Trials@uspto.gov
`571-272-7822
`
`Paper 13
`Date: May 11, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLIED MATERIALS, INC.,
`Petitioner,
`v.
`DEMARAY LLC,
`Patent Owner.
`
`IPR2021-00103
`Patent 7,544,276 B2
`
`
`
`
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, KRISTINA M. KALAN, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`KALAN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`IPR2021-00103
`Patent 7,544,276 B2
`
`INTRODUCTION
`I.
`Applied Materials, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 1–13 of U.S. Patent
`No. 7,544,276 B2 (Ex. 1001, “the ’276 patent”). Demaray LLC (“Patent
`Owner”) filed a Preliminary Response to the Petition (Paper 8, “Prelim.
`Resp.”). Pursuant to our authorization (Paper 9), Petitioner filed a Reply
`(Paper 10, “Reply”), and Patent Owner filed a Sur-Reply (Paper 12, “Sur-
`Reply”). Petitioner also filed a Petitioner’s Notice Regarding Multiple
`Petitions (Paper 2 (“Notice”)) to which Patent Owner filed a Response
`(Paper 7 (“Notice Response”)).
`To institute an inter partes review, we must determine that the
`information presented in the Petition shows “there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed
`below, after considering the parties’ submissions and the evidence of record,
`we determine that Petitioner has demonstrated a reasonable likelihood of
`prevailing with respect to at least one claim of the ’276 patent. Patent
`Owner has not provided us with a persuasive reason to exercise our
`discretion to deny institution. Thus, we institute an inter partes review.
`At this preliminary stage of the proceeding, we have not made a final
`determination as to the patentability of any challenged claim or any factual
`or legal issue underlying the patentability inquiry. Any final determination
`will be based on the record developed during trial. We place Patent Owner
`on express notice that any argument not asserted in a timely-filed Response
`to the Petition, or in another manner permitted during trial, shall be deemed
`waived, even if that argument was presented in the Preliminary Response.
`
`2
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`IPR2021-00103
`Patent 7,544,276 B2
`A. Related Proceedings
`The parties identify IPR2021-00105 as another proceeding filed by
`Petitioner against the ’276 patent. Pet. 2; Paper 6, 1. Patent Owner also
`identifies IPR2021-00104 and IPR2021-00106, which challenge U.S. Patent
`No. 7,381,657 B2, as related matters. Paper 6, 1.
`The parties also identify Demaray LLC v. Samsung Electronics Co.,
`Ltd., No. 6-20-cv-00636 (W.D. Tex.) (“Samsung Litigation”); Demaray LLC
`v. Intel Corporation, No. 6-20-cv-00634 (W.D. Tex.) (“Intel Litigation”);
`and Applied Materials, Inc. v. Demaray LLC, No. 5-20-cv-05676 (N.D. Cal.)
`(“California Litigation”) as related matters. Pet. 1; Paper 6, 1. Each of these
`proceedings involves the ’276 patent. Id.
`B. Real Parties-In-Interest
`Petitioner identifies Intel Corporation, Samsung Electronics Co., Ltd.,
`Samsung Electronics America, Inc., Samsung Semiconductor, Inc., Samsung
`Austin Semiconductor, LLC, and itself as real parties-in-interest. Pet. 1.
`Patent Owner identifies itself as the real party-in-interest. Paper 6, 1.
`C. The ’276 Patent
`The ’276 patent, titled “Biased Pulse DC Reactive Sputtering of
`Oxide Films,” relates to “deposition of oxide and oxynitride films and, in
`particular, to deposition of oxide and oxynitride films by pulsed DC reactive
`sputtering.” Ex. 1001, code (54), 1:12–14. The ’276 patent discloses that
`typically, radio frequency (“RF”) sputtering has been used for deposition of
`oxide dielectric films, but arcing can occur between sputtering target tiles
`used to make such films, which causes contamination of the deposited films.
`Id. at 2:25–30. The ’276 patent further states that reactors for RF sputtering,
`particularly their power systems, are complicated. Id. at 2:30–38. The ’276
`patent discloses that reactive DC magnetron sputtering of nonconductive
`
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`IPR2021-00103
`Patent 7,544,276 B2
`oxides “is done rarely” because insulating surfaces accumulate charge
`during deposition and result in arcing, which “can damage the power supply,
`produce particles and degrade the properties of deposited oxide films.” Id.
