Trials@uspto.gov
`571-272-7822
`
`
` Paper 37
`
`Date Entered: December 12, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARM LTD. AND ARM, INC.,
`v.
`
`ADVANCED MICRO DEVICES, INC. AND ATI TECHNOLOGIES ULC,
`Patent Owner.
`____________
`
`Case IPR2018-01148
`Patent 7,633,506 B1
`____________
`
`
`
`JONI Y. CHANG, BRIAN J. McNAMARA, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`
`
`DECISION TO INSTITUTE
`AND GRANT OF MOTION FOR JOINDER
`35 U.S.C. § 314(a), 37 C.F.R. § 42.122(b)
`
`
`
`571-272-7822
`
`
` Paper 37
`
`Date Entered: December 12, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARM LTD. AND ARM, INC.,
`v.
`
`ADVANCED MICRO DEVICES, INC. AND ATI TECHNOLOGIES ULC,
`Patent Owner.
`____________
`
`Case IPR2018-01148
`Patent 7,633,506 B1
`____________
`
`
`
`JONI Y. CHANG, BRIAN J. McNAMARA, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`
`
`DECISION TO INSTITUTE
`AND GRANT OF MOTION FOR JOINDER
`35 U.S.C. § 314(a), 37 C.F.R. § 42.122(b)
`
`
`
`
`IPR2018-01148
`Patent 7,633,506 B1
`
`
`Introduction
`On April 27, 2018, we instituted inter partes review of claims 1–9 of
`U.S. Patent No. 7,633,506 B1 in MediaTek v. Advanced Micro Devices,
`Case IPR2018-00101 (PTAB April 27, 2018) (Paper 13) (“the MediaTek
`IPR”). On May 25, 2018, ARM Ltd. and ARM Inc. (collectively, “ARM”)
`filed the instant Petition for inter partes review of the same claims of the
`’506 patent (“the ARM Petition”). Paper 2. With the instant Petition, ARM
`filed a timely Motion for Joinder with the MediaTek IPR. Paper 3.
`MediaTek has not opposed ARM’s Motion for Joinder. Advanced Micro
`Devices, Inc., and ATI Technologies ULC (“Patent Owner”) filed an
`Opposition to ARM’s Motion for Joinder (Paper 7, “Opp. To Mot. For
`Joinder”) and ARM filed a Reply (Paper 8, “Reply to Opp.”). Patent Owner
`also filed a corrected Preliminary Response to the instant Petition. Paper 11
`(“Prelim. Resp.”).
`
`Institution of Inter Partes Review
`Reasonable Likelihood of Success
`The substance of Patent Owner’s Corrected Preliminary Response in
`this proceeding corresponds closely to the substance of the Patent Owner
`Response in the MediaTek IPR. See MediaTek IPR, Paper 16. In the
`MediaTek IPR, we instituted trial on all challenged claims and all asserted
`grounds, as identified below:
`Claim(s)
`1–3 and 5–9
`
`Statutory Basis
`35 U.S.C. § 103(a)
`
`Challenge
`Obvious over Akeley1
`in view of Rich
`
`
`1 Reality Engine Graphics, Ex. 1004
`
`
`
`2
`
`
`
`IPR2018-01148
`Patent 7,633,506 B1
`
`
`4
`
`35 U.S.C. § 103(a)
`
`Obvious over Akeley
`in view of Rich2 in
`further view of Greene3
`ARM asserts that “[t]he present Petition is largely a verbatim copy of
`the Petition in IPR2018-00101 with limited changes.” Mot. For Joinder 1–2.
`ARM notes the differences between the petition in the MediaTek IPR and
`ARM’s Petition concern the explanations of the real party-in-interest. Id. at
`3. ARM also states that it has attached as Exhibit 1008 a copy of the public
`version of the Initial Determination in the related ITC investigation issued
`after the petition in the MediaTek IPR was filed. Id. ARM further states
`that it has adopted the construction of “unified shader” we applied in the
`MediaTek IPR and that it agrees with the other constructions proposed by
`MediaTek. Id.
