UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`INTEL CORPORATION.
`Petitioner
`v.
`DEMARAY LLC
`Patent Owner
`
`
`Patent No. 7,381,657
`IPR2021-01031
`
`
`Petitioner’s Motion for Joinder of IPR2021-00104
`Under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b)
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`INTEL CORPORATION.
`Petitioner
`v.
`DEMARAY LLC
`Patent Owner
`
`
`Patent No. 7,381,657
`IPR2021-01031
`
`
`Petitioner’s Motion for Joinder of IPR2021-00104
`Under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b)
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Motion for Joinder of IPR2021-00104
`Patent No. 7,381,657
`
`Intel Corporation files the present petition for inter partes review IPR2021-
`
`01031(the “Intel IPR”) and moves for joinder of IPR2021-00104, filed by Applied
`
`Materials, Inc. (the “Applied IPR”). The Intel IPR is identical to the Applied IPR in
`
`all substantive respects, includes identical exhibits, and relies upon the same expert
`
`declarants. Petitioner does not seek to alter the grounds upon which the Board has
`
`already instituted the Applied IPR, and seeks no change in the existing schedule for
`
`that IPR proceeding. Petitioner respectfully request an opportunity to join with the
`
`Applied IPR solely as an “understudy,” where Petitioner would only assume an
`
`active role in the event Applied Materials settles with Patent Owner Demaray LLC
`
`and moves to terminate the Applied IPR.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`
`Demaray is the owner of U.S. Patent No. 7,381,657 (the “’657 Patent”) and
`
`has asserted infringement of this patent in the following 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”); Applied Materials, Inc. v. Demaray LLC,
`
`Case No. 5-20-cv-05676 (N.D. Cal.) (terminated); Applied Materials, Inc. v.
`
`Demaray LLC, 5-20-cv-09341 (N.D. Cal). The ’657 Patent is also at issue in Applied
`
`
`
`1
`
`
`
`Motion for Joinder of IPR2021-00104
`Patent No. 7,381,657
`Materials, Inc. v. Demaray LLC, IPR2021-00106 (PTAB) (institution denied under
`
`314(a)).
`
`On October 23, 2020, Applied Materials filed a Petition requesting an inter
`
`partes review of claims 1–21 of the ’657 Patent. Demaray filed a Preliminary
`
`Response to the Petition, Petitioner filed a Reply, and Demaray filed a Sur-reply.
`
`The Board instituted the Applied IPR on May 11, 2021.
`
`III. DISCUSSION
`
`Petitioner respectfully requests that the Board exercise its discretion to grant
`
`joinder of the Intel IPR and the Applied IPR proceedings pursuant to 35 U.S.C. §
`
`315(c), 37 C.F.R. § 42.22, and 37 C.F.R. § 42.122(b). In support of this motion,
`
`Petitioner proposes consolidated filings and other procedural accommodations
`
`designed to streamline the proceedings.
`
`A. Reasons Why Joinder Is Appropriate
`
`Joinder is appropriate in this case because it is the most expedient way to
`
`secure the just, speedy, and inexpensive resolution of the related proceedings. See
`
`35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). Intentionally, the Intel IPR is substantively
`
`identical to the corresponding Applied IPR in an effort to avoid multiplication of
`
`issues before the Board. Given the duplicative nature of these petitions, joinder of
`
`the related proceedings is appropriate. Further, Petitioner will agree to consolidated
`
`
`
`2
`
`
`
`Motion for Joinder of IPR2021-00104
`Patent No. 7,381,657
`filings and discovery, and procedural concessions, which Applied Materials does not
`
`oppose.
`
`1.
`
`Substantively Identical Petitions
`
`Petitioner represents that the Intel IPR is identical to the Applied IPR in all
`
`substantive respects. It includes identical grounds, analysis, and exhibits and relies
`
`upon the same expert declarants and declarations. Accordingly, if instituted,
`
`maintaining the Intel IPR proceeding separate from that of Applied Materials would
`
`entail needless duplication of effort.
`
`2.
`
`Consolidated Filings and Discovery
`
`Because the grounds of unpatentability in the Intel IPR and Applied IPR are
`
`the same, the case is amenable to consolidated filings. Petitioner will agree to
`
`consolidated filings for all substantive papers in the proceeding (e.g., Reply to the
`
`Patent Owner’s Response, Opposition to Motion to Amend, Motion for Observation
`
`on Cross Examination Testimony of a Reply Witness, Motion to Exclude Evidence,
`
`Opposition to Motion to Exclude Evidence and Reply). Specifically, Petitioner will
`
`agree to incorporate its filings with those of Applied Materials in a consolidated
`
`filing, subject to the ordinary rules for one party on page limits. Applied Materials
`
`and Petitioner will be jointly responsible for the consolidated filings.
`
`
`
`3
`
`
`
`Motion for Joinder of IPR2021-00104
`Patent No. 7,381,657
`Petitioner agrees not to be permitted any arguments separate from those
`
`advanced by Petitioner and Applied Materials in the consolidated filings. These
`
`limitations avoid lengthy and duplicative briefing.
