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`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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`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
`
`v.
`
`DEMARAY LLC
`Patent Owner
`
`_________________
`
`Patent No. 7,544,276
`_________________
`
`Petitioner’s Motion for Joinder of IPR2021-00103
`Under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b)
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`
`
`Motion for Joinder of IPR2021-00103
`Patent No. 7,544,276
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 2
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`I.
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`II.
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`BACKGROUND AND RELATED PROCEEDINGS ................................... 2
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`III. DISCUSSION .................................................................................................. 3
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`A.
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`Reasons Why Joinder Is Appropriate (Factor 1) ................................... 4
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`1.
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`2.
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`Substantively Identical Petitions ................................................. 5
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`Consolidated Filings and Discovery ........................................... 5
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`B.
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`No New Grounds Of Patentability (Factor 2) ....................................... 6
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`C.
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`No Impact On IPR Trial Schedule (Factor 3) ....................................... 6
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`D.
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`Briefing And Discovery Will Be Simplified (Factor 4) ........................ 7
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`E.
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`No Prejudice To Demaray If Proceedings Are Joined .......................... 7
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`IV. CONCLUSION ................................................................................................ 8
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`1
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`
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`Motion for Joinder of IPR2021-00103
`Patent No. 7,544,276
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`I.
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`INTRODUCTION
`Samsung Electronics Co. files the present petition for inter partes review
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`IPR2021-01090 (the “Samsung IPR”) and moves for joinder with IPR2021-00103,
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`filed by Applied Materials, Inc. (the “Applied IPR”). The Samsung IPR is identical
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`to the Applied IPR in all substantive respects, includes identical exhibits, and relies
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`upon the same declarants. Petitioner does not seek to alter the grounds upon which
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`the Board has already instituted the Applied IPR, and seeks no change in the
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`existing schedule for that IPR proceeding. Petitioner respectfully requests an
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`opportunity to join with the Applied IPR solely as an “understudy,” where
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`Petitioner would only assume an active role in the event Applied Materials settles
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`with Patent Owner Demaray LLC and moves to terminate the Applied IPR.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`Demaray is the owner of U.S. Patent No. 7,544,276 (the “’657 Patent”) and
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`has asserted infringement of this patent in the following cases: Demaray LLC v.
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`Samsung Electronics Co., Ltd. et al., Case No. 6-20-cv-00636 (W.D. Tex.)
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`(“Samsung Litigation”); Demaray LLC v. Intel Corporation, Case No. 6-20-cv-
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`00634 (W.D. Tex.) (“Intel Litigation”); Applied Materials, Inc. v. Demaray LLC,
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`Case No. 5-20-cv-05676 (N.D. Cal.) (terminated); Applied Materials, Inc. v.
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`Demaray LLC, 5-20-cv-09341 (N.D. Cal). The ’276 Patent is also at issue in
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`2
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`
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`Motion for Joinder of IPR2021-00103
`Patent No. 7,544,276
`Applied Materials, Inc. v. Demaray LLC, IPR2021-00106 (PTAB) (institution
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`denied under 314(a)) and Intel Corporation v. Demaray LLC, IPR2021-01031
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`(PTAB).
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`On October 23, 2020, Applied Materials filed a Petition requesting an inter
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`partes review of claims 1–13 of the ’276 Patent. Demaray filed a Preliminary
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`Response to the Petition, Petitioner filed a Reply, and Demaray filed a Sur-reply.
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`The Board instituted the Applied IPR on May 11, 2021.
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`III. DISCUSSION
`Petitioner respectfully requests that the Board exercise its discretion to grant
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`joinder of the Samsung IPR and the Applied IPR proceedings pursuant to 35
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`U.S.C. § 315(c), 37 C.F.R. § 42.22, and 37 C.F.R. § 42.122(b). In support of this
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`motion, Petitioner proposes consolidated filings and other procedural
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`accommodations designed to streamline the proceedings.
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`The Board has discretion to join this IPR with the Applied 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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`3
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`
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`Motion for Joinder of IPR2021-00103
`Patent No. 7,544,276
`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). All
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`these factors weigh in favor of joinder. As a result, the Board should exercise its
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`discretion to allow joinder here.
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`A. Reasons Why Joinder Is Appropriate (Factor 1)
`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 in this case because it is the most expedient way to
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`secure the just, speedy, and inexpensive resolution of the related proceedings. See
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`35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). The Samsung IPR is substantively identical
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`to the corresponding Applied IPR in an effort to avoid multiplication of issues before
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`the Board. Given the duplicative nature of these petitions, joinder of the related
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`proceedings is appropriate. Further, Petitioner will agree to consolidated filings and
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`discovery, and procedural concessions, which Applied Materials does not oppose.
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`4
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`
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`Motion for Joinder of IPR2021-00103
`Patent No. 7,544,276
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`Substantively Identical Petitions
`1.
