Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: September 2, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STMICROELECTRONICS, INC.
`Petitioner,
`v.
`OCEAN SEMICONDUCTOR LLC,
`Patent Owner.
`
`IPR2022-00681
`Patent 6,968,248 B1
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, JOHN D. HAMANN, and DAVID COTTA,
`Administrative Patent Judges.
`QUINN, 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 10
`Entered: September 2, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STMICROELECTRONICS, INC.
`Petitioner,
`v.
`OCEAN SEMICONDUCTOR LLC,
`Patent Owner.
`
`IPR2022-00681
`Patent 6,968,248 B1
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, JOHN D. HAMANN, and DAVID COTTA,
`Administrative Patent Judges.
`QUINN, 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
`
`
`
`
`
`
`
`
`IPR2022-00681
`Patent 6,968,248 B1
`
`INTRODUCTION
`I.
`Petitioner STMicroelectronics, Inc. (“Petitioner”) filed a Petition
`requesting inter partes review of claims 1–22 of U.S. Patent No. 6,968,248
`B1 (“the ’248 patent”). Paper 1 (“Pet.”). Petitioner also filed a Motion for
`Joinder seeking joinder as a petitioner with Applied Materials, Inc. in
`Applied Materials, Inc v. Ocean Semiconductor LLC, IPR2021-01342 (the
`“Applied Materials IPR”). Paper 3 (“Joinder Motion”). Ocean
`Semiconductor (“Patent Owner”) filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”). With authorization of the Board, Petitioner filed a Reply
`to Patent Owner’s Preliminary Response. Paper 8 (“Reply”). And Patent
`Owner filed a Sur-Reply to Petitioner’s Reply. Paper 9 (“Sur-Reply”).
`Patent Owner did not file an opposition to the Motion for Joinder.
`We have authority under 35 U.S.C. § 314. Upon considering the
`information presented in the parties’ papers, for reasons discussed below, we
`institute inter partes review of claims 1–22 of the ’248 patent and grant
`Petitioner’s Motion for Joinder.
`A. Related Matters
`The parties indicate that the ’248 patent has been asserted in ten
`pending litigations: Ocean Semiconductor LLC v. Analog Devices, Inc.,
`No. 1:20-cv-12310 (D. Mass.); Ocean Semiconductor LLC v. Infineon
`Techs. AG, No. 1:20-cv-12311 (D. Mass.); Ocean Semiconductor LLC v.
`Huawei Devices USA, Inc., No. 4:20-cv-991 (E.D. Tex.); Ocean
`Semiconductor LLC v. MediaTek Inc., No. 6:20-cv-1210 (W.D. Tex.);
`Ocean Semiconductor LLC v. NVIDIA Corp., No. 6:20-cv-1211 (W.D.
`Tex.); Ocean Semiconductor LLC v. NXP Semiconductors N.V., No. 6:20-
`cv-1212 (W.D. Tex.); Ocean Semiconductor LLC v. Renesas Electronics
`Corp., No. 6:20-cv-1213 (W.D. Tex.); Ocean Semiconductor LLC v. Silicon
`
`2
`
`
`
`IPR2022-00681
`Patent 6,968,248 B1
`Labs. Inc., No. 6:20-cv-1214 (W.D. Tex.); Ocean Semiconductor LLC v.
`STMicroelectronics, Inc., No. 6:20-cv-1215 (W.D. Tex.); and Ocean
`Semiconductor LLC v. Western Digital Techs., Inc., No. 6:20-cv-1216 (W.D.
`Tex.). Pet. 1–2; Paper 5 (Patent Owner’s Mandatory Notices), 2. In
`addition, Petitioner has filed another petition for inter partes review
`(IPR2022-00680) of related patent U.S. Patent No. 6,907,305 B2. Pet 2.
`B. The ’248 Patent
`The ’248 patent relates to “scheduling in an automated manufacturing
`environment.” Ex. 1001, 1:20–21. The ’248 patent describes the
`manufacture of integrated circuits for modern semiconductor devices
`containing numerous structures or features, typically the size of a few
`micrometers. Id. at 1:38–41. The ’248 patent further describes that the
`fabrication of integrated circuits generally involves processing a number of
`wafers through a series of fabrication tools, where layers of material are
`added to, removed from, and/or treated on a semiconducting substrate. Id.
