`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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`APPLIED MATERIALS, INC.
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`Petitioner,
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`v.
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`OCEAN SEMICONDUCTOR LLC,
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`Patent Owner.
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`_____________________
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`Case IPR: Unassigned
`U.S. Patent No. 6,968,248
`_____________________
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,248
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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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`Petition for Inter Partes Review
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`TABLE OF CONTENTS
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1
`37 C.F.R. § 42.8(b)(1): Real Parties-In-Interest .................................. 1
`37 C.F.R. § 42.8(b)(2): Related Matters .............................................. 1
`37 C.F.R. § 42.8(b)(3), (4): Counsel and Service Information ............ 2
`37 C.F.R. § 42.103: Payment of Fees .................................................. 2
`SUMMARY OF THE ’248 PATENT ............................................................. 3
` Description of Subject Matter ............................................................... 3
`Prosecution History ............................................................................... 4
`Litigation History .................................................................................. 7
`35 U.S.C. § 314(a): REASONABLE LIKELIHOOD THAT
`PETITIONER WOULD PREVAIL ................................................................ 8
`Factors 1 and 2 Are Neutral: No Ruling on Any Motion To
`Stay and No Predictable Trial Date in Any Parallel Litigation ............ 9
`Factor 3 Favors Institution: Only Minimal Investment in
`Parallel Proceedings to Date ............................................................... 10
`Factor 4 Favors Institution: Invalidity Contentions Not Yet
`Served in Any Parallel Litigation ........................................................ 11
`Factor 5 Favors Institution: Petitioner Not a Party to Any
`Parallel District Court Case ................................................................. 12
`Factor 6 Favors Institution: No Other Forum for Petitioner To
`Present Its Strong Arguments in Favor of Institution ......................... 13
`35 U.S.C. § 325(d) DOES NOT WEIGH AGAINST INSTITUTION......... 13
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 .......................... 15
` Grounds for Standing Under 37 C.F.R. § 42.104(a) ........................... 15
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`Identification of Challenge Under 37 C.F.R. § 42.104(b) and
`Relief Requested .................................................................................. 15
`37 C.F.R. § 42.104(b)(1), (2): Claims for Which IPR Is
`Requested, Specific Art and Statutory Ground on Which
`Challenge Is Based .................................................................... 15
`37 C.F.R. § 42.104(b)(3): Claim Construction ........................ 16
` THE CHALLENGED CLAIMS OF THE ’248 PATENT ARE
`UNPATENTABLE UNDER 37 C.F.R. § 42.104(b)(4) AND (5) ................ 17
`Personal of Ordinary Skill in the Art as of April 30, 2002
`(“POSA”) ............................................................................................. 17
`History of Manufacturing Scheduling ................................................. 18
`Summary of Prior Art .......................................................................... 23
`Schulze ...................................................................................... 23
`Gupta ......................................................................................... 29
` Ground: Claims 1-22 Are Obvious Over Schulze in View of
`Gupta ................................................................................................... 33
`Combination of Schulze and Gupta .......................................... 33
`A POSA Would Have Been Motivated To Adopt a
`Semiconductor Fabrication System With
`Automated Monitoring and Assessment as Taught
`by Schulze ....................................................................... 33
`A POSA Would Have Been Motivated To
`Enhance the Operational Efficiency of Schulze’s
`Semiconductor Fabrication System With the
`Event-Driven Software Local Scheduler Taught by
`Gupta ............................................................................... 34
`A POSA Would Have Had a Reasonable
`Expectation of Success Combining Schulze With
`Gupta ............................................................................... 37
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`Petition for Inter Partes Review
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`Independent Claim 1 ................................................................. 41
`[1.Pre] A method for scheduling in an automated
`manufacturing environment ............................................ 41
`[1.a] automatically detecting an occurrence of a
`predetermined event in an integrated, automated
`process flow .................................................................... 42
`[1.b] “automatically notifying a software
`scheduling agent of the occurrence” ............................... 42
`[1.c] reactively scheduling an action from the
`software scheduling agent responsive to the
`detection of the predetermined event ............................. 45
`Independent Claim 14 ............................................................... 47
`a computer system, including a plurality of
`software scheduling agents ............................................. 48
`“a plurality of predetermined events” ............................. 50
`“scheduling appointments for activities” ........................ 50
`Claims 6, 15, 18 ........................................................................ 51
`Claims 2-5, 10-13, 16, 17, 21, 22 ............................................. 55
`Claims 2 and 16 .............................................................. 56
`Claims 3, 4, 17 ................................................................ 57
`Claims 10, 11, 21 ............................................................ 60
`Claims 12, 13, 22 ............................................................ 61
`Claim 5 ............................................................................ 63
`Claims 7 and 19 ......................................................................... 64
`Claims 8, 9, 20 .......................................................................... 66
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`Objective Indicia of Nonobviousness Do Not Weigh in Favor of
`Patentability of Claims 1-22 ................................................................ 67
` CONCLUSION .............................................................................................. 68
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`EXHIBIT LIST
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`Exhibit No.
