Trials@uspto.gov
`571-272-7822
`
` Paper: 18
`Entered: May 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`STMICROELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`LONE STAR SILICON INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00435
`Patent 5,912,188
`____________
`
`Before GRACE KARAFFA OBERMANN,
`JENNIFER MEYER CHAGNON, and ELIZABETH M. ROESEL,
`Administrative Patent Judges.
`
`ROESEL, Administrative Patent Judge.
`
`DECISION
`
`Granting Institution of Inter Partes Review
`Granting Petitioner’s Unopposed Motion for Joinder
`35 U.S.C. § 314(a); 37 C.F.R. § 42.122
`
`
`571-272-7822
`
` Paper: 18
`Entered: May 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`STMICROELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`LONE STAR SILICON INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00435
`Patent 5,912,188
`____________
`
`Before GRACE KARAFFA OBERMANN,
`JENNIFER MEYER CHAGNON, and ELIZABETH M. ROESEL,
`Administrative Patent Judges.
`
`ROESEL, Administrative Patent Judge.
`
`DECISION
`
`Granting Institution of Inter Partes Review
`Granting Petitioner’s Unopposed Motion for Joinder
`35 U.S.C. § 314(a); 37 C.F.R. § 42.122
`
`
`
`IPR2018-00435
`Patent 5,912,188
`
`
`INTRODUCTION
`I.
`STMicroelectronics, Inc. (“Petitioner” or “STMicro”) filed a Petition
`requesting inter partes review of claims 1–5, 7–13, 15–23, and 25–29 of
`U.S. Patent No. 5,912,188 (Ex. 1001, “the ’188 patent”). Paper 2 (“Petition”
`or “Pet.”). Concurrent with its Petition, Petitioner filed a Motion for Joinder
`requesting that Petitioner be joined as a party to Micron Technology, Inc. v.
`Lone Star Silicon Innovations, LLC, IPR2017-01560. Paper 3 (“Joinder
`Motion” or “Joinder Mot.”). Petitioner represents that Patent Owner (Lone
`Star Silicon Innovations, LLC) does not oppose Petitioner’s Joinder Motion,
`subject to certain procedural conditions agreed upon by both parties. Joinder
`Mot. 2. Patent Owner waived a preliminary response to the Petition in view
`of the parties’ stipulation regarding conditions for joinder. Paper 6.
`This is the second time a party has sought to join Case
`IPR2017-01560. In Case IPR2017-00081, we granted a motion for joinder
`filed by Toshiba Corporation and Toshiba Memory Corporation
`(collectively, “Toshiba”), and Toshiba has been joined as a party to Case
`IPR2017-01560. IPR2017-01560, Paper 11.
`
`II. DISCUSSION
`
`A.
`
`The Petition
`Petitioner represents that the Petition is “substantially identical” to
`Micron’s petition in IPR2017-01560 and contains “the same grounds (based
`on the same prior art combinations and supporting evidence) against the
`same claims.” Joinder Mot. 1. Petitioner further represents that the Petition
`“challenges the same claims of the same patent, relies on the same expert
`declaration, and is based on the same grounds and combinations of prior art”
`as the Micron Petition. Id. at 5. Petitioner submits a redline comparison
`
`2
`
`
`
`IPR2018-00435
`Patent 5,912,188
`
`between the Petition and Micron’s Petition in IPR2017-01560. Ex. 1021.
`Exhibit 1021 is consistent with Petitioner’s representation that the petitions
`are substantially identical.
`As noted above, Patent Owner waived a Preliminary Response to the
`Petition. Paper 6.
