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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`APPLIED MATERIALS, INC.
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`Petitioner
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`v.
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`DEMARAY LLC
`Patent Owner
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`_________________
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`Patent No. 7,381,657
`_________________
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`PETITIONER’S NOTICE
`REGARDING MULTIPLE PETITIONS
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`TABLE OF CONTENTS
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`INTRODUCTION ...............................................................................1
`I.
`II. RANKING .........................................................................................1
`III. DIFFERENCES AND REASONS FOR INSTITUTION...........................2
`IV. CONCLUSION ...................................................................................5
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`i
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`U.S. Patent No. 7,381,657
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`I.
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`INTRODUCTION
`Petitioner is concurrently filing two petitions challenging different claims of
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`U.S. Patent No. 7,381,657 (the “’657 patent”). “To aid the Board in determining”
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`why “more than one petition is necessary,” Petitioner provides the information
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`below. See PTAB Consolidated Trial Practice Guide (“TPG”) (November 2019) at
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`59-60. As explained below, the Board should institute both petitions.
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`II. RANKING
`While both petitions are meritorious and justified as explained below,
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`Petitioner requests that the Board consider the petitions in the following order:1
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`Rank Petition Challenged Claims
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`Grounds
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`1
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`Petition 1 1-21
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`2
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`Petition 2 1-8 and 10-17
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`Grounds based on Barber and Hirose
`and other references (Dogheche, Safi,
`Aokura, Segal, Sakawaki, Sill, Sellers,
`and Belkind)
`Grounds based on Licata, Kelly, and
`Collins and other references (Aokura,
`Dogheche, Doessel)
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` 1
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` While Petitioner provides this ranking in accordance with the TPG guidance,
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`Petitioner believes ranking in this instance is inappropriate and/or unnecessary since
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`each petition addresses different claims and different prior art and combinations.
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`1
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`U.S. Patent No. 7,381,657
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`III. DIFFERENCES AND REASONS FOR INSTITUTION
`Circumstances may arise “in which more than one petition may be necessary.”
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`PTAB Consolidated TPG at 59-60. This is especially true here where Patent Owner,
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`Demaray, has asserted claims of the ’657 patent against Intel and Samsung in
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`separate cases. (Demaray LLC v. Samsung Electronics Co., Ltd. et al., Case No. 6-
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`20-cv-00636 (W.D. Tex.) (“Samsung Litigation”), Demaray LLC v. Intel
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`Corporation, Case No. 6-20-cv-00634 (W.D. Tex.) (“Intel Litigation”) (collectively
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`“Texas Litigations”).) Demaray’s assertions focus on products from Petitioner (e.g.,
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`Ex. 1075, ¶¶25, 32, 38, 53-56, 60-61; Ex. 1076, ¶¶28-43, 35-41, 54-62), motivating
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`Petitioner to pursue declaratory judgment of noninfringement against the patent
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`(Applied Materials, Inc. v. Demaray LLC, Case No. 5-20-cv-05676 (N.D. Cal.); Ex.
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`1077, ¶1). In fact, Petitioner has moved to enjoin the Texas Litigations from
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`proceeding. (Ex. 1078.) A hearing on the injunction is set for November 12. (Ex.
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`1079, 3.) Meanwhile, these litigations remain in their infancy, with currently no
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`ordered case schedules.
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`Respecting the Board’s concerns regarding parallel petitions, Petitioner and
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`its RPI’s, which include Samsung and Intel, have invested substantial resources to
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`coordinate efforts to present the two IPR petitions against the ’657 patent. Such
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`collaboration should not go unnoticed as it resulted in minimizing issues from these
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`multiple parties for the Board, despite the wealth of prior art against the ’657 patent’s
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`2
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`U.S. Patent No. 7,381,657
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`broad claims. Aside from this, there are material differences between the petitions
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`that warrant institution of both petitions.
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`(1) New Prior Art: Petition 1 relies on prior art references not of record during
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`prosecution, such as Barber, Licata, Hirose, and others. Petition 2 relies on Kelly
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`that was of record during prosecution, though not applied by the Examiner. Also
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`unique to Petition 1 are grounds 9-16 in light of Belkind (of record and unapplied
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`during prosecution of the parent application), which further show how the claimed
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`bipolar pulse DC aspects were obvious. (Petition 1 § IX.I.)
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`(2) Different Approaches to the Claim Limitations: The prior art
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`combinations used in the two petitions teach the claim limitations in different ways.
