UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLIED MATERIALS, INC.,
`Petitioner
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`v.
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`OCEAN SEMICONDUCTOR LLC,
`Patent Owner
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`IPR2021-01342
`U.S. Patent No. 6,968,248
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`PATENT OWNER’S AUTHORIZED SUR-REPLY
`IN SUPPORT OF PATENT OWNER’S PRELIMINARY RESPONSE
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Submitted Electronically via PTAB E2E
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLIED MATERIALS, INC.,
`Petitioner
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`v.
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`OCEAN SEMICONDUCTOR LLC,
`Patent Owner
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`IPR2021-01342
`U.S. Patent No. 6,968,248
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`PATENT OWNER’S AUTHORIZED SUR-REPLY
`IN SUPPORT OF PATENT OWNER’S PRELIMINARY RESPONSE
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Submitted Electronically via PTAB E2E
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`It is undisputed that: (1) the parallel actions are set for trial months before the
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`FWD date with no stay sought by anyone; (2) there is a complete overlap1 of the
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`issues and prior art and (3) an immense investment on invalidity issues in those
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`actions; and (4) the defendants there have rejected being bound by this Petition.
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`Extreme speculation about alternative outcomes cannot overcome these facts.
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`I.
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`FINTIV I FACTOR 1: THERE IS NO BASIS TO THINK THAT A
`STAY MAY BE ENTERED IN ANY, MUCH LESS ALL, OF THE
`EDTX/WDTX ACTIONS
`The granting of a temporary stay in the DMASS actions pending IPR
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`institution decisions for the various patents asserted there does not tip the scale of
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`this factor away from denial. As the court there noted (Exs. 2038 and 2039), whether
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`a stay is warranted depends on the Board’s institution decision. Nothing in the
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`court’s order impacts the WDTX or EDTX proceedings, nor is it predictive of what
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`those courts will decide should a stay motion ever be filed. Petitioner’s reference to
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`the DMASS actions is also a red herring because, as a non-party, it can never move
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`for a stay in any of the WDTX, EDTX, or DMASS cases. While Petitioner cites to
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`Juniper Networks v. WSOU Inv., that case is inapposite because the case did not
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`involve: (1) a non-party Petitioner; and (2) a temporary stay. At best, this factor is
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`neutral. See IPR2021-00929, Paper 13 at 9-10 (P.T.A.B. Nov. 16, 2021); IPR2021-
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`00864, Paper 13 at 9-10 (P.T.A.B. Nov. 16, 2021).
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`1 Unless otherwise indicated, all emphasis in this Sur-reply has been added.
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`1
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`II. FINTIV I FACTOR 2: THE TRIAL DATES ARE MONTHS BEFORE
`THE DEADLINE FOR A FINAL WRITTEN DECISION
`Petitioner’s contention that the EDTX cases have no trial date (Reply at 1) is
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`unavailing because there will almost certainly be a trial long before an FWD. That
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`the EDTX schedule does not contain an exact trial date does not alter the fact that
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`the Final Pretrial Conference is set six months before any FWD here and the court’s
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`established practice is to hold trial within three weeks thereafter. (Paper 9 at 1-2,
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`12-14.) Even if trial slips several weeks, it will still occur over five months before
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`a FWD. (Petitioner also misleadingly states that the WDTX trial dates are
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`“tentative” (Reply at 1) when they have been set. (See Ex. 2001-2007 at 4.)
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`Petitioner’s assertion that “overlapping trial dates [with unrelated actions] will
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`necessarily result in rescheduling at least some of those trials” (Reply at 1) is
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`unavailing as the Court has not even hinted at the possibility that the December 7,
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`2022, trial date will be altered. The Board also need not entertain this line of
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`arguments by Petitioner because the Board generally takes courts’ trial schedules at
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`“face value.” IPR 2020-00019, Paper 15 at 13 (informative). In two pending IPRs
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`involving Patent Owner and the WDTX actions, the Board took this exact position
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`with respect to this factor and rejected the petitioner’s invitation to speculate trial
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`delay. See IPR2021-00929, Paper 13 at 11; IPR2021-00864, Paper 13 at 11.
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`Finally, the fact that Petitioner is not a party to the parallel actions is of no
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`moment. Petitioner’s cited cases recognize as much. Bose Corp. v. Koss Corp.,
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`2
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`IPR2021-00680, Paper 15 at 15 (P.T.A.B. Oct. 13, 2021) (“Given that the trial is
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`currently scheduled for . . . approximately five months before the final decision, the
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`efficiency and system integrity concerns that animate the Fintiv analysis are present
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`. . . .”); Dish Network v. Broadband iTV, IPR2020-01359, Paper 15 at 14 (Feb. 12,
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`2021) (finding that a trial date “likely to happen prior to the Board’s final written
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`decision . . . [is] in favor of exercising our discretion to deny the Petition.”); Western
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`Digital v. Kuster, IPR2020-01391, Paper 10 at 9-10 (P.T.A.B. Feb. 16, 2021)
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`(finding “uncertainty” in the trial date that is not present here).