`The above differences in ARM’s Petition and the MediaTek petition
`are not substantial. Having determined that a reasonable likelihood of
`success exists on the grounds asserted in the MediaTek IPR, we find for the
`same reasons that there is a reasonable likelihood ARM will succeed in the
`same challenges to the same claims on the same grounds in this inter partes
`review.
`Issues Under 35 U.S.C. § 315(b)
`Patent Owner contends that ARM’s Petition is barred because ARM
`failed to name as real parties-in-interest or privies at least MediaTek, LG
`Electronics, Inc. (“MediaTek”), LG Electronics MobileComm USA, Inc.
`(“LG”), and Sigma Designs, Inc. (“Sigma Designs”), Prelim. Resp. 62, 67
`(citing 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8(b)(1)). According to
`
`2 U.S. Patent No. 5,808,690, Ex. 1005
`3 U.S. Patent No. 6,646,639, Ex. 1006
`3
`
`
`
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`
`IPR2018-01148
`Patent 7,633,506 B1
`
`Patent Owner, discovery4 will show that ARM is a privy with (1) MediaTek,
`who was served with an ITC Investigation action more than one year before
`the filing date of the present Petition, and (2) LG and Sigma Designs, who
`each were served with a complaint for infringement of the ’506 patent in the
`U.S. District Court for the District of Delaware more than one year before
`the filing date of the Petition. Id. at 63. Citing a publicly available license
`agreement between ARM and GCT Semiconductor, which is not a party to
`any of these actions, Patent Owner contends that ARM likely entered into
`similar license agreements with MediaTek, LG, and Sigma Designs, and that
`these agreements include indemnification provisions allowing ARM, upon
`notice, to control litigation and settle lawsuits. Id. at 64. Patent Owner
`contends that, as a result of such agreements, MediaTek, LG, and Sigma
`Designs are real parties-in-interest with ARM and, therefore, ARM’s
`Petition is subject to the one-year statutory bar imposed by 35 U.S.C. §
`315(b). Id. at 67–68.
`ARM’s Petition is accompanied by a Motion for Joinder, as discussed
`further below. The provisions of 35 U.S.C. § 315(b) do not apply to a
`request for joinder. 35 U.S.C. § 315(c). Thus, ARM’s Petition is not barred
`under 35 U.S.C. § 315(b).
`Patent Owner also contends that there is no valid proceeding for ARM
`to join because the MediaTek IPR is barred under 35 U.S.C. § 315(b) as a
`result of the ITC action. Prelim. Resp. 62. See, MediaTek IPR, Patent
`
`
`4 Patent Owner notes that prior to receiving Patent Owner’s Preliminary
`Response, we authorized Patent Owner to file a Motion for Additional
`Discovery from MediaTek in IPR2018-00101 and a Motion for Discovery
`from ARM in this proceeding. Concurrently with this Decision, we enter
`decisions denying Patent Owner’s discovery motions.
`4
`
`
`
`
`
`IPR2018-01148
`Patent 7,633,506 B1
`
`Owner’s Motion for Discovery (Paper 23) 5, n.6, Petitioner’s Opposition to
`Patent Owner’s Motion for Discovery (Paper 24), 12. We are not persuaded
`by this argument because an administrative complaint, such as an ITC
`action, does not constitute a complaint under 35 U.S.C. § 315(b), LG Elecs.,
`Inc. v. Straight Path IP Group, Inc., Case IPR2015-00196, 2015 WL
`2395601, at *5 (PTAB May 15, 2015), and an ITC decision has no collateral
`estoppel or res judicata effect. See Bio-Tech. Gen. Corp. v. Genentech, Inc.,
`80 F.3d 1553, 1564 (Fed. Cir. 1996). The Board has generally declined to
`apply § 315(b) to ITC complaints; Robert Bosch Tool Corp. v. SD3, LLC,
`IPR2016-01753 Paper 15 at 11-12 (PTAB Mar. 22, 2017) (“We decline to
`interpret §315(b) as including ITC complaints”). Accord, Amkor Tech., Inc.