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`(a) bipolar pulse DC power / RF filter: Petition 1 presents grounds based on
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`Barber, which discloses the bipolar pulse DC power features added during
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`prosecution to procure allowance. (Ex. 1004, Ex. 1004, 975-977, 992.) Barber,
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`however, does not expressly disclose the filter features likewise added during
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`prosecution. (Id.; e.g., Petition 1, § IX.A.1.) In contrast, Petition 2 presents grounds
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`based on Licata, which expressly describes an RF filter between an RF power source
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`and a pulse DC power source but does not expressly disclose the bipolar aspects of
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`the DC power source. (e.g., Petition 2, § IX.A.1.)
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`(b) RF Filter Details: Petition 1 relies on Hirose to disclose the claimed filter
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`aspects, whereas Petition 2 relies on Collins. (e.g., Petition 1, § A.1(c)(2); Petition
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`3
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`U.S. Patent No. 7,381,657
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`2, § A.1(c)(2).)
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`(c) Different Challenged Claims: Petition 1 challenges claims 1-21, where
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`Petition 2 challenges claims 1-8 and 10-17. Thus, the Board’s decision with respect
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`to the patentability of the challenged claims in each petition would be materially
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`different because the decision would address the validity of different claims (in
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`different ways) in each case.
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`Given the differences in how these prior art combinations disclose and render
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`obvious the challenged claims, Petitioner had to separate the grounds across two
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`petitions to ensure the evidence could be presented for proper Board consideration.
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`Further, due to the nature of the challenged claims, and the relevant prior art
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`available, Petitioner had to separate the grounds into separate petitions in order to
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`ensure the different grounds contained the necessary specificity as to how the prior
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`art meets the claim limitations while also meeting the word limit requirements for
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`IPR petitions. Given that it is Petitioner’s burden to establish unpatentability of the
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`challenged claims, the level of detail included in the petitions is appropriate
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`(particularly given multiple independent claims and twenty-one claims total). The
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`Board should not penalize Petitioner for doing so by exercising its discretion under
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`§ 314 to deny either petition. Nor should the Board penalize Petitioner for
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`coordinating with its RPIs to narrow the number of petitions for the ’657 patent.
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`Finally, both the Administrative Procedures Act and due process weigh
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`4
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`U.S. Patent No. 7,381,657
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`against denying institution of either petition based on the Board’s discretion. Indeed,
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`the two petitions here do not constitute an abuse of process because as noted
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`Petitioner has collaborated with its RPIs to narrow the challenges to only two
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`petitions, and as of their filing, Petitions 1 and 2 are the only challenges to the ’657
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`patent before the Office. In fact, the Board has routinely instituted two parallel
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`petitions under similar circumstances. See e.g. SolarEdge Techs. Ltd. v. SMA Solar
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`Tech., AG, Nos. IPR2019-01223 to 01227 (instituting two of five parallel petitions),
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`Comcast Cable Commc’ns, LLC v. Veveo, Inc., No. IPR2019-00290 to 00293
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`(instituting two of four parallel petitions), Comcast Cable Commc’ns, LLC v. Veveo,
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`Inc., Nos. IPR2019-00237 to 00239 (instituting two of three parallel petitions), Flex
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`Logix Techs., Inc. v. Konda Techs. Inc., PGR2019-00037, 00040, and 00042 (same),
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`Chegg, Inc., Match Grp., LLC, and RPX Corp. v. NetSoc, LLC, Nos. IPR2019-
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`00165, 00171 (instituting two of two parallel petitions), and Weber, Inc. v. Provisur
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`Techs., Inc., Nos. IPR2019-01464, 01465 (same). Petitioner would also not be
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`opposed to the Board consolidating the two proceedings here upon institution.
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`IV. CONCLUSION
`For the reasons given above, the Board should institute both petitions.
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`Dated: October 23, 2020
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`Respectfully submitted,
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`By:/Joseph E. Palys/
`Joseph E. Palys (Reg. No. 46,508)
`Counsel for Petitioner
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`5
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`CERTIFICATE OF SERVICE
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`I hereby certify that on October 23, 2020, I caused a true and correct copy of
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`the foregoing Petitioner’s Notice Regarding Multiple Petitions to be served via
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`express mail on the Patent Owner at the following correspondence address of record
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`as listed on PAIR:
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`HAYNES AND BOONE, LLP
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`IP Section
`2323 Victory Avenue
`Suite 700
`Dallas TX 75219
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`Respectfully submitted,
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`By: /Joseph E. Palys/
` Joseph E. Palys (Reg. No. 46,508)
` Counsel for Petitioner
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