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
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`1005
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`1006
`
`1007
`
`1008
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`1009
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`1010
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`1011
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`1012
`
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`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
`
`File Wrapper for the ’305 patent
`
`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)
`
`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)
`
`v
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`Petition for Inter Partes Review
`of U.S. Patent No. 6,968,248
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`Exhibit No.
`
`Description
`
`1013
`
`
`1014
`
`
`1015
`
`
`1016
`
`
`1017
`
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`W. Shen, L. Wang and Q. Hao, Agent-based Distributed
`Manufacturing Process Planning and Scheduling: A State-of-the-
`art 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)
`
`J.Y. Pan and J.M. Tenenbaum, Toward an Intelligent Agent
`Flamework for Enterprise Integration, AAAI (1991)
`
`H. Fargher and R. Smith, Planning for the Semiconductor
`Manufacturer of the Future, AAAI (1992)
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`of U.S. Patent No. 6,968,248
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`Exhibit No.
`
`Description
`
`1023
`
`1024
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`1025
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`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`W. Shen and D. Norrie, A Hybrid Agent-Oriented Infrastructure
`for Modeling Manufacturing Enterprises (1998)
`
`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)
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`R. Langlois, Capabilities and Vertical Disintegration in Process
`Technology: The Case of Semiconductor Fabrication Equipment
`(January 1998)
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`Applied Materials, Inc. (“Petitioner”) respectfully requests Inter Partes
`
`Petition for Inter Partes Review
`of U.S. Patent No. 6,968,248
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`Review of claims 1-22 of U.S. Patent No. 6,968,248 (“’248 patent) pursuant to 35
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`U.S.C. § 311 and 37 C.F.R. § 42.100.
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` MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`37 C.F.R. § 42.8(b)(1): Real Parties-In-Interest
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`Applied Materials, Inc. is the real party-in-interest for this proceeding. In an
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`abundance of caution, Petitioner identifies the following potential additional real
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`parties-in-interest:
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`Infineon Technologies AG and Infineon Technologies Americas Corp.;
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`MediaTek Inc. and MediaTek USA Inc.;
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`NVIDIA Corporation;
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`NXP USA, Inc.;
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`Western Digital Technologies, Inc.
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`37 C.F.R. § 42.8(b)(2): Related Matters
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`The ’248 patent is asserted in ten pending litigations:1 Ocean
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`Semiconductor LLC v. Analog Devices, No. 1:20-cv-12310 (D. Mass.), Ocean
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`1 Petitioner is not aware of any assertion of the ’248 patent implicating Petitioner’s
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`products in Case Nos. 1:20-cv-12310 (D. Mass.), 4:20-cv-991 (E.D. Tex.),
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`6:20-cv-1213 (W.D. Tex.), 6:20-cv-1214 (W.D. Tex.), 6:20-cv-1215 (W.D. Tex.).