`v. Tessera, Inc., IPR2013-00242, Paper 98 at 6–19 (PTAB Jan. 31, 2014)
`(holding that §315(b) is only triggered by civil actions); Brinkmann Corp. v.
`A & J Mfg., LLC, IPR2015– 00056, Paper 10 at 7–8 (PTAB Mar. 23, 2015)
`(§315(b) applies to “a complaint in a civil action for patent infringement”
`and does not apply to an ITC Complaint); LG Elecs., Inc. v. Straight Path IP
`Group, Inc., IPR2015–00196, Paper 20 at 7–9 (PTAB May 15, 2015)
`(same).
`Issues Under 35 U.S.C. § 312(a)
`We now turn to Patent Owner’s argument that the Petition is not
`entitled to a filing date and must be dismissed because, as a result of failing
`to name all real parties-in-interest, it fails to comply with 35 U.S.C.
`§ 312(a). Prelim. Resp. 68. Patent Owner incorrectly conflates § 312(a)(2)
`with § 315(b) by applying § 312(a)(2) as part of the timeliness inquiry under
`§ 315(b). Id. at 67–68 (arguing that correction of the real parties-in-interest,
`if necessary, would require assigning a new filing date that itself would
`
`
`
`5
`
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`
`IPR2018-01148
`Patent 7,633,506 B1
`
`result in a bar). These statutory provisions “entail distinct, independent
`inquiries.” Applications in Internet Time, LLC v. RPX Corp., 897 F.3d
`1336, 1364 (Fed. Cir. 2018) (Judge Reyna’s concurring opinion). As the
`U.S. Court of Appeals for the Federal Circuit has noted, it “is incorrect” to
`“conflate[] ‘real party in interest’ as used in § 312(a)(2) and § 315(b), and
`claim[] that Ԥ 312(a)(2) is part and parcel of the timeliness inquiry under
`§ 315.’” Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed.
`Cir. 2018) (en banc). “For example, if a petition fails to identify all real
`parties in interest under § 312(a)(2), the Director can, and does, allow the
`petitioner to add a real party in interest.” Id. “In contrast, if a petition is not
`filed within a year after a real party in interest, or privy of the petitioner is
`served with a complaint, it is time-barred by § 315(b), and the petition
`cannot be rectified and in no event can IPR be instituted.” Id.
`Licensor-licensee relationships are common in many technologies and
`the existence of a licensor-licensee relationship, alone, does not control
`whether entities are real parties-in-interest in a proceeding. However,
`whether or not ARM has a licensor-licensee relationship with LG and/or
`Sigma designs that permits or requires ARM to take control over litigation
`after notice and other requirements are met is not determinative of the issues
`under 35 U.S.C. § 312(a)(2) in this case. During a teleconference Patent
`Owner acknowledged that ARM had not been sued in any district court or
`named as a respondent in the ITC. Ex. 2034, Transcript of Teleconference
`of August 30, 2018 (“Teleconference Tr.”), 23:6–9. Patent Owner justified
`its delay in raising the real party-in-interest issues by arguing that under
`
`
`
`6
`
`
`
`IPR2018-01148
`Patent 7,633,506 B1
`
`Applications in Internet Time and Arris5 , “the landscape was fundamentally
`changed” and that prior to these decisions “it [this argument] wasn’t
`available.” Id. at 24:13–24. Thus, Patent Owner effectively acknowledges
`that, even if any of Sigma, LG and VIZIO is a real party-in-interest under
`the subsequently developed case law (an issue we need not and do not
`reach), Petitioner could not have acted in bad faith. Under these
`circumstances, correction of the real parties-in-interest by the filing of a
`updated Mandatory Notice to comply with 35 U.S.C. § 312(a)(2) is not
`precluded. Wi-Fi One, 878 F.3d at 1374 n. 9.
