IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`APPLIED MATERIALS, INC.
`
`Petitioner,
`
`v.
`
`OCEAN SEMICONDUCTOR LLC,
`
`Patent Owner.
`
`_____________________
`
`Case IPR: IPR2021-01342
`U.S. Patent No. 6,968,248
`_____________________
`
`PETITIONER’S REPLY IN SUPPORT OF MOTION TO STRIKE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`APPLIED MATERIALS, INC.
`
`Petitioner,
`
`v.
`
`OCEAN SEMICONDUCTOR LLC,
`
`Patent Owner.
`
`_____________________
`
`Case IPR: IPR2021-01342
`U.S. Patent No. 6,968,248
`_____________________
`
`PETITIONER’S REPLY IN SUPPORT OF MOTION TO STRIKE
`
`
`
`
`
`
`
`Petitioner’s Reply in Support of Motion To Strike
`IPR2021-01342
`
`
`
`
`
`
`TABLE OF CONTENTS
`Ocean’s New Enablement Argument in Its Sur-Reply, Augmented in
`Its Opposition to the Motion to Strike, Should Be Stricken ............................ 1
`Ocean’s Argument Belatedly Addressing District Court Claim
`Constructions in Sur-Reply Should Be Stricken as Waived ........................... 3
` Ocean’s New Prosecution History Arguments Should Be Stricken ............... 4
` Ocean’s New Sur-Reply Argument Regarding “Additional Software
`Components Created by Agents” Should Be Stricken .................................... 4
` Ocean’s Meet and Confer Accusations Are Misdirected ................................ 5
`
`
`
`i
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`
`
`Petitioner’s Reply in Support of Motion To Strike
`IPR2021-01342
`
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Facebook v. Windy City Innovations,
`IPR2016-01067, Paper 65 (PTAB Dec. 6, 2017) ................................................. 2
`In re Morsa,
`713 F.3d 104 (Fed. Cir. 2013) .............................................................................. 2
`
`
`Statutes and Other Authorities
`37 C.F.R. § 42.23(b) .................................................................................................. 1
`37 C.F.R. § 42.51(b) .................................................................................................. 3
`PTAB Consolidated Trial Practice Guide ......................................................... 1, 3, 5
`
`
`ii
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`
`
`Petitioner’s Reply in Support of Motion To Strike
`IPR2021-01342
`Ocean does not dispute that all four arguments identified in Petitioner’s
`
`Motion were raised for the first time in sur-reply but then seeks to excuse its non-
`
`compliance with 37 C.F.R. § 42.23(b) based on its contention that Petitioner
`
`purportedly raised new arguments in reply. See Opp’n at 1, 4-7. Worse, Ocean
`
`seeks to supplement its new positions through its Opposition with additional
`
`arguments not present in either the POR or even the sur-reply. Even if Ocean had
`
`ever previously contended that Petitioner raised any new theory or arguments or
`
`sought to strike any reply arguments in accordance with CTPG procedures, see
`
`CTPG at 81, neither of which occurred, Ocean’s contentions are refuted by the
`
`record.
`
`
`
`Ocean’s New Enablement Argument in Its Sur-Reply, Augmented in Its
`Opposition to the Motion to Strike, Should Be Stricken
`Without even trying to show that it raised any enablement argument at any
`
`point before the sur-reply, Ocean introduces yet another new theory in its
`
`Opposition that Schulze is not entitled to the presumption of enablement because
`
`its disclosures are purportedly “not enabling on their face.” See Opp’n at 4. Not
`
`only was no such argument raised in any of Ocean’s merits briefing, the case cited
`
`by Ocean recognizes that to contest enablement, a patent owner must still “do more
`
`1
`
`
`
`Petitioner’s Reply in Support of Motion To Strike
`IPR2021-01342
`than state an unsupported belief that a reference is not enabling.”1 See In re
`
`Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013).