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`1
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`Semiconductor LLC v. Infineon, No. 1:20-cv-12311 (D. Mass.), Ocean
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`Petition for Inter Partes Review
`of U.S. Patent No. 6,968,248
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`Semiconductor LLC v. Huawei, No. 4:20-cv-991 (E.D. Tex.), Ocean
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`Semiconductor LLC v. MediaTek, No. 6:20-cv-1210 (W.D. Tex.), Ocean
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`Semiconductor LLC v. NVIDIA, No. 6:20-cv-1211 (W.D. Tex.), Ocean
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`Semiconductor LLC v. NXP, No. 6:20-cv-1212 (W.D. Tex.), Ocean Semiconductor
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`LLC v. Renesas, No. 6:20-cv-1213 (W.D. Tex.), Ocean Semiconductor LLC v.
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`Silicon Labs, No. 6:20-cv-1214 (W.D. Tex.), Ocean Semiconductor LLC v. ST
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`Micro, No. 6:20-cv-1215 (W.D. Tex.), and Ocean Semiconductor LLC v. Western
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`Digital, No. 6:20-cv-1216 (W.D. Tex.). Petitioner has also filed a petition for Inter
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`Partes review of related patent U.S. Patent No. 6,907,305.
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`37 C.F.R. § 42.8(b)(3), (4): Counsel and Service Information
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`Petitioner designates Eric A. Krause, Reg. No. 62,329, as Lead Counsel, 560
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`Mission Street, San Francisco, CA 94105, Telephone: (415)490-1491, Facsimile:
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`(415)490-2001, email: ekrause@axinn.com; and Christopher M. Gallo, Reg. No.
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`70,291, as Backup Counsel, 1901 L Street NW, Washington, DC 20036,
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`Telephone: (202)721-5413, Facsimile: (202)912-4700, email: cgallo@axinn.com.
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`37 C.F.R. § 42.103: Payment of Fees
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`The undersigned authorizes Deposit Account No. 013050 to be charged:
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`(1) $43,750 fee set forth in 37 C.F.R. § 42.15(a) for this Petition for IPR which
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`requests review of 22 claims ($19,000 IPR Request fee, $750 IPR Request fee for
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`2
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`two claims in excess of twenty, $22,500.00 IPR Post-Institution fee, $1,500 IPR
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`Petition for Inter Partes Review
`of U.S. Patent No. 6,968,248
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`Post-Institution fee for two claims in excess of twenty); and (2) any additional fees
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`that may be due in connection with this Petition.
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`
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`SUMMARY OF THE ’248 PATENT
` Description of Subject Matter
`The ’248 patent is directed to event-driven scheduling in an automated
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`manufacturing environment (e.g., a semiconductor fabrication factory, also known
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`as a “fab”). Ex. 1003, ¶¶ 57, 63; Ex. 1001, Abstract. The purported invention first
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`detects a predefined event (e.g., machine downtime) and notifies a software
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`scheduling agent of the detected event. Ex. 1003, ¶ 63; Ex. 1001, 3:64-4:14. In
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`response, the agent reactively schedules an action or an appointment (e.g., delaying
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`the next scheduled loading). Ex. 1003, ¶ 63; Ex. 1001, 3:64-4:14. The
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`specification describes “appointment” as “a time period certain in which the
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`process tool 115 has obligated itself to perform the process operation, and is
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`defined by an Appointment Start Time (‘TS’) and an Appointment End Time
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`(‘TE’).” Ex. 1001, 10:32-36; Ex. 1003, ¶ 63.
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`The ’248 patent purports to be an improvement over prior art by reducing
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`reliance on personnel (e.g., a fab technician) through automation to “monitor the
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`state of the factory, to continuously react to change, to make rapid logistical
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`decisions, and to initiate and coordinate factory control activity in a timely
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`manner.” Ex. 1001, 3:25-34; Ex. 1003, ¶ 64. The earliest priority date claimed by
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`Petition for Inter Partes Review
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`the ’248 patent is April 30, 2002. According to public records, Ocean owns the
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`’248 patent by assignment. Ex. 1010.