`Petitioner represents that the Samsung IPR is identical to the Applied IPR in
`
`all substantive respects. It includes identical grounds, analysis, and exhibits and
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`relies upon the same declarants and declarations. Accordingly, if instituted,
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`maintaining the Samsung IPR proceeding separate from that of Applied Materials
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`would entail needless duplication of effort.
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`Consolidated Filings and Discovery
`2.
`Because the grounds of unpatentability in the Samsung IPR and Applied IPR
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`are the same, the case is amenable to consolidated filings. Petitioner will agree to
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`consolidated filings for all substantive papers in the proceeding (e.g., Reply to the
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`Patent Owner’s Response, Opposition to Motion to Amend, Motion for Observation
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`on Cross Examination Testimony of a Reply Witness, Motion to Exclude Evidence,
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`Opposition to Motion to Exclude Evidence and Reply). Specifically, Petitioner will
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`agree to incorporate its filings with those of Applied Materials in a consolidated
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`filing, subject to the ordinary rules for one party on page limits. Applied Materials
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`and Petitioner will be jointly responsible for the consolidated filings.
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`Petitioner agrees not to be permitted any arguments separate from those
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`advanced by Petitioner and Applied Materials in the consolidated filings. These
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`limitations avoid lengthy and duplicative briefing.
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`5
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`
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`Motion for Joinder of IPR2021-00103
`Patent No. 7,544,276
`Consolidated discovery is also appropriate given that Petitioner and Applied
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`Materials are using the same declarants who has submitted the same, identical
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`declarations in the proceedings. Petitioner and Applied Materials will designate an
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`attorney to conduct the cross-examination of any given witness produced by
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`Demaray and the redirect of any given witness produced by Petitioner or Applied
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`Materials within the timeframe normally allotted by the rules for one party.
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`Petitioner will not receive any separate cross-examination or redirect time. Petitioner
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`will agree to the foregoing conditions regarding consolidated filings and discovery
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`even in the event other IPRs filed by other, third-party petitioners are joined with the
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`Applied IPR.
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`B. No New Grounds Of Patentability (Factor 2)
`The Samsung IPR raises no new grounds of unpatentability from those of the
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`Applied IPR because the petitions are identical.
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`C. No Impact On IPR Trial Schedule (Factor 3)
`The small difference between the filing date of the Samsung IPR and the
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`Applied IPR is without consequence should the proceedings be joined. The trial
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`schedule for the Applied IPR would not need to be delayed to effect joinder based
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`on Demaray’s preliminary response and later-filed Samsung IPR. The joint
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`proceeding would allow the Board and parties to focus on the merits in one
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`6
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`Motion for Joinder of IPR2021-00103
`Patent No. 7,544,276
`consolidated proceeding without unnecessary duplication of effort, and in a timely
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`manner.
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`D. Briefing And Discovery Will Be Simplified (Factor 4)
`Joinder will simplify briefing and discovery because Petitioner seeks an order
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`similar to that issued in Motorola Mobility LLC v. Softview LLC, IPR2013-00256
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`(PTAB June 20, 2013) (Paper 10). As discussed above, Petitioner and Applied
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`Materials will engage in consolidated filings and discovery, which will simplify the
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`briefing and discovery process.
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`E. No Prejudice To Demaray If Proceedings Are Joined
`Petitioner proposes joinder to streamline the proceedings and reduce the costs
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`and burdens on the parties. Petitioner believes joinder will achieve these goals for
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`several reasons. First, joinder will most certainly decrease the number of papers the
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`parties must file, by eliminating a duplicative proceeding. Second, joinder will also
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`reduce by half the time and expense for depositions and other discovery required in
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`separate proceedings. Third, joinder creates case management efficiencies for the
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`Board and parties without any prejudice to Demaray.
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`7
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`Motion for Joinder of IPR2021-00103
`Patent No. 7,544,276
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`IV. CONCLUSION
`For foregoing reasons, if the Director institutes inter partes review, Petitioner
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`respectfully requests that the Board grant joinder of the Samsung IPR and the
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`Applied IPR proceedings.
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`
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`Dated: June 11, 2021
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`
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`
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`Respectfully submitted,
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` By: /Cosmin Maier/
`Cosmin Maier (Reg. No. 75,387)
`
`
`Desmarais LLP
`230 Park Avenue
`New York, NY 10169
`Tel: 212-351-3400
`Fax: 212-351-3401
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`Counsel for Petitioner
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`8
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`Motion for Joinder of IPR2021-00103
`Patent No. 7,544,276
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`CERTIFICATE OF SERVICE
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`I hereby certify that on June 11, 2021 I caused a true and correct copy of the
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`foregoing PETITIONER’S MOTION FOR JOINDER OF IPR2021-00103 UNDER
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`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b) to be served via express
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`mail on the Patent Owner at the following correspondence address of record as listed
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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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`/Cosmin Maier/
`By:
` Cosmin Maier (Reg. No. 75,387)
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`on PAIR:
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