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 TO PATENT OWNER’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`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 TO PATENT OWNER’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01342
`
`EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 6,968,248 (“’248 patent”)
`
`U.S. Patent No. 6,907,305 (“’305 patent”)
`
`Declaration of Stanley Shanfield, Ph.D.
`
`Curriculum Vitae of Stanley Shanfield, Ph.D.
`
`File Wrapper for the ’248 patent
`
`Exhibit
`No.
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`File Wrapper for the ’305 patent
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`Schulze, U.S. Patent Application Publication No. US 2002/0116083
`(provisional application filed Oct. 17, 2000; application filed Oct. 16;
`2001; published Aug. 22, 2002)
`
`Gupta et al., U.S. Patent No. 4,888,692 (filed Nov. 10, 1988; issued
`Dec. 19, 1989)
`
`Schulze, U.S. Provisional Application No. 60/241,343 (filed Oct. 17,
`2000)
`
`United States Patent and Trademark Office’s Electronic Assignment
`Record for U.S. Patent No. 6,968,248
`
`District Court Trial Dates Tend to Slip After PTAB Discretionary
`Denials, available at https://www.patentspostgrant.com/district-
`court-trial-dates-tend-to-slip-after-ptab-discretionary-denials/ (last
`visited July 20, 2021)
`
`1012
`
`
`B.L. MacCarthy and J. Liu, Addressing the Gap in Scheduling
`Research: A Review of Optimization and Heuristic Methods in
`Production Scheduling, Int. J. Prod. Pres., Vol. 31, No. 1, 59-79
`(1993)
`1013 W. Shen, L. Wang and Q. Hao, Agent-based Distributed
`Manufacturing Process Planning and Scheduling: A State-of-the-art
`
`i
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01342
`
`Description
`survey, IEEE Transactions on Systems, Man, and Cybernetics, Part C
`(Applications and Reviews), vol. 36, no. 4, pp. 563-577 (July 2006)
`
`W. Shen, Distributed manufacturing scheduling using intelligent
`agents, IEEE Intelligent Systems, vol. 17, no. 1, 88-94 (Jan.-Feb.
`2002)
`
`M. Yamamoto and S. Y. Nof, Scheduling/rescheduling in the
`manufacturing operating system environment , International Journal
`of Production Research, 23:4, 705-722 (1985)
`
`J. Sun and D. Xue, A Dynamic Reactive Scheduling Mechanism for
`Responding to Changes of Production Orders and Manufacturing
`Resources, Computers in Industry, 189-207 (2001)
`
`J. McGehee, The MMST Computer-Integrated Manufacturing System
`Framework, IEEE Transactions on Semiconductor Manufacturing, 7:
`107-16 (1994)
`
`P. Cowling and M. Johansson, Using Real Time Information for
`Effective Dynamic Scheduling, European Journal of Operational
`Research 139, 230-244 (2002)
`
`P. Diwan and D. Kothari, Role of Automation and Robotics in
`Semiconductor Industry, IETE Technical Review, 7: 368-77 (1990)
`
`N.R. Jennings and M. Wooldridge, Applications of Intelligent
`Agents, Agent Technology, 3-28 (1998)
`
`Exhibit
`No.