`at 4:44–52.
`Figure 1A of the ’276 patent is reproduced below.
`
`
`Figure 1A depicts a pulsed DC sputtering reactor. Id. at 3:26–27. The ’276
`patent describes reactor apparatus 10 for sputtering of material from
`target 12. Id. at 5:7–9. Magnet 20 is scanned across the top of target 12,
`which reduces local erosion of target 12 during sputtering. Id. at 5:28–29,
`8:47–55. Substrate 16 is opposite and parallel to target 12. Id. at 5:23–24.
`Substrate 16 is capacitively coupled to electrode 17 via insulator 54. Id.
`at 5:26–27. Electrode 17 can be coupled to RF power supply 18. Id.
`at 5:27–28. The ’276 patent explains that columnar structures in a deposited
`film can be detrimental for optical wave guide applications, but applying an
`RF bias on substrate 16 during deposition can substantially eliminate
`columnar structures. Id. at 5:60–67. The ’276 patent discloses that target 12
`
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`IPR2021-00103
`Patent 7,544,276 B2
`functions as a cathode when power is applied to it, which creates plasma 53.
`Id. at 5:24–26.
`Target 12 is electrically coupled through filter 15 to pulsed DC power
`supply 14. Id. at 5:19–20. The ’276 patent discloses that the polarity of the
`power supplied to target 12 by the pulsed DC power supply 14 oscillates
`between negative and positive potentials. Id. at 5:30–33. According to
`the ’276 patent, the insulating layer on the surface of target 12 discharges
`during the positive period, which prevents arcing. Id. at 5:33–35. The ’276
`patent discloses that the pulsing frequency must exceed a critical frequency,
`which depends on a target material, cathode current, and reverse time. Id.
`at 5:35–37.
`Reactor apparatus 10 further includes filter 15, which prevents RF
`power supply 18 from coupling into pulsed DC power supply 14. Id.
`at 5:50–51. According to the ’276 patent, filter 15 can be a 2 MHz band
`rejection filter when a 2 MHz power supply is used for RF power supply 18.
`Id. at 5:51–55. The ’276 patent discloses that “the band width of the
`filter 15 can be approximately 100 kHz.” Id. at 5:55–57.
`D. Illustrative Claim
`Claims 1 and 6 of the ’276 patent are independent. Claim 1 is
`representative and is reproduced below:
`1. A reactor according to the present invention, comprising:
`a target area for receiving a target;
`a substrate area opposite the target area for receiving a
`substrate;
`a pulsed DC power supply coupled to the target area, the
`pulsed DC power supply providing alternating negative and
`positive voltages to the target;
`an RF bias power supply coupled to the substrate; and
`
`5
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`

`Claim(s) Challenged
`1–3, 6–8
`4, 5
`9
`
`IPR2021-00103
`Patent 7,544,276 B2
`a narrow band-rejection filter that rejects at a frequency of
`the RE1 bias power supply coupled between the pulsed DC
`power supply and the target area.
`Ex. 1001, 22:40–50.
`E. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–13 of the ’276 patent are
`unpatentable on the following grounds. Pet. 3–5.
`References
`Basis
`Barber, 2 Hirose3
`§ 1034
`Barber, Hirose, Aokura5
`§ 103
`Barber, Hirose, Yamazaki6
`§ 103
`
`1 This appears to be a typographical error that should read “RF” instead of
`“RE.” A district court may “correct an error in a patent by interpretation of
`the patent where no certificate of correction has been issued . . . only if
`(1) the correction is not subject to reasonable debate based on consideration
`of the claim language and the specification and (2) the prosecution history
`does not suggest a different interpretation of the claims.” Novo Indus., LP v.
`Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003); see also Fitbit,
`Inc. v. Valencell, Inc., 964 F.3d 1112, 1119–20 (Fed. Cir. 2020) (suggesting
`the standard from Novo extends to corrections the Board may make in post-
`grant proceedings, and holding it was error to not correct a “conspicuous”
`and undisputed error related to antecedent basis). We have applied this same
`standard in our proceedings. E.g., Apple Inc. v. Achates Reference Publ’g,
`Inc., IPR2013-00080, Paper 22 at 10–12 (PTAB June 3, 2013).
