UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________________________
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`STMICROELECTRONICS, INC.,
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`Petitioner,
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`v.
`MONTEREY RESEARCH, LLC,
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`Patent Owner.
`________________________________
`
`Case No. IPR2021-00702
`U.S. Patent No. 6,651,134
`________________________________
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`
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`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2020-01492
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`________________________________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________________
`
`
`STMICROELECTRONICS, INC.,
`
`Petitioner,
`
`v.
`MONTEREY RESEARCH, LLC,
`
`Patent Owner.
`________________________________
`
`Case No. IPR2021-00702
`U.S. Patent No. 6,651,134
`________________________________
`
`
`
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2020-01492
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`I.
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`II.
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`TABLE OF CONTENTS
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`Page
`STATEMENT OF PRECISE RELIEF REQUESTED ............................... 1
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`STATEMENT OF MATERIAL FACTS ..................................................... 2
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ................... 3
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`IV. CONCLUSION .............................................................................................. 6
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`i
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`TABLE OF AUTHORITIES
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`PAGE(S)
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`CASES
`Garmin Int’l, Inc. v. Philips North Am. LLC,
`IPR2020-00910, Paper 8 (PTAB Nov. 19, 2020) ................................................. 5
`HTC v. Parthenon Unified Memory Architecture LLC,
`IPR2017-00512, Paper 12 (PTAB, June 1, 2017) ............................................ 4, 5
`Kyocera Corp. v. Softview LLC,
`IPR2013-00004, Paper 15 (PTAB Apr. 24, 2013) ............................................... 4
`Mylan Pharms., Inc. v. Novartis AG,
`IPR2014-00550, Paper 38 (PTAB Apr. 10, 2015) ............................................... 6
`Samsung Elecs. Co. v. Raytheon Co.,
`IPR2016-00962, Paper 12 (PTAB Aug. 24, 2016) ............................................... 4
`STMicroelectronics, Inc. v. Lone Star Silicon Innovations, LLC,
`IPR2018-00436, Paper 7 (PTAB May 4, 2018) ................................................... 5
`STATUTES
`35 U.S.C. § 315(c) ..................................................................................................... 4
`REGULATIONS
`37 C.F.R. § 42.122(b) ............................................................................................ 3, 4
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`
`
`
`ii
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
`Petitioner STMicroelectronics, Inc. (“Petitioner” or “ST”) moves for joinder
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`of its contemporaneously-filed Petition for Inter Partes Review (“IPR”) of claims
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`1-7 and 9-21 of U.S. Patent No. 6,651,134 (“the ’134 patent”) with a pending IPR,
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`Qualcomm, Inc. v. Monterey Research, LLC, IPR2020-01492 (“the Qualcomm
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`IPR” or “the Qualcomm proceeding”), which the Board instituted on March 8,
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`2021.
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`The Qualcomm IPR concerns the same patent and the same claims as ST’s
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`Petition. ST’s Petition and supporting expert declaration are substantively identical
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`to the petition and expert declaration submitted in the Qualcomm IPR. Petitioner
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`here asserts that the same claims are anticipated and/or obvious over the same prior
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`art based on the same arguments supported by the same expert as in the Qualcomm
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`IPR.
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`Petitioner agrees to take an “understudy” role if joined. Joinder will not
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`cause any delay in the resolution of the Qualcomm IPR. The Qualcomm IPR
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`petitioner and Patent Owner do not oppose this motion. Joinder, therefore, is
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`appropriate because it will resolve the same patentability issues of the same patent,
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`it will not delay the schedule that the Board has issued in the Qualcomm IPR, and
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`the parties in the Qualcomm IPR will not be prejudiced.
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`1
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`II.
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`STATEMENT OF MATERIAL FACTS
`1. Monterey Research, LLC (“Patent Owner”) purports to own the ʼ134
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`patent.
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`2.
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`Patent Owner has asserted the ’134 patent against Petitioner, the
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`Qualcomm IPR petitioner, and others in co-pending lawsuits in the District of
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`Delaware: Monterey Research, LLC v. STMicroelectronics, Inc., Case No. 20-
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`0089-NIQA-LAS (D. Del.); Monterey Research, LLC v. Advanced Micro Devices,
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`Inc., No. 1:19-cv-02149-NIQA (D. Del.); Monterey Research, LLC v. Qualcomm
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`Inc., No. 1:19-cv-02083-NIQA (D. Del.); Monterey Research, LLC v. Nanya Tech.
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`Corp., No. 1:19-cv-02090-NIQA (D. Del.); Monterey Research, LLC v. Marvell
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`Tech. Grp. Ltd., No. 1:20-cv-00158-NIQA (D. Del.).
