Trials@uspto.gov
`571-272-7822
`
`
`Paper 7
`Entered: July 9, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`STMICROELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`MONTEREY RESEARCH, LLC,
`Patent Owner.
`____________
`
`Case IPR2021-00355
`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 7
`Entered: July 9, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`STMICROELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`MONTEREY RESEARCH, LLC,
`Patent Owner.
`____________
`
`Case IPR2021-00355
`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 IPR2021-00355
`Patent 6,651,134 B1
`
`
`INTRODUCTION
`I.
`Petitioner, STMicroelectronics, Inc., filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 1–21 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
`IPR2020-00985. Paper 3 (“Mot.”). Petitioner filed the Petition and Motion
`for Joinder on December 23, 2020, within one month after we instituted trial
`in IPR2020-00985.
`As explained further below, we determine institution is warranted on
`the same grounds as in IPR2020-00985 and grant Petitioner’s Motion for
`Joinder.
`
`A. RELATED MATTERS
`As required by 37 C.F.R. § 42.8(b)(2), Petitioner identifies a district-
`court proceeding in which the ’134 patent is asserted against Petitioner,
`Monterey Research, LLC v. STMicroelectronics, Inc., Case No. 20-0089-
`NIQA-LAS (D. Del.). Pet. 4. Patent Owner identifies that case along with
`others asserting the ’134 patent. Paper 4, 1. Patent Owner also notes that the
`’134 patent is the subject of IPR2020-00985 and IPR2020-01492.1 Id.
`
`IPR2020-00985
`B.
`In IPR2020-00985, Advanced Micro Devices, Inc. (“AMD”)
`challenged claims 1–21 of the ’134 patent. We instituted review. Advanced
`
`
`1 Patent Owner also includes IPR2021-00167 in its list of related matters.
`Paper 4, 1. We declined to institute review in that proceeding.
`IPR2021-00167, Paper 7.
`
`2
`
`
`
`Case IPR2021-00355
`Patent 6,651,134 B1
`
`Micro Devices, Inc. v. Monterey Research, LLC, IPR2020-00985 (PTAB
`Dec. 2, 2020) (Paper 13, “AMD Inst.”). The instituted review in IPR2020-
`00985 involves the following grounds of unpatentability:
`Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
`1–3, 8, 12, 13, 16, 17 102
`Wada2
`
`1–4, 8, 12–14, 16, 17 103
`
`Wada
`
`1–4, 8, 12–14, 16, 17 103
`
`Wada, Barrett3
`
`4–7, 18–20
`
`4–7, 18–20
`
`9–10, 14, 21
`
`9–10, 14, 21
`
`11, 15
`
`11, 15
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`Wada, Fujioka4
`
`Wada, Barrett, Fujioka
`
`Wada, Reeves5
`
`Wada, Barrett, Reeves
`
`Wada, Lysinger6
`
`Wada, Barrett, Lysinger
`
`AMD Inst. 6–7. AMD also relied on the Declaration of Dr. Jacob Baker,
`Ph.D., P.E. (IPR2020-00985, Ex. 1002). See id. at 7.
`
`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 AMD IPR.”7 Mot. 1; accord
`
`2 U.S. Patent No. 6,115,280 (Ex. 1005).
`3 U.S. Patent No. 5,584,033 (Ex. 1010).
`4 U.S. Patent No. 6,185,149 (Ex. 1006).
`5 U.S. Patent No. 6,226,755 (Ex. 1008).
`6 U.S. Patent No. 5,748,331 (Ex. 1009).
`7 The AMD IPR refers to IPR2020-00985.
`
`3
`
`
`
`Case IPR2021-00355
`Patent 6,651,134 B1
`
`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 AMD IPR.”). Patent Owner did not file a
`Preliminary Response in this proceeding. Thus, for the same reasons stated
`in our Decision on Institution in IPR2020-00985, we determine institution is
`warranted here. See generally AMD Inst.
`Having determined that institution is warranted, we consider
`Petitioner’s Motion for Joinder. Section 315(c) provides, in relevant part,
`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 IPR2020-00985, 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-
`00985. Id. at 5. Further, Petitioner relies on the same declaration testimony
`as the petitioner in IPR2020-00985, so Petitioner asserts that “joinder will
`eliminate duplicative expert discovery and trial testimony.” 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 IPR2020-00985.
`
`4
`
`
`
`Case IPR2021-00355
`Patent 6,651,134 B1
`
`We limit Petitioner STMicroelectronics’s participation in IPR2020-00985,
`such that (1) AMD 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 AMD 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 the joined
`proceeding, so long as AMD remains as a non-terminated petitioner in the
`joined proceeding. This arrangement promotes the just and efficient
`administration of the ongoing trial in IPR2020-00985 and protects the
`interests of AMD, 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 1–21 of the ’134 patent
`is instituted on the grounds in the Petition;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2020-00985 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
`IPR2020-00985 (Paper 14) shall govern the joined proceeding;
`
`5
`
`
`
`Case IPR2021-00355
`Patent 6,651,134 B1
`
`
`FURTHER ORDERED that the case caption in IPR2020-00985 for all
`further submissions shall be changed to add STMicroelectronics, Inc., as a
`named Petitioner after AMD and to indicate by footnote the joinder of
`STMicroelectronics to IPR2020-00985, as indicated in the attached sample
`case caption; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2020-00985.
`
`
`
`6
`
`
`
`Case IPR2021-00355
`Patent 6,651,134 B1
`
`PETITIONER:
`
`Tyler R. Bowen
`Roque Thuo
`PERKINS COIE LLP
`bowen-ptab@perkinscoie.com
`thuo-ptab@perkinscoie.com
`
`
`PATENT OWNER:
`
`Theodoros Konstantakopoulos
`Yung-Hoon Ha
`DESMARAIS LLP
`tkonstantakopoulos@desmaraisllp.com
`yha@desmaraisllp.com
`
`
`
`
`
`
`
`7
`
`
`
`Case IPR2021-00355
`Patent 6,651,134 B1
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ADVANCED MICRO DEVICES, INC.,
`STMICROELECTRONICS, INC.,
`Petitioners,
`
`v.
`
`MONTEREY RESEARCH, LLC,
`Patent Owner.
`____________
`
`Case IPR2020-009858
`Patent 6,651,134 B1
`____________
`
`
`
`8 STMicroelectronics, Inc., which filed a petition in IPR2021-00355, has
`been joined as a party to this proceeding.
`
`8
`
`
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