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`Prosecution History
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`The ’248 patent issued from U.S. App. No. 11/151,098 (“’098 application”),
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`which claims priority to U.S. App. No. 10/135,145 (“parent ’145 application”)
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`filed April 30, 2002, now U.S. Patent No. 6,907,305 (“’305 patent”). Ex. 1001;
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`Ex. 1002. The ’098 application was filed June 13, 2005, one day before the
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`issuance of the ’305 patent, with 22 claims. Ex. 1005, 75-81; Ex. 1003, ¶¶ 70, 81.
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`On August 22, 2005, the Examiner issued a Notice of Allowance without
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`providing any reasons for allowance, Ex. 1005, 93-94, and the ’248 patent issued
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`November 22, 2005. Ex. 1003, ¶ 81.
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`The two applications share the same specification and claim substantially the
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`same features (as shown below with differences in underline). Ex. ¶ 71.
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`Parent ’145 Application
`Claim 1
`A method for scheduling in an
`automated manufacturing environment,
`comprising:
`
`detecting an occurrence of a
`predetermined event in a process flow;
`
`
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`’098 Application
`Claim 1
`A method for scheduling in an
`automated manufacturing environment,
`comprising:
`
`automatically detecting an occurrence
`of a predetermined event in an
`integrated, automated process flow
`
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`Petition for Inter Partes Review
`of U.S. Patent No. 6,968,248
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`Parent ’145 Application
`Claim 1
`notifying a software scheduling agent
`of the occurrence; and
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`reactively scheduling an action from
`the software scheduling agent
`responsive to the detection of the
`predetermined event.
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`The parent ’145 application was filed April 30, 2002 with 53 claims. Ex.
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`’098 Application
`Claim 1
`automatically notifying a software
`scheduling agent of the occurrence; and
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`reactively scheduling an action from
`the software scheduling agent
`responsive to the detection of the
`predetermined event.
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`1006, 48-57; Ex. 1003, ¶ 72. In the August 21, 2003 Office Action, the Examiner
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`found all pending claims anticipated or obvious in view of U.S. Patent No.
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`5,444,632 (“Kline”), which discloses a method and a computer system with a
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`scheduler module in an automated manufacturing environment. Ex. 1006, 152-54;
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`Ex. 1003, ¶ 73. In response, the Applicant argued that Kline only disclosed
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`providing wafer specification information to the scheduler module and did not
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`disclose detecting “an event.” Ex. 1006, 163-64; Ex. 1003, ¶ 74. The Applicant
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`further argued that Kline did not disclose a “software scheduling agent” because
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`(1) the claimed agent is implemented in software, whereas the scheduler module
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`disclosed in Kline “includes a user and significant hardware components”; (2) the
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`claimed agent represents a manufacturing domain entity2 in contrast with the
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`Petition for Inter Partes Review
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`scheduling module in Kline “operate[s] across the whole fab”; and (3) the claimed
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`agent reactively schedules an action, as opposed to the scheduling module in Kline
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`which “merely provides and/or obtains information and does not schedule.” Ex.
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`1006, 164-65; Ex. 1003, ¶¶ 74-75.
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`In a second Office Action dated January 16, 2004, the Examiner rejected all
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`pending claims as anticipated by U.S. Patent No. 5,369,570 (“Parad”), which
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`disclosed a method and a computer system for scheduling by using distributed
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`resource engines in an automated manufacturing environment. Ex. 1006, 178-79;
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`Ex. 1003, ¶ 76. In response, the Applicant argued that Parad did not disclose a
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`“software scheduling agent,” as the scheduling functionality in Parad “could be
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`implemented in, for example hardware, as opposed to software.” Ex. 1006, 187-
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`92; Ex. 1003, ¶ 77.
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`In a Final Rejection dated June 15, 2004, the Examiner maintained the
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`anticipation-based rejection from the previous office action. Ex. 1006, 194-97; Ex.
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`1003, ¶ 78. The Examiner stated that Parad inherently met the “software
`
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`2 Examples of a “manufacturing domain entity” in a semiconductor factory include
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`a lot, a process tool, a resource, a preventative maintenance procedure (“PM”), or
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`an equipment qualification (“Qual”) procedure. Ex. 1001, 6:40-43.