`2 US 6,342,134 B1, issued Jan. 29, 2002 (Ex. 1005).
`3 US 6,485,602 B2, issued Nov. 26, 2002 (Ex. 1006).
`4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’276 patent has an
`effective filing date prior to the effective date of the applicable AIA
`amendments, we refer to the pre-AIA versions of § 103.
`5 JP H10102247 A, published Apr. 21, 1998 (Ex. 1068) (English translation
`(pp. 1–12); Verified Statement of Translation (p. 13); Japanese language
`document (pp. 14–24)).
`6 US 6,657,260 B2, issued Dec. 2, 2003 (Ex. 1046).
`
`6
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`IPR2021-00103
`Patent 7,544,276 B2
`References
`Barber, Hirose, Dogheche7
`Barber, Hirose, Sproul8
`Barber, Hirose, Laird9
`Barber, Hirose, Segal10
`Barber, Hirose, Belkind11
`Barber, Hirose, Belkind, Aokura
`Barber, Hirose, Belkind, Yamazaki
`Barber, Hirose, Belkind, Dogheche
`Barber, Hirose, Belkind, Sproul
`Barber, Hirose, Belkind, Laird
`Barber, Hirose, Belkind, Segal
`
`Basis
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`Claim(s) Challenged
`9, 10
`11, 12
`11, 13
`11–13
`1–3, 6–8
`4, 5
`9
`9, 10
`11, 12
`11, 13
`11–13
`
`In support of its unpatentability arguments, Petitioner relies on the
`declaration of Dr. Vivek Subramanian. Ex. 1002 (“Subramanian
`Declaration”). Patent Owner relies on the declaration of Dr. Alexander
`Glew. Ex. 2002 (“Glew Declaration”).
`
`
`7 E. Dogheche, Growth and optical characterization of aluminum nitride
`thin films deposited on silicon by radio-frequency sputtering, Appl. Phys.
`Lett. 74, 1209 (1999) (Ex. 1029).
`8 W. Sproul, High-rate reactive DC magnetron sputtering of oxide and
`nitride superlattice coatings, Elsevier Science Ltd. 51, 641 (1998)
`(Ex. 1036).
`9 US 2001/0041252 A1, published Nov. 15, 2001 (Ex. 1034).
`10 US 2001/0047838 A1, published Dec. 6, 2001 (Ex. 1069).
`11 A. Belkind et al., Pulsed-DC Reactive Sputtering of Dielectrics: Pulsing
`Parameter Effects, Society of Vacuum Coaters, 43rd Annual Technical
`Conference Proceedings, 86 (2000) (Ex. 1008).
`
`7
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`IPR2021-00103
`Patent 7,544,276 B2
`
`II. ANALYSIS
`
`A. Claim Construction
`We apply the claim construction standard articulated in Phillips v.
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b) (2020).
`Under Phillips, claim terms are afforded “their ordinary and customary
`meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary
`meaning of a claim term is the meaning that the term would have to a person
`of ordinary skill in the art in question at the time of the invention.” Id. at
`1313. Only terms that are in controversy need to be construed, and then
`only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Neither party asserts a claim construction for any terms of the
`challenged claims. Pet. 11–12; see generally Prelim. Resp. On this record,
`we determine that no claim terms require express construction.
`B. Principles of Law
`In an inter partes review, “the petitioner has the burden from the onset
`to show with particularity why the patent it challenges is unpatentable.”
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016)
`(citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to
`identify “with particularity . . . the evidence that supports the grounds for the
`challenge to each claim”)). This burden of persuasion never shifts to Patent
`Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d
`1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes
`review).
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
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`IPR2021-00103
`Patent 7,544,276 B2
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) when in evidence, objective indicia of non-obviousness (i.e.,
`secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966). “To satisfy its burden of proving obviousness, a petitioner cannot
`employ mere conclusory statements. The petitioner must instead articulate
`specific reasoning, based on evidence of record, to support the legal
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016).
`We analyze the asserted grounds of unpatentability in accordance with
`these principles to determine whether Petitioner has met its burden to
`establish a reasonable likelihood of success at trial.