`
`
`1014
`
`
`1015
`
`
`1016
`
`
`1017
`
`
`1018
`
`1019
`
`1020
`
`1021
`
`J.Y. Pan and J.M. Tenenbaum, Toward an Intelligent Agent
`Flamework for Enterprise Integration, AAAI (1991)
`
`1022
`
`H. Fargher and R. Smith, Planning for the Semiconductor
`Manufacturer of the Future, AAAI (1992)
`1023 W. Shen and D. Norrie, A Hybrid Agent-Oriented Infrastructure for
`Modeling Manufacturing Enterprises (1998)
`
`ii
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01342
`
`Description
`
`K. Kouiss, H. Pierreval, and N. Mebarki, Using Multi-Agent
`Architecture in FMS for Dynamic Scheduling, J. Intelligent
`Manufacturing, vol. 8, no. 1, 41–47 (Feb. 1997)
`
`S. Parthasarathy and S.H. Kim, Manufacturing Systems: Parallel
`System Models and Some Theoretical Results, International Journal
`of Computer Applications in Technology, Vol. 3, No. 4, 225-238
`(1990)
`
`R. Uzsoy, C. Lee, and L. Martin-Vega, Models in the Semiconductor
`Industry Part I: System Characteristics, Performance Evaluation and
`Production Planning, IIE Transactions, 24:4, 47-60 (1992)
`
`H. Fargher, et al., A Planner and Scheduler for Semiconductor
`Manufacturing, IEEE Transactions on Semiconductor
`Manufacturing, Vol. 7, No. 2, 117-28 (May 1994)
`
`R. Leachman and D. Hodges, Benchmarking Semiconductor
`Manufacturing (2001)
`
`J. Macher et al., E-Business and Semiconductor Industry Value
`Chain: Implications for Vertical Specialization and Integrated
`Semiconductor Manufacturers, East-West Center Working Papers
`Economics Series No. 47 (May 2002)
`
`G. Tassey, Standardization in Technology-Based Markets (June
`1999)
`
`R. Langlois, Capabilities and Vertical Disintegration in Process
`Technology: The Case of Semiconductor Fabrication Equipment
`(January 1998)
`Ocean Semiconductor LLC v. Analog Devices, Inc., No. 1:20-cv-
`12310 (D. Mass.), ECF No. 37, Sept. 20, 2021
`Ocean Semiconductor LLC v. Infineon Tech. AG, No. 1:20-cv-12311
`(D. Mass.), ECF No. 38, Sept. 20, 2021
`
`Exhibit
`No.
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`iii
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01342
`
`Description
`
`Ocean Semiconductor LLC v. MediaTek Inc., No. 6:20-cv-1210
`(W.D. Tex.), ECF No. 49, Nov. 29, 2021
`Tetrad Tech., LLC v. Implus Footcare, LLC, No. 6:21-cv-796 (W.D.
`Tex.), ECF No. 15, Oct. 13, 2021
`Peters v. United States, No. 6:21-cv-550 (W.D. Tex.), ECF No. 13,
`Oct. 3, 2021
`Springman v. Fun Town Enter., LLC, No. 6:21-cv-63 (W.D. Tex.),
`ECF No. 14, Apr. 16, 2021
`Satco Prod., Inc. v. Signify N. Am. Corp., No. 6:21-cv-146 (W.D.
`Tex.), ECF No. 34, July 14, 2021
`How reliable are trial dates relied on by the PTAB in the Fintiv
`analysis? available at https://www.1600ptab.com/2021/10/how-
`reliable-are-trial-dates-relied-on-by-the-ptab-in-the-fintiv-analysis/
`(last visited Dec. 7, 2021)
`WSOU Inv., LLC v. Dell Tech. Inc., No. 6:20-cv-00473 (W.D. Tex.),
`ECF No. 128, Dec. 1, 2021
`Ocean Semiconductor LLC v. MediaTek Inc., No. 6:20-cv-1210
`(W.D. Tex.), ECF No. 51, Dec. 9, 2021
`Ocean Semiconductor LLC v. MediaTek Inc., No. 6:20-cv-1210
`(W.D. Tex.), Docket Report, Dec. 10, 2021
`
`Exhibit
`No.
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`iv
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01342
`Patent Owner’s Preliminary Response (Paper 10) mischaracterizes the
`
`procedural developments in the parallel litigations and misapplies the facts and the
`
`law regarding the Fintiv Factors, all of which favor institution.
`
`Factor 1: Litigations Have Already Been Stayed. Patent Owner
`
`(“Ocean”) neglected to inform the Board that two of the parallel litigations have
`
`been stayed “pending a decision on the institution of IPR proceedings.” (Exs.
`
`1032, 1033.) Stays have not been requested in other cases. Juniper Networks v.
`
`WSOU Inv., IPR2021-00538, Paper 9 at 8-9 (Aug. 18, 2021) (speculation that stays
`
`are unlikely not relevant to Fintiv analysis).
`
`Factor 2: Trial Dates Not Set/Uncertain. Along with the stayed cases, the
`
`Eastern District of Texas case also does not have a set trial date. (Ex. 2008, 4 (trial
`
`date “TBD”).) The tentative trial dates in the Western District of Texas
`
`(“WDTX”) cases were “to [be] set … at the conclusion of the Markman Hearing”
`
`(Ex. 2001, 2, 4), which has already shifted once. (Ex. 1034.) Although trials in the
`
`WDTX cases are currently scheduled to begin December 7, 2022 in seriatim (Ex.