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`3.
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`On August 20, 2020, Qualcomm filed the Qualcomm IPR, requesting
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`cancellation of claims 1-7 and 9-21 of the ʼ134 patent. IPR2020-01492, Paper 1.
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`4.
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`On December 10, 2020, Patent Owner filed a Preliminary Response.
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`IPR2020-01492, Paper 6.
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`5.
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`On March 8, 2021, the Board instituted the Qualcomm IPR as to
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`claims 1-7 and 9-21 and entered a Scheduling Order. IPR2020-01492, Papers 9 and
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`11.
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`6.
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`The Board previously instituted review as to claims 1-21 of the ’134
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`patent in a separate proceeding. See Advanced Micro Devices, Inc. v. Monterey
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`2
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`Research, LLC, IPR2020-00985, Paper 9 (PTAB Dec. 2, 2020). ST filed a motion
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`for joinder to IPR2020-00985 on December 23, 2020. See STMicroelectronics, Inc.
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`v. Monterey Research, LLC, IPR2021-00355, Paper 3. As of the date of filing of
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`the instant motion, the Board has not acted on ST’s December 23, 2020 motion.
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`7.
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`Along with this Motion for Joinder, Petitioner simultaneously files the
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`Petition, which argues, among other things, that the same claims of the ’134 patent
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`are anticipated and/or obvious based on the same grounds and for the same reasons
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`as set forth in the Qualcomm IPR petition. The Petition is supported by the same
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`expert declaration of Robert Murphy submitted in support of the Qualcomm IPR
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`petition.
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`8.
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`The grounds proposed in the Petition are the same as those described
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`in the Qualcomm IPR petition—the Petition does not contain any additional
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`arguments or evidence in support of the unpatentability of claims 1-7 and 9-21 of
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`the ’134 patent. Ex. 1024 to the Petition provides a comparison between the
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`Petition and the Qualcomm IPR petition, showing minimal, non-substantive
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`changes related to formalities of a different party filing the petition.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A.
`Joinder is timely
`This request is being submitted within the time period set forth in 37
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`C.F.R. § 42.122(b).
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`3
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`B.
`The applicable factors support joinder
`The Board has discretion to join this IPR with the Qualcomm IPR. See 35
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`U.S.C. § 315(c); 37 C.F.R. § 42.122(b); HTC v. Parthenon Unified Memory
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`Architecture LLC, IPR2017-00512, Paper 12 at 6 (PTAB June 1, 2017). In
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`considering a motion for joinder, the Board considers the following factors: (1) the
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`reasons why joinder is appropriate; (2) whether the petition raises any new grounds
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`of unpatentability; (3) any impact joinder would have on the cost and trial schedule
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`for the existing review; and (4) whether joinder will add to the complexity of
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`briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at
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`4 (PTAB Apr. 24, 2013); Consolidated Trial Practice Guide 76 (Nov. 2019),
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`https://go.usa.gov/xpvPF. These factors weigh in favor of joinder. As a result, the
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`Board should exercise its discretion to allow joinder here.
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`1.
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`Joinder is appropriate because Petitioner proposes no new
`grounds of unpatentability (factors 1 and 2)
`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
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`proceeding.” Samsung Elecs. Co. v. Raytheon Co., IPR2016-00962, Paper 12 at 9
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`(PTAB Aug. 24, 2016) (internal quotations and citations omitted) (emphasis
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`original). Joinder is appropriate here because the Petition asserts the same grounds
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`and relies on the same evidence for unpatentability presented in the Qualcomm
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`IPR. See Ex. 1024. Specifically, the Petition and the Qualcomm IPR petition rely
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`4
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`on the same prior art references, alone and/or in the same combinations of
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`references. Moreover, the Petition and the Qualcomm IPR petition rely on the
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`same declaration of Robert Murphy. The arguments in both petitions are identical;
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`there are no new grounds of unpatentability asserted in the Petition.
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`As the same issues will be addressed in both proceedings, joinder makes
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`sense. See, e.g., HTC, IPR2017-00512, Paper 12 at 7 (granting motion for joinder
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`where the second petition involved “the same claims, the same patent, the same
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`prior art references, the same expert declaration, and the same arguments and
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`rationales”); STMicroelectronics, Inc. v. Lone Star Silicon Innovations, LLC,
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`IPR2018-00436, Paper 7 at 5 (PTAB May 4, 2018) (similar).
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`2.