`C. Level of Ordinary Skill in the Art
`Petitioner argues:
`A person of ordinary skill in the art (“POSITA”) would have had,
`at the time of the ’276 patent (March 2002): a Master’s degree in
`Electrical Engineering or Material Science (or an equivalent
`subject) plus at least two years of relevant experience, or a
`Bachelor’s degree in Electrical Engineering or Material Science
`(or an equivalent subject) plus at least four years of relevant
`experience. More education can substitute for practical
`experience, and vice versa and “relevant experience,” in the
`context of the ’276 patent, refers to experience with sputtering
`deposition of films on substrates.
`Pet. 9 (citing Ex. 1001, 1:10–14, 2:45–47; Ex. 1002 ¶¶ 18–19). Patent
`Owner does not appear to dispute this proposed definition. See generally
`Prelim. Resp. Neither party argues that our decision whether to institute trial
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`IPR2021-00103
`Patent 7,544,276 B2
`depends on our adoption of any particular definition of one of ordinary skill
`in the art.
`In light of the record before us, we adopt Petitioner’s proposal
`regarding the level of one of ordinary skill in the art, except that we delete
`the qualifier “at least” to eliminate vagueness as to the appropriate amount
`of relevant experience. The qualifier expands the range without an upper
`bound, i.e., encompassing an unlimited amount of years of experience, and
`thus, does not meaningfully indicate the level of ordinary skill in the art.
`The level of ordinary skill in the art is also reflected by the prior art of
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`D. Discretion Under 35 U.S.C. § 314(a) Due to Parallel Proceeding
`Patent Owner argues that the Board should exercise its discretion to
`deny institution under 35 U.S.C. § 314(a) in view of the Samsung Litigation
`and the Intel Litigation (collectively, “the Texas Litigations”), which involve
`the ’276 patent. Prelim. Resp. 4–8. For the reasons stated below, we are not
`persuaded to exercise discretion to deny institution for this reason.
`Institution of an inter partes review is discretionary. See 35 U.S.C.
`§ 314(a) (authorizing institution of an inter partes review under particular
`circumstances, but not requiring institution under any circumstances);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he
`agency’s decision to deny a petition is a matter committed to the Patent
`Office’s discretion.”); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018)
`(“[Section] 314(a) invests the Director with discretion on the question
`whether to institute review . . . .” (emphasis omitted)); Harmonic Inc., 815
`F.3d at 1367 (“[T]he PTO is permitted, but never compelled, to institute an
`IPR proceeding.”).
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`IPR2021-00103
`Patent 7,544,276 B2
`In the NHK case, the Board denied institution relying, in part, on
`§ 314(a), because the parallel district court proceeding was scheduled to
`finish before the Board reached a final decision. NHK Spring Co. v. Intri-
`Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018)
`(precedential). “Thus, NHK applies to the situation where the district court
`has set a trial date to occur earlier than the Board’s deadline to issue a final
`written decision in an instituted proceeding.” Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11, 3 (PTAB Mar. 20, 2020) (precedential)
`(“Fintiv”). When determining whether to exercise discretion to deny
`institution under NHK due to an earlier trial date, we consider the following
`factors (“Fintiv factors”):
`1. whether the court granted a stay or evidence exists that
`one may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and
`the parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Id. at 6. “These factors relate to whether efficiency, fairness, and the merits
`support the exercise of authority to deny institution in view of an earlier trial
`date in the parallel proceeding.” Id. In evaluating these factors, we take “a
`holistic view of whether efficiency and integrity of the system are best
`served by denying or instituting review.” Id. (citing Patent Trial and Appeal
`Board Consolidated Trial Practice Guide (“CTPG”) 58 (November 2019),
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`IPR2021-00103
`Patent 7,544,276 B2
`https://www.uspto.gov/TrialPracticeGuideConsolidated). We address the
`Fintiv factors below and discuss in detail our reasons for not exercising
`discretion to deny institution based on § 314(a).
`1. Whether a Stay Exists or Is Likely to Be Granted if a Proceeding Is
`Instituted
`There is no evidence in the record that a stay has been requested in the
`district court litigations. Pet. 75; Prelim. Resp. 5. Petitioner argues that it is
`possible that the Texas Litigations may be enjoined because of a motion for
`preliminary injunction that Petitioner filed in the California Litigation.
`Pet. 75 (citing Ex. 1078). Patent Owner argues that the motion was denied.