`
`1042, 9 (ECF No. 50)), at least four other unrelated cases have also been set for
`
`trial in WDTX on December 5, 2022 (Exs. 1035, 1036, 1037, 1040), and a fifth
`
`case is set for trial on December 8, 2022. (Ex. 1038.) Such overlapping trial dates
`
`will necessarily result in rescheduling at least some of those trials. In re Apple
`
`Inc., 979 F.3d 1332, 1344 (noting that WDTX “has not historically resolved cases”
`
`1
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01342
`as quickly as set in scheduling orders). Recent data shows that trial dates in patent
`
`cases rarely proceed as originally scheduled and are often delayed by several
`
`months. (Ex. 1039; accord Ex. 1011.) There are also pending motions to dismiss
`
`and motions to transfer in all of the WDTX cases. Dish Network v. Broadband
`
`iTV, IPR2020-01359, Paper 15 at 12-16 (Feb. 12, 2021) (pending venue motion
`
`persuasive evidence of possible delays).
`
`Notably, none of the decisions Ocean cites involved petitioners, like Applied
`
`Materials, who are not parties to the parallel litigations. (Paper 10, 16-17.)
`
`Moreover, in Nintendo, IPR2020-01197, Paper 13 at 12, trial had already taken
`
`place before the institution decision, and in Intel, IPR2020-00582, Paper 19 at 8,
`
`11, expert discovery had already closed. The Board has repeatedly declined to
`
`exercise its discretion to deny institution under facts similar to the present case.
`
`E.g., Bose v. Koss, IPR2021-00680, Paper 15 at 15 (Oct. 13, 2021) (Factor 2
`
`“weigh[s] strongly against exercise of discretion” where petitioner not party to
`
`litigation and trial date set 5 months before projected final written decision
`
`(“FWD”) date); W. Digit. v. Kuster, IPR2020-01410, Paper 13 at 10-11 (Feb. 17,
`
`2021) (projected FWD date 3.5 months after tentative trial date); Dish at 12-16
`
`(projected FWD date 3 months after trial date).
`
`Factor 3: Minimal Investment. The evidence of investment in parallel
`
`litigations cited by Ocean is primarily pleading-related (motions to
`
`2
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01342
`dismiss/transfer/consolidate), with “no apparent relation to the invalidity issues
`
`raised in the Petition.” W. Digit. Techs. v. Ocean, IPR2021-00864, Paper 13 at 11
`
`(Nov. 16, 2021). Although a claim construction hearing has taken place in a subset
`
`of the parallel litigations (Ex. 1041), neither Patent Owner nor Petitioner has put
`
`forth any constructions in connection with the present Petition. Cf. Cisco,
`
`IPR2020-00122, Paper 15 at 10 (Board and district court both needed to construe
`
`claims to apply the prior art). In the cases that have not been stayed, fact discovery
`
`has not closed, and expert reports and dispositive motions are not due for months.
`
`(Ex. 2001, 2-3; Ex. 2008, 3); Bose at 16-17; Dish at 17-20.
`
`Factor 4: No Substantial Overlap. The Petition challenges all claims,
`
`whereas only claims 1-12 are at issue in the litigations, to which Petitioner is not a
`
`party. (Ex. 2029, 3; Ex. 2030, 2.) Moreover, Schulze and Gupta are only 2 out of
`
`55 prior art references cited in the defendants’ invalidity contentions, which
`
`include 21 other references identified as anticipatory or as primary references for
`
`§ 103 combinations, 35 prior art systems/services, invalidity grounds under §§ 101,
`
`112, and obviousness-type double patenting. (Ex. 2029, 69-85, 246-47, 249-56;
`
`Ex. 2030, 67-84, 162-69.) The specific combination of Schulze and Gupta is never
`
`cited. (Ex. 2029, 78-85; Ex. 2030, 77-84.) The WDTX parties must also still
`
`twice discuss narrowing the number of asserted claims and prior art. (Ex. 2001, 3.)
`
`The present circumstances mirror Bose, in which the Board found Factor 4 to
`
`3
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01342
`
`weigh in favor of institution. Bose at 17-18.
`
`Factor 5: Petitioner Not Party to Any Litigation. Unlike in Apple,
`
`IPR2020-00203, Paper 12 at 13, and Mylan v. Janssen, 989 F.3d 1375, 1377 (Fed.
