UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`APPLIED MATERIALS, INC.
`
`Petitioner
`
`v.
`
`DEMARAY LLC
`Patent Owner
`
`_________________
`
`Patent No. 7,544,276
`_________________
`
`PETITIONER’S NOTICE
`REGARDING MULTIPLE PETITIONS
`
`
`
`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`APPLIED MATERIALS, INC.
`
`Petitioner
`
`v.
`
`DEMARAY LLC
`Patent Owner
`
`_________________
`
`Patent No. 7,544,276
`_________________
`
`PETITIONER’S NOTICE
`REGARDING MULTIPLE PETITIONS
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ...............................................................................1
`I.
`II. RANKING .........................................................................................1
`III. DIFFERENCES AND REASONS FOR INSTITUTION...........................2
`IV. CONCLUSION........................................................................................................ 5
`
`
`
`
`
`i
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`
`
`U.S. Patent No. 7,544,276
`
`
`I.
`
`INTRODUCTION
`Petitioner is concurrently filing two petitions, each challenging all claims of
`
`U.S. Patent No. 7,544,276 (the “’276 patent”). “To aid the Board in determining”
`
`why “more than one petition is necessary,” Petitioner provides the information
`
`below. See PTAB Consolidated Trial Practice Guide (“TPG”) (November 2019) at
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`59-60. As explained below, the Board should not deny either petition on the basis
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`of the filing of multiple petitions, and instead 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
`
`Rank Petition Challenged Claims
`
`Grounds
`
`1
`
`Petition 1 1-13
`
`2
`
`Petition 2 1-13
`
`Grounds based on Barber and Hirose
`and other
`references
`(Yamazaki,
`Dogheche, Sproul, Aokura, Laird,
`Segal, and Belkind)
`Grounds based on Licata, Kelly, and
`Collins and other references (Aokura,
`Dogheche, Doessel)
`
`
`
` 1
`
` While Petitioner provides this ranking in accordance with the TPG guidance,
`
`Petitioner believes ranking in this instance is inappropriate and/or unnecessary since
`
`each petition addresses different claims and different prior art and combinations.
`
`1
`
`
`
`
`
`U.S. Patent No. 7,544,276
`
`
`III. DIFFERENCES AND REASONS FOR INSTITUTION
`Circumstances may arise “in which more than one petition may be necessary.”
`
`PTAB Consolidated TPG at 59-60. This is especially true here where Patent Owner,
`
`Demaray, has asserted claims of the ’276 patent against Intel and Samsung in
`
`separate cases. (Demaray LLC v. Samsung Electronics Co., Ltd. et al., Case No. 6-
`
`20-cv-00636 (W.D. Tex.) (“Samsung Litigation”), Demaray LLC v. Intel
`
`Corporation, Case No. 6-20-cv-00634 (W.D. Tex.) (“Intel Litigation”) (collectively
`
`“Texas Litigations”).) Demaray’s assertions focus on products from Petitioner (e.g.,
`
`Ex. 1075, ¶¶25-38; Ex. 1076, ¶¶28-43), motivating Petitioner to pursue declaratory
`
`judgment of noninfringement against the patent (Applied Materials, Inc. v. Demaray
`
`LLC, Case No. 5-20-cv-05676 (N.D. Cal.); Ex. 1077, ¶1). To further protect its
`
`customers, Petitioner has moved to enjoin the Texas Litigations from proceeding.
`
`(Ex. 1078.) A hearing on the injunction is set for November 12. (Ex. 1079, 3.)
`
`Meanwhile, these litigations remain in their infancy, with no ordered case schedules.
`
`Respecting the Board’s concerns regarding parallel petitions, Petitioner and
`
`its RPIs, which include Samsung and Intel, have invested substantial resources to
`
`coordinate efforts to present the two IPR petitions against the ’276 patent. Such
`
`collaboration should not go unnoticed as it resulted in minimizing issues from these
`
`multiple parties for the Board, despite the wealth of prior art against the ’276 patent’s
`
`2
`
`
`
`U.S. Patent No. 7,544,276
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`broad claims. Aside from this, there are material differences between the petitions
`
`that warrant institution of both petitions.
`
`(1) New Prior Art: Petition 1 relies on primary/secondary references not of
`
`record during prosecution, such as Barber, Licata, Hirose, and others. Petition 2
`
`relies on Kelly that was of record during prosecution, though not applied by the
`
`Examiner. Also unique to Petition 1 are grounds 8-14 in light of Belkind (of record
`
`and unapplied during prosecution of the parent application), which further show how
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`the claimed bipolar pulse DC aspects were obvious. (Petition 1 § IX.H.)
`
`(2) Different Approaches to the Claim Limitations: The prior art
`
`combinations used in the two petitions teach the claim limitations in different ways.
`
`(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, 325-330, 381-382, 420-422,
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`434.) Barber, however, does not expressly disclose the filter features likewise added
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`during prosecution. (Id.; e.g., Petition 1, § IX.A.1.) In contrast, Petition 2 presents
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`grounds based on Licata, which expressly describes an RF filter between an RF
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`power source and a pulse DC power source but does not expressly disclose the
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`bipolar aspects of 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(f); Petition 2, §
`
`3
`
`
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`U.S. Patent No. 7,544,276
`
`
`A.1(f).)
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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
`
`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. The
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`Board should not penalize Petitioner for doing so by exercising its discretion under
`
`§ 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 ’276 patent.
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`Further, both the Administrative Procedures Act and due process weigh
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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 ’276
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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
`
`4
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`
`
`U.S. Patent No. 7,544,276
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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
`
`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
`
`Respectfully submitted,
`
`By:/Joseph E. Palys/
`Joseph E. Palys (Reg. No. 46,508)
`Counsel for Petitioner
`
`
`
`
`5
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`
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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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`
`
`
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`
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`HAYNES AND BOONE, LLP
`
`IP Section
`2323 Victory Avenue
`Suite 700
`Dallas TX 75219
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
` Joseph E. Palys (Reg. No. 46,508)
` Counsel for Petitioner
`
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