`Prelim. Resp. 5 (citing Ex. 2004). The record supports Patent Owner’s
`argument that the motion for preliminary injunction was denied in the
`California Litigation. Ex. 2004.
`Patent Owner contends that the Judge for the Texas Litigations
`generally does not grant a stay if inter partes review is instituted. Prelim.
`Resp. 5. Petitioner argues that we should not speculate on whether a stay is
`likely, and that the denial of Petitioner’s motion for preliminary injunction in
`the California Litigation should not weigh in favor of discretionary denial.
`Reply 1–2. Patent Owner asserts that Petitioner provides no evidence to
`indicate whether the Judge for the Texas Litigations would be inclined to
`stay those proceedings and, absent such evidence, the Board should decline
`to infer how the district court would rule on a stay, if requested. Sur-
`Reply 1. Patent Owner further contends that the California Litigation does
`not aid Petitioner’s position. Id. at 1–2.
`We understand the parties’ positions, but no stay exists at present and
`none has been sought. In the absence of a motion for stay, we cannot assess
`Petitioner’s arguments to the district court that a stay is appropriate, nor
`
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`IPR2021-00103
`Patent 7,544,276 B2
`Patent Owner’s opposition, if any. As a result, we have no basis to evaluate
`the likelihood a stay would be granted. Accordingly, we determine this
`factor to be neutral.
`2. Proximity of the Court’s Trial Date to the Board’s Projected
`Statutory Deadline
`Petitioner asserts that, although “the parties in the Texas Litigations
`are negotiating proposed schedules based on a court suggested December 27,
`2021 trial date, currently there is no trial date[] scheduled.” Pet. 75.
`Petitioner further argues that, even if this trial date were adopted, there is no
`evidence that date would be maintained. Id. Specifically, Petitioner
`contends that the district court for the Texas Litigations could consider case
`amendments after the Markman hearing if the trial date materially differs
`from the district court’s default schedule, which would set a trial date three
`months later than the currently suggested December 27, 2021 trial date. Id.
`at 75–76 (citing Ex. 1082, 10 n.6).
`Patent Owner argues that jury selection is set to begin on
`December 27, 2021. Prelim. Resp. 5 (citing Ex. 2005, 4). Patent Owner
`contends that, although Petitioner speculates whether the Texas Litigations
`may be delayed, there is no evidence that there will be a delay. Id. at 5–6.
`Petitioner counters that the district court has scheduled another trial on
`December 27, 2021, and this suggests that the trial date would need to be
`revised. Reply 2 (citing Neodron Ltd. v. STMicroelectronics, Inc., No. 6:20-
`cv-560, Dkt. No. 30 (W.D. Tex. Dec. 23, 2020)). Importantly, Petitioner
`also argues that the district court’s latest scheduling order moved the
`Markman hearing for the Texas Litigations to April 6, 2021, but the district
`court later indicated that the Markman hearing would not be held until a
`transfer motion (the “Transfer Motion”) filed by the defendants in the Texas
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`IPR2021-00103
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`Litigations has been resolved. Id. at 2 n.2. Petitioner further asserts that the
`district court stated that “the Court will consider reasonable amendments to
`the case schedule post-Markman that are consistent with the Court’s default
`deadlines in light of the actual trial date.” Id. at 2, 2 n.3. The district court’s
`February 23, 2021 Order Governing Patent Proceedings sets a default trial
`date 52 weeks after the Markman hearing “(or as soon as practicable).” Id.
`(citing https://www.txwd.uscourts.gov/judges-information/standing-orders/).
`Patent Owner argues that trial for the Texas Litigations is still
`scheduled for December 27, 2021, “the Board routinely ‘declines to
`speculate’ as to whether a trial will take place as scheduled when there are
`also other scheduled trials on same date,” and “the Board should accept the
`scheduled trial date at face value.” Sur-Reply 2–3 (citing Cisco Sys., Inc. v.
`Monarch Networking Sols. LLC, IPR2020-01227, Paper 11, 10–11 (PTAB
`Mar. 4, 2021); Fintiv, Paper 15, 5).