`As a result of the request for joinder, MediaTek and ARM are real
`parties-in-interest to the joined proceeding, thereby curing any defect under
`35 U.S.C. § 312(a)(2) that may have occurred if MediaTek incorrectly
`determined that ARM was not a real party-in-interest in the MediaTek IPR
`and vice versa. See Merck Sharp & Dohme Corp. v. Mayne Pharma Int’l
`Pty. Ltd., Case IPR2016-01186 (PTAB Dec. 13, 2017) (Paper 71).
`Patent Owner’s district court case against LG was initially stayed and
`later dismissed with prejudice per a stipulation filed in October 2017. See,
`AMD, Inc., et al v. LG Electronics, Inc., et al, Case No. 1:17-cv-00065 (D.
`Del. Jan 23, 2017), Stipulated Motion for Stay filed March 30, 2017 (Paper
`12); Order Administratively closing case entered April 18, 2017 (Paper 13);
`Stipulated Motion of Dismissal With Prejudice filed October 10, 2017
`(Paper 14); Docket entry closing case entered Sept. 18, 2018. In the ITC
`case, on October 20, 2017, the Administrative Law Judge issued an initial
`determination terminating the investigation of LG based on settlement. Ex.
`
`
`5 See Arris v. Chanbond, Case IPR2018-00570 (PTAB, July 27, 2018)(Paper
`21).
`
`
`
`7
`
`
`
`IPR2018-01148
`Patent 7,633,506 B1
`
`2008, 2. Thus, it is not clear that LG has an interest in this proceeding and is
`a real party-in-interest.
`The International Trade Commission served MediaTek a copy of the
`complaint on March 16, 2017. Ex. 2032. An Administrative Law Judge’s
`Initial Determination (“FID”) rendered on April 13, 2018 (Ex. 2007), was
`reviewed by the ITC (Ex. 2008) and a limited exclusion order was entered
`against Sigma Designs, Inc., VIZIO Inc., MediaTek, Inc., and MediaTek
`USA of consumer products covered by claims 1–5 and 8 of the ’506 patent
`(Ex. 3001). As discussed above, MediaTek is already a real party-in-interest
`as a result of the joinder motion.
`The district court cases against Sigma Designs and VIZIO6 were
`stayed by stipulation shortly after the defendants were served, with neither
`party filing an Answer, and have since been dismissed with prejudice per
`stipulation of the parties in each case. See AMD, Inc., et al. v. Sigma
`Designs, Inc., Case No. 1:17-cv-00063 (D. Del. Jan. 23, 2017) Stipulated
`Motion for Stay filed March 31, 2017 (Paper 9); Order Administratively
`closing case entered April 18, 2017 (Paper 12); Stipulated Motion of
`Dismissal filed Sept. 13, 2018 (Paper 11); Order dismissing case with
`prejudice entered Sept. 17, 2018 (Paper 12). See also AMD, Inc., et al v.
`VIZIO, Inv., Case No. 1:17-cv-00064 (D. Del. Jan 23, 2017) Stipulated
`Motion for Stay filed April 7, 2017 (Paper 10); Order Administratively
`closing case entered April 18, 2017 (Paper 11); Stipulated Motion of
`
`
`6 Although the Preliminary Response does not discuss VIZIO, Patent Owner
`has sought Discovery concerning VIZIO. See Paper 13 (Motion for
`Additional Discovery), Ex. 2038.
`
`
`
`8
`
`
`
`IPR2018-01148
`Patent 7,633,506 B1
`
`Dismissal filed Sept. 6, 2018 (Paper 12); Order dismissing case with
`prejudice entered Sept. 18, 2018 (Paper 13).
`In view of the joinder, the timing of the filing of the ITC and district
`court cases, and the termination of the district court cases without the filing
`of an Answer, we are not persuaded that the evidence would support finding
`that if either Sigma Designs or VIZIO is a real party-in-interest in this
`proceeding, the Petition could not be corrected to address the issue. Wi-Fi
`One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018).
