAN MOORE, STACEY G. WHITE, and KIMBERLY
`McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`571.272.7822
`
`
` Paper No. 10
`
`Filed: January 24, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`STMICROELECTRONICS, INC.
`Petitioner,
`
`v.
`
`SEMCON IP INC.,
`Patent Owner.
`
`Case IPR2017-01432
`Patent 5,978,876
`____________
`
`
`
`Before BRYAN MOORE, STACEY G. WHITE, and KIMBERLY
`McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`
`I. BACKGROUND
`On May 12, 2017, Petitioner, STMicroelectronics, Inc. (“ST”), filed a
`petition for inter partes review of claims 1–19 of U.S. Patent No. 5,978,876
`(“the ’876 patent”). On December 4, 2017, the Board denied institution of
`inter partes review of claims 2–19, finding that ST did not demonstrate a
`reasonable likelihood that it would prevail as to these claims, but did
`institute inter partes review of claim 1. Paper 7, 2. On December 4, the
`Board also granted a petition for inter partes review of the ’876 patent filed
`by Texas Instruments Inc. (“TI”) and instituted inter partes review of claims
`2, 5, 11, and 13–18 of the ’876 patent (“the 1425 IPR”). Texas Instruments
`Inc. v. Semcon IP Inc., Case IPR2017-01425, slip op. 2 (PTAB Dec. 4,
`2017) (Paper 9).
`On December 27, 2017, ST timely filed a motion for joinder (Paper 9,
`“Mot.”), requesting that this proceeding be joined with the 1425 IPR. See
`37 C.F.R. § 42.122(b). Patent Owner has not yet filed a response to the
`motion for joinder. However, following the filing of ST’s motion for
`joinder, Texas Instruments and Patent Owner agreed to settle the 1425 IPR
`and moved to terminate the 1425 IPR. Case IPR2017-01425, Paper 11.
`For the reasons discussed below, we deny ST’s motion for joinder.
`
`II. ANALYSIS
`35 U.S.C. § 315(c) states in relevant part:
`(c) JOINDER.–– If the Director institutes an inter partes
`review, the Director, in his or her discretion, may join as a party
`to that [instituted] inter partes review any person who properly
`files a petition under section 311 that the Director . . . determines
`warrants the institution of an inter partes review under section
`314.
`
`2
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`
`Joinder may be authorized when warranted, but the decision to grant
`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). When
`exercising that discretion, the Board is mindful that patent trial regulations,
`including the rules for joinder, must be construed to secure the just, speedy,
`and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b).
`ST argues that joinder “will increase efficiency” because doing so
`“would efficiently resolve the common question in both IPRs––the
`patentability of the instituted claims of the ’876 patent over the Lambrecht
`references.” Mot. 3–4. ST further contends that joinder is appropriate
`because both proceedings involve “substantively similar prior art and claim
`constructions” and doing so would result in “consolidated filings and
`discovery.” Mot. 4–6.
`We do not agree with ST that joinder is warranted in the present
`circumstances. First, as noted above, TI and Patent Owner have filed a joint
`motion to terminate the 1425 IPR proceeding. If the motion to terminate is
`granted, there are no efficiencies to be gained by joining the present
`proceeding to a proceeding that will be terminated.
`Moreover, even if the 1425 IPR is not terminated, ST has not met its
`burden to show why joinder is appropriate. Although the proceedings may
`involve similar prior art and claim constructions, there is no overlap of
`instituted claims between the two proceedings. Additionally, the petitions
`presented different unpatentability arguments, including reliance upon
`different embodiments in the Lambrecht references. Significantly, the
`differences in arguments and evidence presented in each petition resulted in
`a finding that ST did not establish a reasonable likelihood that claims 2–19
`would be unpatentable (Paper 7, 2–3, 28–32) while TI did establish a
`
`3
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`reasonable likelihood that claims 2, 5, 11, and 13–18 would be unpatentable
`(IPR2017-01425, Paper 9, 2, 17–31). Petitioner’s motion does not address
`the substantive difference between the petitions, including the differences
`between the parties’ characterization of the prior art.
`We also disagree with ST that joinder would not prejudice Patent
`Owner. Mot. 7. ST argues that joinder would “prevent the Patent Owner
`and the Board from unnecessarily addressing two separate claim
`construction briefs.” Id. at 5. However, requiring Patent Owner to prepare a
`single response to two petitions that present different arguments would
`prejudice Patent Owner by reducing the number of pages available to
`respond to the different challenges presented in each petition.
`In view of the facts and circumstances of this case, including the
`differences between the claims and the arguments of unpatentability that are
`at issue in each proceeding, joinder of the present proceeding with 1425 IPR
`is not warranted and Petitioner’s motion for joinder is denied.
`
`III. ORDER
`
`Accordingly, it is:
` ORDERED that Petitioner’s motion for joinder is denied.
`
`4
`
`
`
`IPR2017-01432
`Patent 5,978,876
`
`For PETITIONER:
`
`Thomas Tarnay
`SIDLEY AUSTIN LLP
`ttarnay@sidley.com
`
`For PATENT OWNER:
`
`Peter Lambrianakos
`Vincent J. Rubino, III
`Enrique W. Iturralde
`BROWN RUDNICK LLP
`plambrianakos@brownrudnick.com
`vrubino@brownrudnick.com
`eiturralde@brownrudnick.com
`
`
`
`
`5
`
`
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