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`scheduling agent” limitation because “Applicant’s definition of the term ‘software
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`Petition for Inter Partes Review
`of U.S. Patent No. 6,968,248
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`scheduling agent’ is very broad and can be interpreted as any body involv[ed] in
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`scheduling.” Ex. 1006, 196; Ex. 1003, ¶ 78. In response, Applicant disputed the
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`breadth of the “software scheduling agent” by arguing that “there is no support in
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`Applicant[’s] specification for the proposition that a scheduling agent represents
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`more than one manufacturing domain entity at any given time or that a scheduling
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`agent be implemented in anything other than software.” Ex. 1006, 203-06; Ex.
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`1003, ¶ 79.
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`On November 24, 2004, the Applicant filed a Notice of Appeal, reiterating
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`the responses to the final rejection. Ex. 1006, 213-25; Ex. 1003, ¶ 80. On
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`February 3, 2005, the Examiner issued a Notice of Allowance without providing
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`any reasons for allowance, Ex. 1006, 243-44, and the ’305 patent issued June 14,
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`2005. Ex. 1003, ¶ 80.
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` Litigation History
`The cases involving the ’248 patent are listed in I.B. No initial case
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`management conference has been set in three of the cases. In two of the cases, a
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`hearing on motions to dismiss is scheduled for September 29, 2021. In the other
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`cases, a case management conference has been deemed to occur on June 30, 2021
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`by operation of that court’s standing order.
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`Petition for Inter Partes Review
`of U.S. Patent No. 6,968,248
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`
` 35 U.S.C. § 314(A): REASONABLE LIKELIHOOD THAT
`PETITIONER WOULD PREVAIL
`Because the ’248 patent has not been challenged in any prior IPR petition,
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`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at
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`15-19 (PTAB Sept. 6, 2017), does not apply. Consideration of the factors set forth
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`in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5-6 (PTAB Mar. 20,
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`2020), also favors institution. Petitioner is not a party to any of the litigations
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`involving the ’248 patent. Resolution of those litigations would not resolve the
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`dispute between Petitioner and Ocean with respect to the asserted Ground. Where
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`Petitioner is not a party to litigations involving the subject patent, the Board has
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`repeatedly found that institution is appropriate in light of the Fintiv factors, even
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`where parties to those other cases are named as real parties-in-interest. Dolby v.
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`Intertrust, IPR2020-00665, Paper 11 (PTAB Feb. 16, 2021); Shenzhen v. Noco,
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`IPR2020-00944, Paper 20 (PTAB Nov. 12, 2020); Edwards v. Colibri, IPR2020-
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`01649, Paper No. 8 (PTAB Mar. 26, 2021).
`
`Of the six factors assessing “whether efficiency, fairness, and the merits
`
`support the exercise of authority to deny institution” under § 314(a), four support
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`institution, and two are neutral. Fintiv, IPR2020-00019, Paper 11 at 6.
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`Petition for Inter Partes Review
`of U.S. Patent No. 6,968,248
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`
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`Factors 1 and 2 Are Neutral: No Ruling on Any Motion To Stay
`and No Predictable Trial Date in Any Parallel Litigation
`Petitioner is not a party to any of the pending litigations between Ocean and
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`the defendants. See Factor 5.
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`Regarding Factor 1, no party has filed a motion to stay, nor has a court
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`commented on its willingness to grant a stay in any of the parallel litigations
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`according to public records. Fintiv, Paper 15 at 6, 12 (“We decline to infer, based
`
`on actions taken in different cases with different facts, how the District Court
`
`would rule should a stay be requested by the parties in the parallel case here.”).
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`Where a court has not considered or resolved a motion to stay, the Board “will not
`
`attempt to predict how the district court in the related district court litigation will
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`proceed because the court may determine whether or not to stay any individual
`
`case … based on a variety of circumstances and facts beyond [the Board’s] control
`
`and to which the Board is not privy.” Sand Revolution II, LLC v. Continental
`
`Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16,
`
`2020).