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`Joinder will not impact the trial schedule or cost of the
`joined proceeding (factor 3)
`Joinder will not prejudice the parties to the Qualcomm IPR. Petitioner will
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`not request any alterations to the trial schedule that the Board issued in the
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`Qualcomm IPR (IPR2020-01492, Paper 11), leaving that schedule unchanged.
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`Petitioner also agrees to adopt a secondary, “understudy” role in the
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`Qualcomm IPR, if joined. See, e.g., Garmin Int’l, Inc. v. Philips North Am. LLC,
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`IPR2020-00910, Paper 8 at 45, 47-50 (PTAB Nov. 19, 2020) (granting joinder
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`where petitioners agreed to accept an “understudy” role); STMicroelectronics,
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`IPR2018-00436, Paper 7 at 5 (similar). Petitioner will assume a primary role only
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`if the Qualcomm IPR petitioner ceases its participation in that proceeding.
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`5
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`Petitioner’s agreement to take an “understudy” role removes any potential
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`complication or delay caused by joinder, while providing the parties an opportunity
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`to address all issues that may arise. See, e.g., Mylan Pharms. Inc. v. Novartis AG,
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`IPR2014-00550, Paper 38 at 5-6 (PTAB Apr. 10, 2015). The Qualcomm IPR
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`petitioner and patent owner do not oppose this motion. Thus, joinder will not affect
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`the cost of the Qualcomm IPR for Patent Owner, the Qualcomm IPR petitioner,
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`and the Board.
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`3.
`Joinder will not complicate briefing and discovery (factor 4)
`This factor favors joinder. If joinder is granted, Petitioner agrees to take on
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`an understudy role. Accordingly, joinder will not affect briefing and discovery.
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`Those activities will proceed in the same way with or without joinder. In either
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`case, Qualcomm will file briefing and conduct discovery, and Petitioner will not be
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`involved. Petitioner will become involved only if Qualcomm exits the proceeding.
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`IV. CONCLUSION
`For the foregoing reasons, ST respectfully requests that the Board institute
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`its Petition for Inter Partes Review of U.S. Patent No. 6,651,134 and join this
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`proceeding with Qualcomm, Inc. v. Monterey Research, LLC, case number
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`IPR2020-01492.
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`6
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`Dated: April 2, 2021
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`Respectfully submitted,
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`/Tyler R. Bowen/
`Lead Counsel
`Tyler R. Bowen, Reg. No. 60,461
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`Back-up Counsel
`Chad Campbell, Pro hac vice to be submitted
`Roque Thuo, Reg. No. 71,985
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`PERKINS COIE LLP
`2901 N. Central Avenue, Suite 2000
`Phoenix, AZ 85012
`Telephone: (602) 351-8000
`Fax: (602) 648-7000
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`Attorneys for STMicroelectronics, Inc.
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`7
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a true and correct copy of the
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`foregoing MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2020-
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`01492 has been served in its entirety this 2nd day of April, 2021, by email delivery
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`service as follows:
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`
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`Date of Service
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`April 2, 2021
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`Manner of Service
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`Persons Served
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`Documents Served Motion for Joinder to Inter Partes Review IPR2020-
`01492
`Petitioner Qualcomm’s Counsel of Record
`Eagle H. Robinson
`eagle.robinson@nortonrosefulbright.com
`Daniel S. Leventhal
`daniel.leventhal@nortonrosefulbright.com
`Richard S. Zembek
`richard.zembek@nortonrosefulbright.com
`Norton Rose Fulbright US LLP
`
`Patent Owner’s Counsel of Record
`Theodoros Konstantakopoulos
`tkonstantakopoulos@desmaraisllp.com
`Jonas R. McDavit
`jmcdavit@desmaraisllp.com
`Jordan N. Malz
`jmalz@desmaraisllp.com
`Michael A. Wueste
`mwueste@desmaraisllp.com
`Ryan G. Thorne
`rthorne@desmaraisllp.com
`Yung-Hoon Ha
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`1
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`Dated: April 2, 2021
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`yha@desmaraisllp.com
`Christian M. Dorman
`cdorman@desmaraisllp.com
`DESMARAIS LLP
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`Respectfully submitted,
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`/Tyler R. Bowen/
`Lead Counsel
`Tyler R. Bowen, Reg. No. 60,461
`
`Back-up Counsel
`Chad Campbell, Pro hac vice to be submitted
`Roque Thuo, Reg. No. 71,985
`
`PERKINS COIE LLP
`2901 N. Central Avenue, Suite 2000
`Phoenix, AZ 85012
`Telephone: (602) 351-8000
`Fax: (602) 648-7000
`
`Attorneys for STMicroelectronics, Inc.
`
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`2
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