`at 1:41–45. According to the ’248 patent, controlling a semiconductor
`factory (“fab”) that fabricates such integrated circuits is a challenging task,
`where the fab is a complex environment where numerous parts (typically
`40,000 wafers or more) and numerous part types (typically 100 part types or
`more) are simultaneously being manufactured. Id. at 1:65–2:3. As each
`wafer moves through the fab, it may undergo more than 300 processing
`steps, many of which use the same machines, where a large factory may
`contain approximately 500 computer-controlled machines to perform this
`wafer processing. Id. at 2:3–8. As described in the ’248 patent, routing,
`scheduling, and tracking material through the fab is a difficult and
`complicated task, even with the assistance of a computerized factory control
`system. Id. at 2:8–11.
`
`3
`
`
`
`IPR2022-00681
`Patent 6,968,248 B1
`Figure 3 illustrates an implementation of reactive scheduling of
`activities of a process flow for a semiconductor fabrication facility and is
`reproduced below.
`
`
`
`Figure 3 shows a portion of process flow 100 from a semiconductor
`fabrication facility, and the manner in which it schedules appointments for
`the consumption of resources. Id. at 4:28–32. Process flow 100 includes
`stations 105, each station 105 including computing device 110
`communicating with process tool 115. Id. at 5:17–19. Process tools 115 are
`processing lots 130 of wafers 135 that will eventually become integrated
`circuit devices, where process tool 115 may be a fabrication tool used to
`fabricate some portion of wafers 135. Id. at 5:24–26, 6:43–45.
`Each computing device 110 includes software agent 265, where
`software agents 265, collectively, are responsible for efficiently scheduling
`and controlling lots 130 of wafers 135 through the fabrication process. Id. at
`6:24–26, 47–50. Collectively, software agents 265 reactively and
`
`4
`
`
`
`IPR2022-00681
`Patent 6,968,248 B1
`proactively schedule activities for each lot 130 for operations on a specific
`qualified process tool 115. Id. at 6:63–7:3. More specifically, the software
`agents (or scheduling agents) 265 include: Lot Scheduling Agent (“LSA”)
`305 that schedules activities on behalf of lots 130 of wafers 135; Machine
`Scheduling Agent (“MSA”) 310 that schedules activities on behalf of
`process tools 115; PM Scheduling Agent (“PMSA”) 315 that schedules
`activities on behalf of preventative maintenance (“PMs”) and equipment
`qualification (“Quals”) (not shown in Figure 3); and Resource Scheduling
`Agent (“RSA”) that schedules activities on behalf of resources (not shown in
`Figure 3). Id. at 7:20–30. Some of these activities are scheduled reactively
`(i.e., in response to events occurring in process flow 100). Id. at 7:36–37.
`For example, the ’248 patent describes the process as detecting an
`occurrence of a predetermined event in the process flow 100; notifying a
`subscribing software scheduling agent (e.g., LSA 305, MSA 310, PMAS
`315, or RSA 320) of the occurrence; and reactively scheduling an action
`responsive to the detection of the predetermined event. Id. at 7:38–46.
`
`5
`
`
`
`IPR2022-00681
`Patent 6,968,248 B1
`
`
`in an automated
`
`C. Illustrative Claims
`Of the challenged claims, claims 1 and 14 are independent. Each of
`challenged claims 2–13 and 15–22 depends from claim 1 or 14.
`Claim 1 is illustrative:
`for scheduling
`1. A method
`manufacturing environment, comprising:
`automatically detecting an occurrence of a predetermined
`event in an integrated, automated process flow;
`automatically notifying a software scheduling agent of the
`occurrence; and
`reactively scheduling an action from the software
`scheduling agent
`responsive
`to
`the detection of
`the
`predetermined event.
`Ex. 1001, 30:40–48.
