Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 23
`Entered: October 8, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`STMICROELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`MONTEREY RESEARCH, LLC,
`Patent Owner.
`____________
`
`Case IPR2021-00702
`Patent 6,651,134 B1
`____________
`
`Before KRISTEN L. DROESCH, JOHN F. HORVATH, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 23
`Entered: October 8, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`STMICROELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`MONTEREY RESEARCH, LLC,
`Patent Owner.
`____________
`
`Case IPR2021-00702
`Patent 6,651,134 B1
`____________
`
`Before KRISTEN L. DROESCH, JOHN F. HORVATH, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`Case IPR2021-00702
`Patent 6,651,134 B1
`
`
`I.
`INTRODUCTION
`Petitioner, STMicroelectronics, Inc., filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 1–7 and 9–21 of U.S. Patent No.
`6,651,134 B1 (Ex. 1001, “the ’134 patent”). Patent Owner, Monterey
`Research, LLC, did not file a Preliminary Response.
`Petitioner also filed a Motion for Joinder to join as a petitioner in
`IPR2020-01492. Paper 3 (“Mot.”). Petitioner filed the Petition and Motion
`for Joinder on April 2, 2021, within one month after we instituted trial in
`IPR2020-01492 (March 8, 2021).
`As explained further below, we determine institution is warranted on
`the same grounds as in IPR2020-01492 and grant Petitioner’s Motion for
`Joinder.
`
`A. RELATED MATTERS
`As required by 37 C.F.R. § 42.8(b)(2), the parties identify a district-
`court proceeding in which the ’134 patent is asserted against Petitioner,
`Monterey Research, LLC v. STMicroelectronics NV et al., Case No. 1:20-
`00089 (D. Del.). Pet. 4; Paper 4, 1. They additionally identify others
`asserting the ’134 patent. Pet. 3–4; Paper 4, 1. They further note that the
`’134 patent is the subject of IPR2020-00985 and IPR2020-01492. Pet. 4,
`Paper 4, 2.
`
`B.
`IPR2020-01492
`In IPR2020-01492, Qualcomm, Inc. challenged claims 1–7 and 9–21
`of the ’134 patent. We instituted review. Qualcomm, Inc. v. Monterey
`Research, LLC, IPR2020-01492 (PTAB Mar. 8, 2021) (Paper 9, “Qualcomm
`
`2
`
`
`
`Case IPR2021-00702
`Patent 6,651,134 B1
`
`Inst.”). The instituted review in IPR2020-01492 involves the following
`grounds of unpatentability:
`35 U.S.C. § References/Basis
`Claim(s) Challenged
`1–5, 7, 9, 10, 12–18, 20, 21 102
`Schaefer1
`
`1–7, 9, 10, 12–21
`
`11
`
`11
`
`103
`
`103
`
`103
`
`Schaefer, Fujioka2
`
`Schaefer, Lysinger3
`
`Schaefer, Lysinger, Fujioka
`
`Qualcomm Inst. 6. Qualcomm also relied on the Declaration of Robert
`Murphy (IPR2020-01492, Ex. 1015). See id.
`
`II. DISCUSSION
`Petitioner’s Motion for Joinder states that, in this proceeding, the
`“Petition and supporting expert declaration are substantively identical to the
`petition and expert declaration submitted in the Qualcomm IPR.”4 Mot. 1;
`accord id. (“Petitioner here asserts that the same claims are anticipated
`and/or obvious over the same prior art based on the same arguments
`supported by the same expert as in the Qualcomm IPR.”). Patent Owner did
`not file a Preliminary Response in this proceeding. Thus, for the same
`reasons stated in our Decision on Institution in IPR2020-01492, we
`determine institution is warranted here. See generally Qualcomm Inst.
`Having determined that institution is warranted, we consider
`Petitioner’s Motion for Joinder. Section 315(c) provides, in relevant part,
`
`
`1 U.S. Patent No. 5,600,605 (Ex. 1017).
`2 U.S. Patent No. 6,185,149 (Ex. 1006).
`3 U.S. Patent No. 5,784,331 (Ex. 1009).
`4 The Qualcomm IPR refers to IPR2020-01492.
`
`3
`
`
`
`Case IPR2021-00702
`Patent 6,651,134 B1
`
`that “[i]f the Director institutes an inter partes review, the Director, in his or
`her discretion, may join as a party to that inter partes review any person who
`properly files a petition under section 311.” 35 U.S.C. § 315(c). When
`determining whether to grant a motion for joinder, we consider factors such
`as timing and impact of joinder on the trial schedule, cost, discovery, and
`potential simplification of briefing. See Kyocera Corp. v. SoftView, LLC,
`IPR2013-00004, Paper 15, 4 (PTAB Apr. 24, 2013).