`
`Ocean provides no authority to suggest that Petitioner’s citations showing
`
`disclosure of semiconductor manufacturing processes, see Reply at 8, in response
`
`to Ocean’s POR argument that “Schulze makes no mention of a process flow,”2 see
`
`POR at 9, justifies introducing a new non-enablement argument in sur-reply. See
`
`Facebook v. Windy City Innovations, IPR2016-01067, Paper 65 at 72-73 (PTAB
`
`Dec. 6, 2017) (not excluding citations that “properly respond[] to Patent Owner’s
`
`argument that Exhibit 1014 does not disclose or suggest connecting a BBS to the
`
`Internet, inter alia, by citing to portions of Exhibit 1014 that show it does”).
`
`
`1 Despite acknowledging that the portions of Schulze cited by Petitioner contain
`
`relevant disclosures of the claimed “integrated, automated process flow,” Ocean
`
`contends that Petitioner’s enablement argument is “unsupported.” See Opp’n at 4.
`
`2 Contrary to Ocean’s characterization that Petitioner provided these citations for
`
`the first time in reply, Petitioner analyzed the cited portions of Schulze throughout
`
`the Petition. See, e.g., Paper 1 at 19, 25-28, 34, 37-38, 42. Ocean also misquotes
`
`“[0055]” as “[0056].” Compare Opp’n at 4 with Reply at 8. The Petition cites
`
`paragraph [0055] for the claim element “a predetermined event in an integrated,
`
`automated process flow.” See Paper 1 at 42.
`
`2
`
`
`
`Petitioner’s Reply in Support of Motion To Strike
`IPR2021-01342
` Ocean’s Argument Belatedly Addressing District Court Claim
`Constructions in Sur-Reply Should Be Stricken as Waived
`Ocean does not dispute that it did not discuss the two district court claim
`
`construction orders until its sur-reply, despite receiving both orders directly as a
`
`party to the litigations months before filing its POR.3 See Opp’n at 5-8. Ocean’s
`
`justification for failing to address these orders in its POR, in contravention of the
`
`CTPG guidance and 37 C.F.R. § 42.51(b), is that it agreed that no claim
`
`construction was necessary. As Petitioner noted in the Reply, however, Ocean had
`
`argued in the POR that the claimed “software scheduling agent” should be
`
`construed as a “fab-wide” and “globally-reactive scheduling system” for
`
`“schedul[ing] multiple machine[s] and/or resource operations simultaneously
`
`throughout a large semiconductor production facility.” See POR at 22-24, 28.
`
`Particularly since the construction of “software scheduling agent” by both courts is
`
`inconsistent with the position advanced by Ocean in its POR, Ocean had a duty to
`
`submit these orders pursuant to 37 C.F.R. § 42.51(b). Ocean should not be
`
`
`3 Ocean attempts to fault Petitioner for not submitting these orders before the
`
`Reply, see Opp’n at 5-6, even though they issued months after the filing of the
`
`Petition. See CTPG at 47 (“Preferably, the prior claim construction determination
`
`should be submitted with the petition, preliminary response, or response, along
`
`with explanations.”).
`
`3
`
`
`
`Petitioner’s Reply in Support of Motion To Strike
`IPR2021-01342
`rewarded for its repeated disregard of the Board’s orders, rules, and guidance.
`
` Ocean’s New Prosecution History Arguments Should Be Stricken
`Ocean does not dispute that it never addressed the prosecution history of the
`
`’248 patent in the POR but contends that its sur-reply addresses “the portion of the
`
`file history … cited by Petitioner in its Reply (at 13-14).” See Opp’n at 7
`
`(emphasis omitted). Since the Petition cited and analyzed that same portion of the
`
`prosecution history, see Paper 1 at 4-6, Ocean should have addressed it in the POR.
`
`Ocean now appears to have abandoned its new sur-reply argument that the
`
`applicant’s statements in prosecution would prohibit “the possibility that a given
`
`scheduling agent might represent different domain entities at different times.” See
`
`Sur-Reply at 12. Instead, Ocean attempts to inject another new theory through its
`
`Opposition that the prosecution history “leaves open the possibility that a given
`
`software scheduling agent could schedule for multiple manufacturing domain
`
`entities at different times.” See Opp’n at 7. Given that Ocean did not raise either
`
`argument in the POR, these improper new arguments should be stricken.