`
`Regarding Factor 2, although a tentative trial date of December 7, 2022 has
`
`been set in a subset of cases, the volatility of case schedules and conditions due to
`
`the COVID-19 pandemic continue to create delays and lack of certainty regarding
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`trial dates. Ex. 1011 (“70% of trial dates initially relied upon by the PTAB to deny
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`petitions have slid” in the Western District of Texas). Even if the date were firm,
`
`9
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`trial dates in some cases do not negate the lack of trial dates in other cases.
`
`Petition for Inter Partes Review
`of U.S. Patent No. 6,968,248
`
`Shenzhen, Paper 20 at 56-57 (“Where multiple parallel litigations are involved, the
`
`proper analysis extends beyond identifying, for each Fintiv factor, whether one or
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`more parallel proceedings fit the bill, and then determining the sum.”) The
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`absence of trial dates in other cases weighs in favor of institution. Google LLC v.
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`Uniloc 2017 LLC, IPR2020-00441, Paper 13 at 35 (PTAB Jul. 17, 2020) (“The fact
`
`that no trial date has been set weighs significantly against exercising our discretion
`
`to deny institution of the proceeding.”).
`
`Taking “a holistic view of whether efficiency and integrity of the system,”
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`Fintiv, Paper 11 at 6, the unpredictability of trial dates tentatively set in a subset of
`
`cases, the lack of trial dates in other cases, the potential for the defendants in the
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`various parallel cases to seek stays based on institution of this Petition, and the lack
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`of participation or control by Petitioner in any of these cases militate against
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`exercising the Board’s authority to deny institution.
`
`
`
`Factor 3 Favors Institution: Only Minimal Investment in Parallel
`Proceedings to Date
`As a non-party, Petitioner does not have knowledge or information as to the
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`resources expended by the parties in litigation. However, public records indicate
`
`that neither the parties nor the courts have invested substantial resources to date,
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`and considerable work remains to be done. In two cases, the court has yet to rule
`
`on initial pleading motions.
`
`10
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`Since this Petition is being filed before the invalidity contention deadline in
`
`Petition for Inter Partes Review
`of U.S. Patent No. 6,968,248
`
`any of the parallel litigations, the defendants would not need to expend resources
`
`regarding the asserted grounds of unpatentability. Western Digital v. Kuster,
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`IPR2020-01391, Paper 10 at 11 (“activity in the case… not [relating] to validity
`
`issues … does not weigh in our consideration of this issue”). Institution of IPR
`
`may allow parties to stay some or all of those litigations pending the Board’s final
`
`written decision, placing a hold on future investments in the litigations, all of
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`which are at early stages.
`
`
`
`Factor 4 Favors Institution: Invalidity Contentions Not Yet
`Served in Any Parallel Litigation
`As a non-party, Petitioner has no control over arguments that may be raised
`
`by the parties in any of the parallel litigations. Based on publicly available
`
`information, invalidity contentions are not yet due in any of those cases. At
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`present, no overlap exists between the litigations and this Petition.
`
`Because Ocean has filed multiple cases in different venues, the cases will
`
`inevitably progress on different timelines. Consequently, this Petition fulfills
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`Congress’ intention for this proceeding to be an efficient alternative to litigation.
`
`2019 Consolidated Trial Practice Guide, at 56 (“The AIA was ‘designed to
`
`establish a more efficient and streamlined patent system that will improve patent
`
`quality and limit unnecessary and counterproductive litigation costs.’”) (quoting
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`H.R. Rep. No. 112–98, pt. 1, at 40 (2011), 2011 U.S.C.C.A.N. 67, 69 (Post grant
`
`11
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`

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`reviews were meant to be “quick and cost effective alternatives to litigation”)).
`
`Petition for Inter Partes Review
`of U.S. Patent No. 6,968,248
`
`Thus, Factor 4 weighs in favor of institution.