`
`Cir. 2021), Petitioner is not a party to the litigations and has no other forum in
`
`which to present its challenge. Kuster and Code200, cited by Ocean (Paper 10,
`
`31), are also inapposite because Petitioner is not a subsidiary of any defendant and
`
`does not share a corporate parent with any defendant. Even if the defendants had
`
`been named as RPIs, as opposed to potential RPIs (Paper 1, 1-2), Factor 5 would
`
`still not weigh against institution. Dolby Labs. v. Intertrust Techs., IPR2020-
`
`00665, Paper 11 at 16 (Feb. 16, 2021) (finding Factor 5 did not weigh against
`
`institution where petitioner was not a party to parallel litigation even though
`
`defendants were RPIs).
`
`Factor 6: Ocean Misrepresents the Merits. Ocean’s arguments on the
`
`merits of the Grounds are refuted by the express disclosures of Schulze and Gupta.
`
`Ocean argues that Gupta’s local optimization could not be applied to “every tool in
`
`a semiconductor fab,” like the one disclosed in Schulze (Paper 10, 33, 36-43),
`
`despite Gupta’s disclosure that its “local strategies are applied to each machine in
`
`the manufacturing facility.” (Ex. 1008, 2:46-48.) Ocean’s contention that Gupta’s
`
`4
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01342
`scheduler does not schedule “reactively”1 (Paper 10, 33, 43-45) likewise disregards
`
`Gupta’s disclosure of “event-driven” scheduling that “react[s] to the numerous
`
`uncontrollable events which occurs during the manufacturing process.” (Ex. 1008,
`
`2:37-39, 13:54-60.) In a similar fashion, Ocean improperly discounts the express
`
`disclosures of Gupta and Schulze, as well as a POSA’s relevant knowledge, to
`
`argue that the Schulze-Gupta combination does not disclose “publisher,” “listener,”
`
`or “a plurality of software scheduling agents.” (Paper 10, 33, 48-52; but see Ex.
`
`1007, [0041], [0046]; Ex. 1008, 10:18-20; Ex. 1003, ¶¶ 49, 54-55, 147-148; Ex.
`
`1025, 225, 232; Ex. 1021, 207; Ex. 1020, 7; Ex. 1024, 41-44, 46; Ex. 1014, 92.)
`
`Thus, Factor 6 also favors institution.
`
`
`1 The specification defines “activities [that] are scheduled reactively” as “in
`
`response to events occurring in, e.g., the process flow 100[.]” (Ex. 1001, 7:36-38.)
`
`Ocean characterizes “reactive scheduling” as requiring zero delay between the
`
`“notifying” and the “scheduling,” which is physically impossible, to try to
`
`differentiate “Gupta’s six minute time steps” from “reactive scheduling,” without
`
`any supporting intrinsic or extrinsic evidence. (Paper 10, 46-47.) That contention
`
`further ignores Gupta’s repeated disclosure that its scheduling decisions are made
`
`in “real time.” (Ex. 1008, 2:48-52, 13:43-44, 14:12-17, 30:19-20.)
`
`5
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01342
`
`Dated: December 10, 2021
`
`
`Respectfully submitted,
`
`/Eric A. Krause/
`Eric A. Krause (Reg. No. 62,329)
`Attorney for Petitioner
`
`Axinn, Veltrop & Harkrider LLP
`560 Mission Street
`San Francisco, CA 94105
`(415) 490-1491
`
`6
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01342
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e))
`
`The undersigned hereby certifies that the above-captioned Petitioner’s Reply
`
`to Patent Owner’s Preliminary Response and its supporting evidence (Exhibits
`
`1032-1042) were served in their entirety on December 10, 2021 upon the following
`
`Parties via email:
`
`
`Timothy Devlin (Lead Counsel)
`Alex Chan (Backup Counsel)
`Joel W. Glazer (Backup Counsel)
`Henrik Parker (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
`dlflitparas@devlinlawfirm.com
`oceansemi-dlf@devlinlawfirm.com
`
`
`
`Dated: December 10, 2021k
`
`
`
`
`
`
`
`/Eric A. Krause/
`Eric A. Krause (Reg. No. 62,329)
`Attorney for Petitioner
`
`Axinn, Veltrop & Harkrider LLP
`560 Mission Street
`San Francisco, CA 94105
`(415) 490-1491
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