`
`
`II. INSTITUTION OF INTER PARTES REVIEW
`On February 9, 2022, we instituted inter partes review in
`IPR2021-01342 based on the following prior art and grounds of
`unpatentability (Applied Materials IPR, Paper 17):
`Schulze: US 2002/0116083, published Aug. 22, 2002, filed as
`a)
`Exhibit 1007; and
`
`b) Gupta: U.S. Patent No. 4,888,692, issued December 19, 1989,
`and filed as Exhibit 1008.
`
`Challenged Claim(s) Basis
`1–22
`§ 103(a)
`
`
`References
`Schulze, Gupta
`
`6
`
`
`
`IPR2022-00681
`Patent 6,968,248 B1
`In this proceeding, Petitioner asserts the same grounds as those we
`instituted in the Applied Materials IPR. Pet. 13; see also Joinder Motion 1.
`Petitioner relies also on a Declaration of Dr. Stanley Shanfield, Ph.D., filed
`as Exhibit 1003 (“Shanfield Declaration”). Petitioner asserts that the
`Shanfield Declaration is identical to the Shanfield Declaration filed in the
`Applied Materials IPR. Joinder Motion 3.
`We have reviewed the Preliminary Response. It does not
`substantively address the merits of the Petition. In view of the identicalness
`of the issues in the instant Petition and the Applied Materials IPR and the
`previously-considered arguments from Patent Owner proffered in the
`Applied Materials IPR, we conclude that the Petitioner presents a reasonable
`likelihood that the Petitioner would prevail with respect to at least one
`challenged claim for the same reasons as indicated in our Decision Granting
`Institution of Inter Partes Review in IPR2021-01342.
`
`
`III. GRANT OF MOTION FOR JOINDER
`Joinder in inter partes review is subject to the provisions of
`
`35 U.S.C. § 315(c):
`(c) JOINDER.—If 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 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter parties review under section 314.
`As the moving party, Petitioner bears the burden of proving that it
`is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for
`joinder should: (1) set forth the reasons joinder is appropriate; (2) identify
`
`7
`
`
`
`IPR2022-00681
`Patent 6,968,248 B1
`any new grounds of unpatentability asserted in the petition; and
`(3) explain what impact (if any) joinder would have on the trial schedule
`for the existing review. See Frequently Asked Question H5,
`https://www.uspto.gov/patents/ptab/ptab-e2e-frequently-asked-questions.
`And the one-year statutory bar under 35 U.S.C. § 315(b) does not apply to
`a request for joinder. 35 U.S.C. § 315(c).
`Petitioner asserts that it filed the Motion for Joinder no later than one
`month after the institution date of IPR2021-01342, in accordance with
`37 C.F.R. § 42.122(b). Joinder Motion 3. Patent Owner does not oppose
`joinder, but states that such non-opposition is subject to two conditions.
`Prelim. Resp. 1. First, that “the Petition does not contain any arguments not
`already set forth in the [Applied Materials] IPR[.]” Id. Second, “if Applied
`Materials, Inc. . . . withdraws its contentions in the co-pending . . . IPR,
`STMicro[electronics] must also withdraw each of its Grounds from this
`matter.” Id.
`As an initial matter, our decision on whether to institute review is
`binary – either we institute review or we do not. SAS Institute Inc. v. Iancu,
`138 S. Cit. 1348, 1355 (2018) (“Here the statute says the Director must
`decide ‘whether to institute an inter partes review ... pursuant to a petition.’
`§ 314(b). The Director, we see, is given only the choice ‘whether’ to
`institute an inter partes review. That language indicates a binary choice —
`either institute review or don’t.”). We do not make conditional institution
`decisions, as Patent Owner here requests. Prelim. Resp. 1 (“Ocean does not
`oppose the Motion for Joinder, provided . . .”). In addition, we are
`disinclined to rule in advance on an issue that is not, and may never be,
`before us, like Patent Owner’s attempt to condition institution on Petitioner
`
`8
`
`
`
`IPR2022-00681
`Patent 6,968,248 B1
`withdrawing if the petitioner in the Applied Materials IPR withdraws. Id.
`Simply put, there is no statutory or precedential authority for what Patent
`Owner requests here—to only grant joinder if Petitioner STMicroelectronics
`remains an understudy in the Applied Materials IPR, and for
`STMicroelectronics to withdraw if Applied Materials withdraws.