`The scheduling order for the Texas Litigations states that jury
`selection begins on December 27, 2021, which would be about 4.5 months
`before the statutory deadline for a Final Written Decision. Ex. 2005, 4. The
`scheduling order also states that a Markman hearing was scheduled for
`March 26, 2021 and then moved to April 6, 2021. Id. at 3; Reply 3.
`However, Petitioner has provided evidence that the Markman hearing has
`been delayed until the Transfer Motion is resolved. Reply 2 n.2, 3 n.5.
`Petitioner also asserts that the district court has scheduled another trial for
`the same day as the Texas Litigations. Id. at 2. Patent Owner does not
`dispute this argument, other than asserting that the Board should not
`speculate whether a trial will be delayed. Sur-Reply 2–3. Patent Owner
`acknowledges that the Markman hearing “has now been cancelled until the
`completion of briefing” on the Transfer Motion, and that briefing on the
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`IPR2021-00103
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`Transfer Motion will close in April. Id. at 3. Patent Owner anticipates the
`Markman hearing and claim constructions to be completed by mid-May. Id.
`Weighing all of this together, there is substantial uncertainty whether
`the Texas Litigations will proceed to trial on December 27, 2021, in view of
`a number of factors: the delay of the Markman hearing; the district court’s
`general schedule in its Order Governing Patent Proceedings; the possible
`delay due to the Transfer Motion; and the scheduling of two trials on the
`same day. The parties cite no evidence to suggest otherwise. While we
`cannot know at this date how long a potential delay might be, we note that
`Patent Owner’s suggestion of a mid-May 2021 Markman ruling, combined
`with the District Court’s default trial date of 52 weeks later, could result in
`the trial date occurring at the same time as, if not slightly after, our Final
`Written Decision in this matter. Given the wide range of potential trial dates
`and the uncertainty surrounding them given the District Court’s cancellation
`of the Markman hearing, we cannot evaluate the proximity of the trial date
`to our statutory deadline, as required by the second Fintiv factor. As a
`result, we determine this factor to be neutral.
`3. Investment in the Parallel Proceeding by the Court and Parties
`Petitioner asserts that the Texas Litigations are in their infancy and
`that there has been a lack of significant resource investment by the district
`court and the parties in those cases. Pet. 76. Patent Owner contends that, by
`the time of this Decision, the parties will have expended significant
`resources to comply with the district court’s scheduling order, including:
`claim construction briefing and the Markman hearing, commencement of
`fact discovery, and final infringement and invalidity contentions. Prelim.
`Resp. 6. Patent Owner further argues that investment by the parties will
`continue after institution. Id. at 6–7.
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`Petitioner responds that there has been little investment in the Texas
`Litigations other than Markman-related activities. Reply 4. Petitioner also
`argues that the analysis for this factor focuses on actual investment at the
`time of the decision whether to institute. Id. at 4–5 (citing Dolby Labs., Inc.
`v. Intertrust Techs. Corp., PTAB-IPR2020-01123, Paper 10, 19–20 (PTAB
`Jan. 6, 2021)).
`Patent Owner acknowledges that the Markman hearing has been
`canceled until the Transfer Motion has been resolved, and that briefing on
`the Transfer Motion will close in April. Sur-Reply 3. Patent Owner
`anticipates the Markman hearing and claim constructions will be completed
`by mid-May. Id. Patent Owner also reiterates its position that investment
`will continue after institution. Id. at 3–4.
`As noted above in the analysis of the second Fintiv factor and
`acknowledged by Patent Owner, the Markman hearing has been delayed
`until the district court has resolved the Transfer Motion. The other
`upcoming investments cited by Patent Owner (i.e., the opening of fact
`discovery and the deadline for service of the Final Infringement and
`Invalidity Contentions), which were scheduled for after the Markman
`hearing, would also appear to be delayed due to the resolution of the
`Transfer Motion. Ex. 2005, 3. As a result, there has been relatively little
`investment in the Texas Litigations by the parties and district court at this
`time. Patent Owner’s arguments regarding the accrual of investment after
`the time of this Decision are unpersuasive, because we consider the
`investment “at the time of the institution decision.” Fintiv, Paper 11, 9–10.
`In addition, Petitioner contends that it was diligent in filing the
`Petitions just months after the complaints for the Texas Litigations. Pet. 76.