`
`Consolidated discovery is also appropriate given that Petitioner and Applied
`
`Materials are using the same expert declarants who has submitted the same, identical
`
`declarations in the proceedings. Petitioner and Applied Materials will designate an
`
`attorney to conduct the cross-examination of any given witness produced by
`
`Demaray and the redirect of any given witness produced by Petitioner or Applied
`
`Materials within the timeframe normally allotted by the rules for one party.
`
`Petitioner will not receive any separate cross-examination or redirect time.
`
`Petitioner will agree to the foregoing conditions regarding consolidated filings and
`
`discovery even in the event other IPRs filed by other, third-party petitioners are
`
`joined with the Applied IPR.
`
`B. No New Grounds Of Patentability
`
`The Intel IPR raises no new grounds of unpatentability from those of the
`
`Applied IPR because, in fact, the petitions are identical.
`
`C. No Impact On IPR Trial Schedule
`
`The small difference between the filing date of the Intel IPR and the Applied
`
`IPR is without consequence should the proceedings be joined. The trial schedule for
`
`the Applied IPR would not need to be delayed to effect joinder based on Demaray’s
`
`
`
`4
`
`
`
`Motion for Joinder of IPR2021-00104
`Patent No. 7,381,657
`preliminary response and later-filed Intel IPR. The joint proceeding would allow
`
`the Board and parties to focus on the merits in one consolidated proceeding without
`
`unnecessary duplication of effort, and in a timely manner.
`
`D. Briefing And Discovery Will Be Simplified
`
`Joinder will simplify briefing and discovery because Petitioner seeks an order
`
`similar to that issued in Motorola Mobility LLC v. Softview LLC, IPR2013-00256
`
`(PTAB June 20, 2013) (Paper 10). As discussed above, Petitioner and Applied
`
`Materials will engage in consolidated filings and discovery, which will simplify the
`
`briefing and discovery process.
`
`E. No Prejudice To Demaray If Proceedings Are Joined
`
`Petitioner proposes joinder to streamline the proceedings and reduce the costs
`
`and burdens on the parties. Petitioner believes joinder will achieve these goals for
`
`several reasons. First, joinder will most certainly decrease the number of papers the
`
`parties must file, by eliminating a duplicative proceeding. Second, joinder will also
`
`reduce by half the time and expense for depositions and other discovery required in
`
`separate proceedings. Third, joinder creates case management efficiencies for the
`
`Board and parties without any prejudice to Demaray.
`
`IV. PROPOSED ORDER
`
`Petitioner proposes a joinder order for consideration by the Board as follows,
`
`which Applied Materials does not oppose:
`
`
`
`5
`
`
`
`Motion for Joinder of IPR2021-00104
`Patent No. 7,381,657
` If review is instituted on any grounds in the Applied IPR, the Intel IPR
`
`will be instituted and will be joined with the Applied IPR on the same
`
`grounds. Grounds not instituted because the Applied IPR failed to
`
`establish a reasonable likelihood of prevailing, if any, will be similarly
`
`denied in the Intel IPR.
`
` The scheduling order for the Applied IPR will apply for the joined
`
`proceedings.
`
` Throughout the proceedings, Applied Materials and Intel will file
`
`papers as consolidated filings, except for motions that do not involved
`
`the other party, in accordance with the Board’s established rules
`
`regarding page limits. So long as they both continue to participate in
`
`the joined proceedings, Applied Materials and Petitioner will identify
`
`each such filing as Consolidated Filing and will be responsible for
`
`completing all consolidated filings.
`
` Applied Materials and Petitioner will designate an attorney to conduct
`
`the cross examination of any given witness produced by Demaray and
`
`the redirect of any given witness produced by Applied Materials or
`
`Petitioner within the timeframe normally allotted by the rules for one
`
`party. Petitioner will not receive any separate cross-examination or
`
`redirect time.
`
`6
`
`
`
`
`
`Motion for Joinder of IPR2021-00104
`Patent No. 7,381,657
` Demaray will conduct any cross examination of any given witness
`
`jointly produced by Applied Materials or Petitioner and the redirect of
`
`any given witness produced by Demaray within the timeframe normally
`
`allotted by the rules for one cross-examination or redirect examination.
`
`V. CONCLUSION
`
`For the foregoing reasons, if the Director institutes inter partes review,
`
`Petitioner respectfully requests that the Board grant joinder of the Intel IPR and the
`
`Applied IPR proceedings.
`
`
`
`Dated: June 4, 2021
`
`By:
`
`Respectfully submitted,
`
`/David L. Cavanaugh/
`David L. Cavanaugh (Reg. No. 36,476)
`Counsel for Petitioner
`
`
`
`7
`
`
`
`Motion for Joinder of IPR2021-00104
`Patent No. 7,381,657
`
`CERTIFICATE OF SERVICE
`I hereby certify that on June 4, 2021, I caused a true and correct copy of the
`
`foregoing “PETITIONER’S MOTION FOR JOINDER OF IPR2021-00104
`
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)” to be served
`
`via express mail on the Patent Owner at the following correspondence address of
`
`record as listed on PAIR:
`
`HAYNES AND BOONE, LLP
`IP Section
`2323 Victory Avenue
`Suite 700
`Dallas TX 75219
`
`By:
`
`/David L. Cavanaugh/
`David L. Cavanaugh (Reg. No.
`36,476)
`
`
`
`
`
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`
`
`
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