`Under the circumstances of this case, we determine that joinder is
`appropriate. Because the present Petition does not include any issues beyond
`those in IPR2020-01492, it will have minimal impact on that proceeding.
`Petitioner agrees “to take an ‘understudy’ role if joined.” Mot. 1; accord id.
`at 5. In that role, Petitioner requests no changes to the schedule of
`IPR2020-01492. Id. at 5. Further, Petitioner relies on the same declaration
`testimony as the petitioner in IPR2020-01492, and “will not be involved” in
`briefing or discovery unless Qualcomm exits the proceeding. Id. at 6. Patent
`Owner did not file an opposition to the joinder motion.
`Under these circumstances, we agree with Petitioner that joinder is
`appropriate and will not unduly impact the ongoing trial in IPR2020-01492.
`We limit Petitioner STMicroelectronics’s participation in IPR2020-01492,
`such that (1) Qualcomm alone is responsible for all petitioner filings in the
`joined proceeding until such time that it is no longer an entity in the joined
`proceeding, and (2) STMicroelectronics is bound by all filings by
`Qualcomm in the joined proceeding, except for (a) filings regarding
`termination or settlement and (b) filings where STMicroelectronics receives
`permission to file an independent paper. STMicroelectronics must obtain
`prior Board authorization to file any paper or to take any action on its own in
`
`4
`
`
`
`Case IPR2021-00702
`Patent 6,651,134 B1
`
`the joined proceeding, so long as Qualcomm remains as a non-terminated
`petitioner in the joined proceeding. This arrangement promotes the just and
`efficient administration of the ongoing trial in IPR2020-01492 and protects
`the interests of Qualcomm, as original petitioner in that proceeding, and of
`Patent Owner.
`For the foregoing reasons, and with the limitations discussed above,
`Petitioner’s Motion for Joinder is granted.
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that inter partes review of claims 1–7 and 9–21 of the
`’134 patent is instituted on the grounds stated in the Petition;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2020-01492 is granted, and STMicroelectronics, Inc., is joined as
`petitioner in that case pursuant to 37 C.F.R. § 42.122, based on the
`conditions discussed above;
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2020-01492 (Paper 11) shall govern the joined proceeding;
`FURTHER ORDERED that all future filings in the joined proceeding
`shall be made only in IPR2020-01492;
`FURTHER ORDERED that the case caption in IPR2020-01492 for all
`further submissions shall be changed to add STMicroelectronics, Inc., as a
`named Petitioner after Qualcomm and to indicate by footnote the joinder of
`STMicroelectronics to IPR2020-01492, as indicated in the attached sample
`case caption; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2020-01492.
`
`
`5
`
`
`
`Case IPR2021-00702
`Patent 6,651,134 B1
`
`
`For PETITIONER in IPR2021-00702:
`
`Tyler Bowen
`Roque Thuo
`PERKINS COIE LLP
`Bowen-ptab@perkinscoie.com
`Thuo-ptab@perkinscoie.com
`
`For PETITIONER in IPR2020-01492:
`
`Eagle Robinson
`Daniel Leventhal
`Richard Zembek
`NORTON ROSE FULBRIGHT US LLP
`Eagle.robinson@nortonrosefulbright.com
`Daniel.leventhal@nortonrosefulbright.com
`Richard.zembek@nortonrosefulbright.com
`
`For PATENT OWNER in IPR2021-00702:
`
`Theodoros Konstantakopoulos
`Yung-Hoon Ha
`DESMARAIS LLP
`tkonstankakopoulos@desmaraisllp.com
`yha@desmarais@desmaraisllp.com
`
`
`For PATENT OWNER in IPR2020-01492:
`
`Theodoros Konstantakopoulos
`Yung-Hoon Ha
`Christian Dorman
`DESMARAIS LLP
`tkonstankakopoulos@desmaraisllp.com
`yha@desmarais@desmaraisllp.com
`cdorman@desmaraisllp.com
`
`
`
`
`
`6
`
`
`
`Case IPR2021-00702
`Patent 6,651,134 B1
`
`
`[Sample Case Caption]
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QUALCOMM, INC.,
`STMICROELECTRONICS, INC.,
`Petitioners,
`
`v.
`
`MONTEREY RESEARCH, LLC,
`Patent Owner.
`____________
`
`Case IPR2020-014925
`Patent 6,651,134 B1
`____________
`
`
`
`5 STMicroelectronics, Inc., which filed a petition in IPR2021-00702, has
`been joined as a party to this proceeding.
`
`7
`
`
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