`In consideration of the above, we are not persuaded by Patent
`Owner’s arguments that ARM’s Petition is barred under these
`circumstances.
`
`Motion for Joinder
`Citing 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), ARM notes that,
`as a matter of policy and practicality, the Board repeatedly has permitted
`joinder where a second petition raises the same ground(s) of unpatentability
`as those instituted in a first proceeding and where joining a party does not
`present new issues that might complicate or delay an existing proceeding.
`Mot. For Joinder 5–6 (citing, e.g., Activision Blizzard, Inc. v. Game &
`Technology Co., Ltd., Case IPR2018-00157, slip op. at 17–18 (May 3, 2018)
`(Paper 12)); see also Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-
`00385, slip op. at 10 (PTAB July 29, 2013) (Paper 17).
`ARM contends that joinder is appropriate in this case because the
`Petition relies upon the same grounds as the Board has already instituted in
`IPR2018-00101; ARM retained the same expert as the Petitioners in the
`MediaTek IPR, and the expert’s declaration is substantively identical to that
`in the MediaTek IPR; ARM is not advancing any new expert testimony and
`
`
`
`9
`
`
`
`IPR2018-01148
`Patent 7,633,506 B1
`
`there will be no impact on discovery; joinder will not affect the range of
`issues to be addressed by the Board and parties in the joined proceeding;
`joinder does prejudice any party; and ARM will agree to procedural
`safeguards to minimize any burden. Mot. For Joinder 1–2.
`The procedural safeguards ARM proposes state that, in order to
`minimize any burden on the parties and the Board, in the joined proceeding,
`ARM will assume an “understudy” role in which ARM “will coordinate with
`the Petitioners in IPR2018-00101 to provide consolidated filings within the
`page limits set forth by the Board and will not submit any separate filings
`unless and until the Petitioners in IPR2018-00101 settle with Patent Owner
`or IPR2018-00101 is otherwise terminated.” Mot. For Joinder 10. ARM
`also will not seek any additional time for depositions or oral argument. Id.
`Patent Owner contends that ARM’s Motion for Joinder should be
`denied because ARM declined Patent Owner’s request “that all arguments
`and evidence applicable to [original Petitioner] MediaTek will be equally
`applicable to ARM throughout the IPR trials.” Opp. To Mot. For Joinder 4
`(citing Ex. 2001, 2–3). Patent Owner argues in particular that ARM refuses
`to agree that what Patent Owner characterizes as “admissions” made by Dr.
`Edwards, testifying as an expert witness on behalf of MediaTek in the ITC,
`will apply to ARM in this inter partes review. Id. For this reason, Patent
`Owner argues that joining ARM could result in Patent Owner needing to
`brief, and the Board needing to address, different sets of evidence and
`arguments. Id. at 1. According to Patent Owner, under these circumstances,
`ARM will not be able to maintain an “understudy” or “back seat” position to
`MediaTek in the joined inter partes review.Id. at 4
`
`
`
`10
`
`
`
`IPR2018-01148
`Patent 7,633,506 B1
`
`
`ARM replies that Dr. Edwards’ application of the construction
`adopted by the Administrative Law Judge (ALJ) in the ITC is not an
`“admission” (Reply 1), that our Decision to Institute in the MediaTek IPR
`does not apply the ALJ’s construction, (id. at 2), that Dr. Edwards’
`testimony in the ITC is irrelevant because it does not concern the references
`applied in the inter partes review (id. at 3), that there is no legal basis for
`Patent Owner to insist ARM adopt statements from an expert in a different
`proceeding (id. at 4), the Patent Owner’s demands are amorphous and
`onerous because they would allow Patent Owner “to unilaterally determine
`that an unidentified quantum of future argument and evidence is apparently
`‘binding,’” and “is the precise type of condition that the Board has rejected
`as it ‘seem[s] designed to discourage petitioners from seeking joinder . . .