`Accordingly, we grant joinder and find unpersuasive Patent Owner’s
`contention that a grant of Petitioner’s joinder request would be appropriate
`only under the conditions placed by Patent Owner. Nevertheless, to guide
`the parties, and provide further support for our decision to institute review,
`we provide the following additional views on each of Patent Owner’s
`conditions.
`Regarding the first condition, Patent Owner does not dispute that
`Petitioner does not include any new arguments in its Petition. Prelim.
`Resp. 3. Therefore, we find that, for the challenged claims, the Petition here
`is substantively identical to the Petition in the Applied Materials IPR.
`Joinder Motion 3. We also find that the Joinder Motion is timely. The
`evidence is also identical, including reliance on the same Shanfield
`Declaration. Id. As the issues presented in the Petition do not add anything
`new to the ongoing IPR, we, therefore, determine that Patent Owner’s first
`condition is either irrelevant or moot in light of the current circumstances.
`Regarding the second condition, Patent Owner argues that the Board
`must not allow STMicroelectronics to proceed as a petitioner in IPR2021-
`01342 if Applied Materials withdraws or dismisses its contentions. Prelim.
`Resp. 6. Patent Owner argues that without joinder STMicroelectronics is
`time-barred, and thus cannot be allowed to proceed as a Petitioner in
`IPR2021-01342 without Applied Materials because to do so would
`“continue a proceeding that would otherwise be terminated.” Id. at 5–6
`
`9
`
`
`
`IPR2022-00681
`Patent 6,968,248 B1
`(citing Apple Inc. v. UNILOC 2017 LLC, IPR2020-00854, Paper 9 at 4
`(PTAB Oct. 28, 2020) (“Apple”)). According to Patent Owner, allowing
`Petitioner to proceed in such a case would “flout multiple Federal statutes,
`[PTAB] precedential opinions, and Supreme Court precedent by proceeding
`in a matter where it would otherwise have been explicitly barred.” Id. at 6.
`Specifically, Patent Owner argues that allowing Petitioner to continue
`a proceeding in the event of an Applied Materials withdrawal would be a
`potential abuse of the post-grant review process in the form of a repeated
`attack on a single patent, functionally granting Petitioner “a second bite at
`asserting invalidity . . . [and] would also impose undue prejudice on Patent
`Owner.” Sur-Reply 1; see Prelim. Resp. 4, 6. Patent Owner cites Apple to
`support the contention that a party cannot use joinder to “continue a
`proceeding that would otherwise be terminated.” Prelim. Resp. 6 (quoting
`Apple).
`We are unpersuaded by Patent Owner’s arguments. 35 U.S.C. § 315
`provides that joinder is discretionary and explicitly allows for joinder of a
`time-barred Petitioner. 35 U.S.C. § 315(b)-(c)(“The time limitation set forth
`. . . shall not apply to a request for joinder.”) Therefore, the fact that
`STMicroelectronics may be time-barred is irrelevant to its joinder as a
`Petitioner in IPR2021-01342, even should Applied Materials later withdraw.
`Id.
`
`Furthermore, we find unpersuasive Patent Owner’s argument that,
`based on Apple, Petitioner cannot continue the proceeding if Applied
`Materials withdraws because it would “continue a proceeding that would
`otherwise be terminated.” Prelim Resp. 6. Apple addressed whether a
`petitioner who had a first petition denied on the merits would be allowed to
`join an already-instituted IPR through a second petition. See Apple, 4. Such
`
`10
`
`
`
`IPR2022-00681
`Patent 6,968,248 B1
`a situation is “the kind of serial attack that General Plastic was intended to
`address” and the remedy is to discretionarily deny institution. Id. The
`situation in Apple is not analogous to the instant case. Unlike the petitioner
`in Apple, Petitioner STMicroelectronics has not previously filed a petition
`that was denied on the merits, and properly filed its Petition and Joinder
`Motion within one month of the institution date of the Applied Materials
`IPR. Therefore, neither the rationale nor the outcome of Apple applies here.
`As to Petitioner’s showing for the remaining requirement for joinder,
`Petitioner has shown that the trial schedule will not be affected by joinder.