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`III. FINTIV I FACTOR 3: THERE HAS BEEN CONSIDERABLE
`“INVESTMENT IN THE PARALLEL PROCEEDINGS”
`Petitioner’s assertion of “no apparent relation” (Reply at 2-3) seems to
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`improperly interpret this factor as the degree of investment only in the context of
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`invalidity issues. But even so, Petitioner has ignored, in wholesale, the court’s and
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`the parties’ immense resources expended in connection with patent (in-)eligibility
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`(e.g., a 101 motion pending in Ocean Semiconductor LLC v. Renesas Electronics
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`Corp., et al., No. 6:20-cv-01213-ADA, Dkt. 15 (W.D. Tex. Apr. 26, 2021)) as well
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`as anticipation/obviousness contentions set forth in the defendants’ preliminary/
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`final invalidity contentions served in the EDTX and WDTX proceedings. Also, as
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`the WDTX Court has already issued a claim construction order for the present
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`patent (Ex. 2040)—a major milestone—this factor favors discretionary denial.
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`Fintiv II at 13-14 (holding, inter alia, that the issuance of a claim construction
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`3
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`order “weighs somewhat in favor of discretionary denial . . . .”).
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`IV. FINTIV I FACTOR 4: THERE IS COMPLETE “OVERLAP
`BETWEEN ISSUES RAISED”
`Petitioner’s contention that the court actions involve additional prior art is a
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`red herring—this fact has no impact on the complete overlap between references
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`raised in the IPR and the co-pending litigations. Also, while, as in Bose (Reply at
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`3), there are additional challenged claims here—most of which are dependent—the
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`Board has nonetheless repeatedly found a “substantial overlap” between the issues
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`in an IPR and co-pending litigation that weighed in favor of discretionary denial in
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`very similar circumstances. See, e.g., Apcon, Inc. v. Gigamon Inc., IPR2020-01579,
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`Paper 9 at 19, 26 (P.T.A.B. Mar. 16, 2021) (“Although Petitioner has challenged. . .
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`additional dependent claims. . . , we do not determine including these additional
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`claims to weigh in favor of or against institution. . . . [T]he art appears substantially
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`the same, and no stipulation has been filed by Petitioner agreeing not to assert the
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`same art”); Satco Productions, Inc. v. The Regents of the Univ. of Cal., IPR2021-
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`00661, Paper 14 at 24 (P.T.A.B. Nov. 8, 2021) (same).
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`V. FINTIV I FACTOR 5: WHETHER PETITIONER IS A DEFENDANT
`Petitioner’s purported distinction over Apple and Mylan is unavailing
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`because the petitioners in those two cases, like Petitioner here, also are not
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`defendants in the underlying litigation. Also, nothing prevents Petitioner from
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`filing a declaratory judgment action “to litigate the [’248] patent claims’ validity in
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`4
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`its own district court case,” which would afford Petitioner a forum to present its
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`challenge. Dolby cited by Petitioner is inapposite, as it cannot overcome the
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`PTAB’s precedential decision noting that Factor 5 weighs in favor of denial of
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`institution—as it does here—even where a petitioner that is not a defendant in a
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`co-pending action. (Paper 9 at 25, citing Fintiv I at 14).
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`VI. FINTIV I FACTOR 6: OTHER CIRCUMSTANCES FAVOR NON-
`INSTITUTION
`The merits, even at this early stage, are in Patent Owner’s favor. Gupta’s
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`local optimization cannot be simultaneously applied to “every tool in the fab.”
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`Rather, and as repeatedly emphasized throughout the patent’s written description,
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`it can only be applied piecemeal, lest the “prohibitive computational resources”
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`demanded by scheduling for the entire fab prove too much for the system to bear.
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`(Ex. 1006 at 14:1-4.) Further, Petitioner’s assertion that scheduling “would be
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`desirable” in Gupta is incorrect because the local optimization’s reliance on
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`calculation of simulated process steps is not reactive. (See discussion at Paper 10
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`at 38-39.) Finally, Petitioner also fails to provide any meaningful rebuttal to the
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`fact that Gupta’s six-minute time steps, involving changes responsive to a
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`predictive step, are inconsistent with “reactive scheduling,” instead misleadingly
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`characterizing Patent Owner’s position as arguing that “reactive scheduling”
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`requires “zero delay” between process steps, when Patent Owner never so argued.
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`(See id. at 43-47.)
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`5
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`Dated: December 20, 2021
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`DEVLIN LAW FIRM LLC
`
`/s/ Timothy Devlin
`Timothy Devlin
`Registration No. 41,706
`tdevlin@devlinlawfirm.com
`Alex Chan
`Registration No. 52,713
`achan@devlinlawfirm.com
`1526 Gilpin Avenue
`Wilmington, DE 19806
`(302) 449-9010
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`Attorneys for Patent Owner
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`6
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`CERTIFICATE OF SERVICE
`The undersigned certifies that the foregoing document was served
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`electronically via electronic mail on December 20, 2021, on the following counsel
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`of record for Petitioners:
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`LEAD COUNSEL
`
`Eric A. Krause (Reg. No. 62,329)
`Axinn, Veltrop & Harkrider LLP
`560 Mission Street
`San Francisco, California 94105
`Phone: 415-490-1491
`Fax: 415-490-2001
`ekrause@axinn.com
`
`
`Counsel for Applied Materials, Inc.
`BACKUP COUNSEL
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`Christopher M. Gallo (Reg. No. 70,291)
`Axinn, Veltrop & Harkrider LLP
`1901 L Street NW
`Washington, DC 20036
`Phone: 202-721-5413
`Fax: 202-912-4700
`cgallo@axinn.com
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`
`
`/s/ Timothy Devlin
` Timothy Devlin
`
`
`7
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