`and . . . [is therefore] incompatible with the just, speedy, and inexpensive
`resolution of every proceeding’” (id. at 4–5, citing Samsung Bioepis Co.,
`Ltd. v. Genentech, Inc., Case IPR2017-01960, slip op. at 5 (PTAB Dec. 1,
`2017) (Paper 11)). Finally, ARM notes that it has agreed to an “understudy”
`role in which ARM “will not submit any separate filings (unless a settlement
`occurs or MediaTek otherwise withdraws its petition) or seek any additional
`time for depositions or oral argument.” Id. at 5.
`We agree with ARM that there is no requirement for a petitioner to
`agree to adopt statements from an expert in a different proceeding. To the
`extent Dr. Edwards testified in the context of a construction imposed by the
`ALJ in the ITC, that testimony may or may not be important to the issues
`before us in this inter partes review. The construction of “unified shader,”
`as well as other issues, are matters to be addressed based on the totality of
`the admissible evidence developed in the record of this proceeding, whether
`
`
`
`11
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`IPR2018-01148
`Patent 7,633,506 B1
`
`or not some of that evidence cites testimony in related proceedings.
`Although testimony from another proceeding may be significant, we will not
`impose pre-conditions but instead we will apply the rules of evidence in
`weighting testimony taken from other proceedings.
`We also agree that the procedural safeguards ARM proposes create
`little risk that ARM’s refusal to agree to Patent Owner’s conditions will
`result in additional burdens on either the parties or the Board. ARM has
`agreed explicitly that it will not seek additional time for depositions and oral
`argument and that it will coordinate with MediaTek to consolidate their
`filings. As MediaTek does not oppose this arrangement, ARM and
`MediaTek, not Patent Owner, will be responsible for accommodating each
`other in such consolidation.
`In consideration of the above it is
`ORDERED that inter partes review is instituted in the instant
`proceeding;
`FURTHER ORDERED that ARM’s Motion for Joinder is granted;
`FURTHER ORDERED that the grounds of unpatentability on which
`trial was instituted in IPR2018-00101 are unchanged and remain the only
`grounds on which trial has been instituted;
`FURTHER ORDERED that the Scheduling Order and any
`modifications thereto entered in IPR2018-00101 shall govern the schedule of
`the joined proceeding;
`FURTHER ORDERED that the joined parties in IPR2018-00101 shall
`file all papers jointly in the joined proceeding as consolidated filings, and
`will identify each such paper as “Consolidated,” except for papers that
`involve fewer than all of the parties;
`
`
`
`12
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`IPR2018-01148
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`
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2018-00101; and
`FURTHER ORDERED that the case caption in IPR2018-00101 shall
`be modified in accordance with the attached example to reflect joinder of
`Petitioners, as well as joinder of the petition.
`
`PETITIONER:
`Kevin P. Anderson
`Scott A. Felder
`Wiley Rein LLP
`kanderson@wileyrein.com
`sfelder@wil ceyrein.com
`
`Christopher J. Higgins
`Don Daybell
`ORRICK HERRINGTON & SUTCLIFFE LLP
`0CHPTABDocket@orrick.com
`D2DPTABDocket@orrick.com
`
`
`PATENT OWNER:
`
`William Meunier
`Michael Renaud
`Adam S. Rizk
`Daniel Weinger
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
`wameunier@mintz.com
`mtrenaud@mintz.com
`arizk@mintz.com
`dbweinger@mintz.com
`
`
`
`
`
`
`13
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`IPR2018-01148
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDIATEK LTD. AND MEDIATEK, INC., and
`ARM LTD. AND ARM, INC.,
`v.
`
`ADVANCED MICRO DEVICES, INC. AND ATI TECHNOLOGIES ULC,
`Patent Owner.
`____________
`
`Case IPR2018-00101
`Case IPR2018-01148
`Patent 7,633,506 B1
`____________
`
`
`
`
`
`
`
`
`
`
`
`
`14
`
`
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