`Joinder Motion 5–6. No changes in the schedule are anticipated or
`necessary, and the limited participation, if at all, of Petitioner will not impact
`the timeline of the ongoing trial. Id.
`Petitioner shall adhere to the existing schedule of IPR2021-01342 and
`the “understudy” role it has agreed to assume. Id. at 1. More specifically,
`so long as any Applied Materials IPR Petitioner entity is a party to the
`Applied Materials IPR, all filings of Petitioner in the Applied Materials IPR
`shall be consolidated with the filings of the Applied Materials IPR
`Petitioner. The page limits set forth in 37 C.F.R. § 42.24 will apply to all
`consolidated filings.
`Petitioner is bound by any discovery agreements between Patent
`Owner and the Applied Materials IPR Petitioner in the Applied Materials
`IPR, and shall not seek any additional discovery. Patent Owner shall not be
`required to provide any additional discovery or deposition time as a result of
`joinder. In addition, if an oral hearing is requested and scheduled,
`Petitioners in IPR2021-01342 shall collectively designate attorneys to
`present at the oral hearing in a consolidated argument.
`
`11
`
`
`
`IPR2022-00681
`Patent 6,968,248 B1
`The Board expects Petitioner to attempt to resolve any disputes among
`the entities involved and to contact the Board only if such matters cannot be
`resolved. This arrangement promotes the just and efficient administration of
`the ongoing trial and the interests of Petitioner and Patent Owner.
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that IPR2022-00681 is hereby instituted on the following
`grounds:
`Challenged Claim(s) Basis
`1–22
`§ 103(a)
`
`References
`Schulze, Gupta
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2021-01342 is granted, and STMicroelectronics, Inc. is hereby joined as
`a petitioner in IPR2021-01342;
`FURTHERED ORDERED that the Scheduling Order entered in
`IPR2021-01342 and schedule changes agreed to by the current parties in
`IPR2021-01342 (pursuant to the Scheduling Order) shall govern the
`schedule;
`FURTHER ORDERED that all filings by the Petitioner entities in
`IPR2021-01342 will be consolidated and no filing by Petitioner alone will be
`allowed without prior authorization by the Board;
`FURTHER ORDERED that Petitioner is bound by any discovery
`agreements between Patent Owner and the Petitioner in IPR2021-01342, and
`that Petitioner shall not seek any additional discovery;
`FURTHER ORDERED that the Petitioner entities in IPR2021-01342
`shall collectively designate attorneys to present at the oral hearing in a
`consolidated argument;
`
`12
`
`
`
`IPR2022-00681
`Patent 6,968,248 B1
` FURTHER ORDERED that a copy of this Decision be entered into
`the record of IPR2021-01342; and
`FURTHER ORDERED that the case caption in IPR2021-01342, from
`now on, shall reflect joinder with this proceeding in accordance with the
`attached example.
`
`13
`
`
`
`IPR2022-00681
`Patent 6,968,248 B1
`For PETITIONER:
`Tyler R. Bowen
`Phillip A. Morin
`Chad S. Campbell
`PERKINS COIE LLP
`bown-ptab@perkinscoie.com
`morin-ptab@perkinscoiecom
`campbell-ptab@perkinscoie.com
`
`
`For PATENT OWNER:
`Timothy Devlin
`Henrik Parker
`Alex Chan
`Joel Glazer
`DEVLIN LAW FIRM LLC
`TD-PTAB@devlinlawfirm.com
`hparker@devlinlawfirm.com
`achan@devlinlawfirm.com
`jglazer@devlinlawfirm.com
`
`
`
`14
`
`
`
`IPR2022-00681
`Patent 6,968,248 B1
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLIED MATERIALS, INC., and STMICROELECTRONICS, INC.1
`Petitioner,
`v.
`OCEAN SEMICONDUCTOR LLC,
`Patent Owner.
`
`
`
`
`
`
`
`IPR2021-01342
`Patent 6,968,248 B1
`
`
`
`1 STMicroelectronics filed a motion for joinder and a petition in IPR2022-
`00681, which were granted, and, therefore, STMicroelectronics has been
`joined to this proceeding.
`
`15
`
`
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