`
` Ocean’s New Sur-Reply Argument Regarding “Additional Software
`Components Created by Agents” Should Be Stricken
`Ocean’s POR argument regarding Gupta’s six-minute time-step was based
`
`exclusively on its construction of the claimed “software scheduling agent” as
`
`requiring “fab-wide” scheduling. See POR at 28. Ocean does not dispute that it
`
`never previously discussed any “additional software components created by
`
`4
`
`
`
`Petitioner’s Reply in Support of Motion To Strike
`IPR2021-01342
`agents,” in connection with Gupta’s six-minute time-step or otherwise. See Opp’n
`
`at 8-9. Thus, Ocean’s new argument based on such “additional software
`
`components” should be stricken. See CTPG at 74.
`
` Ocean’s Meet and Confer Accusations Are Misdirected
`Having admittedly raised a series of new arguments for the first time in sur-
`
`reply in contravention of the CTPG and the Board’s Order, Ocean contends that
`
`Petitioner’s Motion should nonetheless be denied for failure to meet and confer.4
`
`Any inability to meet and confer is the result of Ocean’s own conduct, see Ex.
`
`2046 at 2-3, and Ocean has suffered no prejudice, particularly compared to the
`
`undue prejudice to Petitioner of being deprived of the opportunity to explore or
`
`respond to Ocean’s new sur-reply arguments.
`
`For the foregoing reasons, all of Ocean’s new sur-reply arguments, see Mot.
`
`at 1-2, as well as the additional arguments raised only through its Opposition,
`
`should be stricken as waived and improper. See Paper 18 at 9; CTPG at 80-81.
`
`
`
`
`4 Ocean even resorts to rehashing a past discovery dispute in which Petitioner was
`
`forced to search for authority, see Paper 32, since Ocean declined to provide any in
`
`the parties’ meet and confer despite representing to the Board that it had
`
`“additional authorities.” See Ex. 3001.
`
`5
`
`
`
`Dated: October 28, 2022
`
`
`Petitioner’s Reply in Support of Motion To Strike
`IPR2021-01342
`
`Respectfully submitted,
`
`/Eric A. Krause/
`Eric A. Krause (Reg. No. 62,329)
`Lead Attorney for Petitioner
`Applied Materials, Inc.
`
`Axinn Veltrop & Harkrider LLP
`55 Second Street
`San Francisco, CA 94105-3491
`(415) 490-1491
`
`6
`
`
`
`Petitioner’s Reply in Support of Motion To Strike
`IPR2021-01342
`
`CERTIFICATION OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that he caused the
`
`above-captioned Petitioner’s Reply in Support of Motion To Strike to be served in
`
`its entirety on October 28, 2022 on counsel for Patent Owner Ocean
`
`Semiconductor LLC via email:
`
`Timothy Devlin (Lead Counsel)
`Alex Chan (Backup Counsel)
`Joel W. Glazer (Backup Counsel)
`Henrik Parker (Backup Counsel)
`Peter Mazur (Backup Counsel)
`Joseph Zito (Backup Counsel)
`Devlin Law Firm LLC
`1526 Gilpin Avenue
`Wilmington, DE 19806
`TD-PTAB@devlinlawfirm.com
`achan@devlinlawfirm.com
`jglazer@devlinlawfirm.com
`hparker@devlinlawfirm.com
`pmazur@devlinlawfirm.com
`jzito@devlinlawfirm.com
`dlflitparas@devlinlawfirm.com
`oceansemi-dlf@devlinlawfirm.com
`
`Dated: October 28, 2022k
`
`
`
`
`
`
`7
`
`/Eric A. Krause/
`Eric A. Krause (Reg. No. 62,329)
`Lead Attorney for Petitioner
`Applied Materials, Inc.
`
`Axinn Veltrop & Harkrider LLP
`55 Second Street
`San Francisco, CA 94105
`(415) 490-1491
`
`
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