`Patent Owner filed complaints against the Texas Litigations defendants in
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`IPR2021-00103
`Patent 7,544,276 B2
`July 2020. Ex. 1075, 25; Ex. 1076, 27. This Petition was filed in
`October 2020. Petitioner argues that Patent Owner does not dispute
`Petitioner’s diligence. Reply 5 (citing Ex. 2003, 2–3). We agree that
`Petitioner acted expeditiously to file the Petition.
`Considering Petitioner’s expeditious filing of the Petition and the
`relatively small amount of investment in the Texas Litigations, this factor
`weighs against exercising our discretion to deny institution.
`4. Overlap between Issues Raised in the Petition and in the Parallel
`Proceeding
`Petitioner contends that “there is no evidence that the same invalidity
`grounds sought here will be at-issue in the Texas Litigations” and that the
`evidence suggests that there is not a complete overlap for the challenged
`claims between this proceeding and the Texas Litigations. Pet. 76.
`Patent Owner asserts that the Texas Litigations include the
`combinations of asserted references and claims challenged by Petitioner.
`Prelim. Resp. 7 (citing Ex. 2003, 6 n.1, 19, 22–25). Patent Owner further
`argues that the defendants of the Texas Litigations have indicated they will
`continue to use the asserted references for invalidity purposes in the district
`court and will continue to pursue cumulative grounds. Id. at 7–8 (citing
`Ex. 2003, 29–30, n.5).
`Petitioner asserts that the defendants for the Texas Litigations have
`offered a stipulation that ensures no overlap will exist with any asserted
`ground upon institution. Reply 5 (citing Ex. 2003, 27–30). Patent Owner
`contends that the “stipulation fails to eliminate ‘overlap of issues’” because
`it reserves “the right to reassert ‘any specific invalidity ground’ based on
`some perceived change in legal authority” and only stipulates that the
`defendants “would not pursue in district court the ‘specific invalidity ground
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`IPR2021-00103
`Patent 7,544,276 B2
`instituted by the PTAB’” and “not pursue ‘any invalidity ground based’ on
`Barber if a trial is ordered.” Sur-Reply 4 (citing Ex. 2003, 27–30, n.4).
`Patent Owner asserts that the “stipulation is not enough to obviate concerns
`relating to overlapping issues, including because the Texas defendants
`explicitly reserved the use of a reference as background art or for other
`Asserted Patents” and “the Texas defendants can still raise any of the other
`cumulative prior art (including reactors that they contend are used by
`Barber) disclosed in their invalidity contentions.” Id. at 4–5 (citing Sotera
`Wireless, Inc. v. Masimo Corp., IPR 2020-01019, Paper 12, 13–14 (PTAB
`Dec. 1, 2020) (precedential)).
`Although the record indicates that some of the claims challenged by
`Petitioner are asserted in the Texas Litigations, the record does not clearly
`indicate whether all of the claims challenged by Petitioner are asserted in the
`Texas Litigations. See Ex. 2003, 3. Conversely, the record shows that at
`least Petitioner’s primary references here, Barber and Hirose, are also
`asserted in the district court litigation. Ex. 2003, 9–10, 19, 22. We also
`have taken into account that the Texas Litigation defendants have stipulated
`that, if inter partes review is instituted on a specific invalidity ground for an
`asserted patent (e.g., the ’276 patent), they agree “to not pursue invalidity
`contentions for that Asserted Patent in this litigation on that specific
`invalidity ground instituted by the PTAB.” Id. at 29. The defendants also
`stipulate that, if inter partes review is instituted on a specific invalidity
`ground that includes Barber for an asserted patent, they agree “to not pursue
`invalidity contentions in this litigation for any invalidity ground based on
`Barber.” Id. at 29–30. The defendants’ stipulation, however, does not
`preclude them from relying on Barber “or any other reference as a state of
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`IPR2021-00103
`Patent 7,544,276 B2
`the art reference to demonstrate the knowledge of state of the art by one of
`ordinary skill in the art at the relevant time.” Id. at 30 n.5.
`We recognize that the defendants’ stipulation does not state that they
`will not pursue any ground raised or that could have been reasonably raised
`in the Petition, similar to the “broad stipulation” discussed in Sotera. The
`narrower stipulation made by the Texas defendants, however, “mitigates to
`some degree the concerns of duplicative efforts between the district court
`and the