`On the question of whether to institute inter partes review based on
`the Petition, we incorporate our analysis from our institution decision in
`IPR2017-01560. IPR2017-01560, Paper 10, 4–33. For the same reasons,
`we conclude that Petitioner has demonstrated a reasonable likelihood that it
`would establish that at least one of the challenged claims of the ’188 patent
`is unpatentable. Furthermore, we incorporate our order modifying our
`IPR2017-01560 Decision in view of SAS Inst. Inc. v. Iancu, No. 16-969,
`2018 WL 1914661 (U.S. Apr. 24, 2018) to institute on all of the challenged
`claims on all of the grounds presented in Micron’s petition in IPR2017-
`01560. IPR2017-01560, Paper 17. Although the Joinder Motion states
`“STMicro seeks institution only as to the grounds of invalidity already
`instituted by the Board in the Micron IPR,” the Petition challenges the same
`claims on the same grounds as asserted by Micron in IPR2017-01560. We
`interpret STMicro’s statement as seeking institution with respect to all
`claims and all grounds as have been instituted in IPR2017-01560.
`
`B. Motion for Joinder
`Based on authority delegated to us by the Director, we have discretion
`to join a party to another inter partes review, subject to certain exceptions
`not present here. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. As the
`moving party, Petitioner has the burden of proof in establishing entitlement
`to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A motion for
`
`3
`
`
`
`IPR2018-00435
`Patent 5,912,188
`
`joinder should: (1) set forth the reasons why joinder is appropriate;
`(2) identify any new ground(s) 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 how briefing and/or discovery may be
`simplified to minimize schedule impact. See Joinder Mot. 4; Kyocera Corp.
`v. SoftView LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013)
`(Paper 15) (representative).
`Here, Petitioner represents that the Petition is “substantially identical”
`to Micron’s petition in IPR2017-01560 and challenges the same claims of
`the ’188 patent based on the same grounds and the same declaration
`testimony as Micron’s petition in IPR2017-01560. Joinder Mot. 1, 5, 7.
`Petitioner argues that “joinder with the Micron IPR is appropriate because
`the STMicro Petition introduces identical arguments and the same grounds
`raised in the existing Micron proceeding.” Id. at 5.
`Petitioner further represents that, if joined as a petitioner, it would
`take an “understudy” role in the proceeding. Joinder Mot. 2, 4, 7, 8. More
`specifically, Petitioner represents that Patent Owner does not oppose
`Petitioner’s Joinder Motion, subject to the following conditions, which
`Petitioner accepts: (1) the schedule in IPR2017-01560 remains in place; and
`(2) Petitioners’ participation in briefing, depositions, and oral argument is
`limited to sharing the briefing and time allotted to Micron in
`IPR2017-01560. Id. at 2, 7–8; see also Paper 6, 1.
`Petitioner represents that “so long as Micron remains an active party
`in IPR2017-01560, all filings by Petitioner in the joined proceeding will be
`consolidated with the filings of Micron, unless a filing solely concerns issues
`that involve only STMicro.” Joinder Mot. 8. Petitioner agrees not to
`
`4
`
`
`
`IPR2018-00435
`Patent 5,912,188
`
`introduce any argument or discovery not introduced by Micron. Id.
`Petitioner also agrees to allow counsel for Micron to conduct the
`examination of any Patent Owner witness and to defend any common
`witness at any depositions in the joined proceeding. Id.
`Based on its representations in the Joinder Motion, Petitioner argues
`that its request for joinder is consistent with the just, speedy, and
`inexpensive resolution of inter partes reviews. Joinder Mot. 1, 5–6.
`Petitioner additionally argues that joinder should not have any impact on the
`trial schedule and will simplify briefing and discovery in IPR2017-01560.
`Id. at 6, 7.