`
`
`
`Factor 5 Favors Institution: Petitioner Not a Party to Any
`Parallel District Court Case
`Petitioner is not a party to any of the litigations and not implicated in half of
`
`them. Petitioner has no control over what prior art or invalidity arguments may
`
`eventually be raised in each of those cases. Although identified as potential real
`
`parties-in-interest in this Petition solely out of an abundance of caution to avoid
`
`burdening the Board with unnecessary disputes or discovery, the defendants in
`
`each of the litigations are represented by separate counsel. Dolby, IPR2020-00665,
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`Paper 11 at 16-17 (factors 2 and 5 weighed in favor of institution where defendants
`
`were named as real parties-in-interest “out of an abundance of caution”). Apart
`
`from Petitioner, no other party funded, participated in, or had access to or control
`
`over this Petition. Id. at 16-17 (factor 5 weighed in favor of institution where
`
`“nothing in the record to indicate[d] that Petitioner exerts any control over the
`
`Actions or the Defendants. The Defendants [were] represented by separate counsel
`
`than Petitioner, and … Petitioner has not acknowledged any duty to indemnify the
`
`Defendants.”). Thus, Factor 5 weighs in favor of institution.
`
`12
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`

`Petition for Inter Partes Review
`of U.S. Patent No. 6,968,248
`
`
`
`
`Factor 6 Favors Institution: No Other Forum for Petitioner To
`Present Its Strong Arguments in Favor of Institution
`As demonstrated in the Ground Presented and supporting expert declaration,
`
`the merits of this Petition warrant institution, and Petitioner has no other forum in
`
`which to present these arguments. Fintiv at 6 (“other circumstances that impact the
`
`Board’s exercise of discretion, including the merits”). Thus, Factor 6 weighs in
`
`favor of institution.
`
` 35 U.S.C. § 325(D) DOES NOT WEIGH AGAINST INSTITUTION
`Since no other “proceeding or matter involving the patent is before the
`
`Office,” and none of “the same or substantially the same prior art or arguments
`
`previously were presented to the Office,” 35 U.S.C. § 325(d), there is no reason for
`
`the Board to exercise its discretion under this section to deny institution.
`
`The Board has established a two-part test for exercising its discretion under
`
`§ 325(d): “(1) whether the same or substantially the same art previously was
`
`presented to the Office”; and if so “(2)...whether the petitioner has demonstrated
`
`that the Office erred in a manner material to the patentability of challenged
`
`claims.” Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
`
`Paper 8 (PTAB Dec. 15, 2017); Advanced Bionics, LLC v. Med-El
`
`Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13,
`
`13
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`

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`2020) (applying Becton factors (a), (b), (d) for part one, and factors (c), (e), (f) for
`
`Petition for Inter Partes Review
`of U.S. Patent No. 6,968,248
`
`part two).
`
`In part one, factor (a) considers “the similarities and material differences
`
`between the asserted art and the prior art involved during examination,” and factor
`
`(b) considers “the cumulative nature of the asserted art and the prior art evaluated
`
`during examination.” Becton, Paper 8 at 17. Factor (d) considers “the extent of
`
`the overlap between the arguments made during examination and the manner in
`
`which petitioner relies on the prior art.” Id., 17-18. In part two, factor (c)
`
`considers “the extent to which the asserted art was evaluated during examination,
`
`including whether the prior art was the basis for rejection,” factor (e) considers
`
`“whether petitioner has pointed out sufficiently how the examiner erred in its
`
`evaluation of the asserted prior art,” and factor (f) considers “the extent to which
`
`additional evidence and facts presented in the petition warrant reconsideration of
`
`the prior art or arguments.” Id.
`
`The prior art presented in this Petition was not identified during examination
`
`or in any prior litigations or any other AIA proceedings.3 In addition, the
`
`
`3 Petitioner is also filing a Petition for IPR challenging the patentability of claims
`
`1-25 and 33-53 of the parent ’305 patent in light of the same prior art ground
`
`presented here.
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`14
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`Examiner did not raise art that disclosed deploying software agent