`Based on Petitioner’s representations in the Joinder Motion and the
`representations of Patent Owner in its paper waiving a preliminary response
`(Paper 6), as summarized above, we determine that Petitioner has met its
`burden to show that joinder of Petitioner as a party in IPR2017-01560 is
`appropriate. We rely in particular, on Petitioner’s representation that its
`Petition is “substantially identical” to the petition in IPR2017-01560 and
`challenges the same claims based on the same prior art and the same grounds
`of unpatentability as are already asserted in IPR2017-01560. We also rely
`on Petitioner’s agreement that the existing schedule IPR2017-01560 will
`remain in place and that its participation in the joined proceeding will be
`limited to an “understudy” role. We also rely on Petitioner’s representation
`that Patent Owner does not oppose Petitioner’s Joinder Motion subject to
`certain procedural conditions and on Patent Owner’s representation that it
`agrees to these procedural conditions for joinder. Under these
`circumstances, we conclude that Petitioner has demonstrated that joinder of
`Petitioner as a party to IPR2017-01560 will secure the just, speedy, and
`
`5
`
`
`
`IPR2018-00435
`Patent 5,912,188
`
`inexpensive resolution of these proceedings. We therefore grant Petitioner’s
`Joinder Motion and, as a result, join Petitioner as a party to IPR2017-01560.
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that inter partes review is instituted in Case
`IPR2018-00435 as to all of the claims and all of the grounds currently
`instituted in Case IPR2017-01560;
`FURTHER ORDERED that Petitioner’s Joinder Motion is granted,
`and STMicro is joined as a party to Case IPR2017-01560;
`FURTHER ORDERED that Case IPR2018-00435 is instituted, joined,
`and administratively terminated under 37 C.F.R. § 42.72, and all further
`filings in the joined proceedings shall be made in Case IPR2017-01560;
`FURTHER ORDERED that the Scheduling Order entered in Case
`IPR2017-01560 (Paper 9) and any revisions thereto (see, e.g., Paper 12)
`shall govern the schedules of the joined proceedings;
`FURTHER ORDERED that STMicro’s participation in briefing,
`discovery, depositions, and oral argument is limited to sharing the briefing
`and time allotted to Micron, so long as Micron remains a party to the
`proceeding and, absent our express authorization, STMicro shall not file
`papers or exhibits apart from Micron;
`FURTHER ORDERED that the case caption in Case IPR2017-01560
`shall be changed to reflect the joinder with this proceeding in accordance
`with the attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the files of Case IPR2017-01560 and Case IPR2018-00435.
`
`6
`
`
`
`
`
`IPR2018-00435
`Patent 5,912,188
`
`PETITIONER (IPR2017-01560):
`Jeremy Lang
`Robert Magee
`Weil, Gotshal & Manges LLP
`Jason.lang@weil.com
`Robert.magee@weil.com
`
`PETITIONER (IPR2018-00081):
`Steven Park
`Gerald Sekimura
`Michael Burns
`DLA PIPER LLP
`steven.park@dlapiper.com
`gerald.sekimura@dlapiper.com
`michael.burns@dlapiper.com
`
`PETITIONER (IPR2018-000435):
`Jonathan McFarland
`Philip Morin
`PERKINS COIE LLP
`JMcFarland@perkinscoie.com
`PMorin@perkinscoie.com
`
`PATENT OWNER:
`Timothy P. Maloney
`Nicholas T. Peters
`David Gosse
`FITCH, EVEN, TABIN & FLANNERY LLP
`tim@fitcheven.com
`lonestar-ipr@fitcheven.com
`ntpete@fitcheven.com
`dgosse@fitcheven.com
`
`7
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper: 7
`
`
` Entered: May 4, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICRON TECHNOLOGY, INC., TOSHIBA CORPORATION, TOSHIBA
`MEMORY CORPORATION, AND STMICROELECTRONICS, INC.
`Petitioner,
`
`v.
`
`LONE STAR SILICON INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-015601
`Patent 5,912,188
`____________
`
`
`
`
`
`1 The motions for joinder filed by Petitioners in Cases IPR2018-00081 and
`IPR2018-00435 were granted, and Toshiba Corporation, Toshiba Memory
`Corporation, and STMicroelectronics, Inc. have been joined as parties to
`Case IPR2017-01560.
`
`
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