`
`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: IPR2021-01348
`U.S. Patent No. 6,836,691
`_____________________
`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
`IPR2021-01348
`
`EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 6,836,691 (“’691 patent”)
`Declaration of Miltiadis Hatalis, Ph.D.
`Curriculum Vitae of Miltiadis Hatalis, Ph.D.
`File Wrapper for the ’691 patent
`Funk et al., U.S. Patent No. 7,123,980 (filed Mar. 23, 2005; issued
`Oct. 17, 2006) (“Funk”)
`Funk, U.S. Provisional Application No. 60/414,425 (filed Sept. 30,
`2002; expired July 19, 2004)
`Funk et al., International Publication No. WO 2004/031875 (filed
`Sept. 25, 2003; published Apr. 15, 2004)
`Stoddard et al., U.S. Patent No. 6,587,744 (filed June 20, 2000;
`issued July 1, 2003)
`File Wrapper for Funk
`Roger E. Bohn and Christian Terwiesch, The Economics of Yield-
`Driven Processes, J. Operations Management, 18: 41-59 (1999)
`Robert C. Leachman and David A. Hodges, Benchmarking
`Semiconductor Manufacturing, IEEE Transactions on
`Semiconductor Manufacturing, 9: 158-69 (1996)
`Gardner, et al., Equipment Fault Detection Using Spatial
`Signatures, IEEE Transactions on Components, Packaging, and
`Manufacturing Technology—Part C, 20: 295-304 (1997)
`John McGehee, The MMST Computer-Integrated Manufacturing
`System Framework, IEEE Transactions on Semiconductor
`Manufacturing, 7: 107-16 (1994)
`Jula, P. et al., Comparing the Economic Impact of Alternative
`Metrology Methods in Semiconductor Manufacturing, IEEE
`Transactions on Semiconductor Manufacturing, Vol. 15, No. 4
`(November 2002)
`
`Exhibit
`No.
`1001
`1002
`1003
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`i
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01348
`
`Exhibit
`No.
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`Description
`
`Richard J. Markle and Elfido Coss, Jr., Data requirements and
`communication issues for advanced process control, J. of Vacuum
`Sci. & Tech. A 19, 1241 (2001).
`Musacchio, J., et al., On the Utility of Run to Run Control in
`Semiconductor Manufacturing, IEEE International Symposium on
`Semiconductor Manufacturing Conference Proceedings, D-9–D-12
`(1997)
`Jerry A. Stefani and Mike Anderson, Practical Issues in the
`Deployment of a Run-to-Run Control System in a Semiconductor
`Manufacturing Facility, Proc. SPIE 3742, Process and Equipment
`Control in Microelectronic Manufacturing, 52-64 (April 23, 1999)
`Gabriel G. Barna, APC in the Semiconductor Industry, History and
`Near Term Prognosis, IEEE/SEMI 1996 Advanced Semiconductor
`Manufacturing Conference and Workshop. Theme-Innovative
`Approaches to Growth in the Semiconductor Industry. ASMC 96
`Proceedings, 364-69 (1996)
`Limanond, S., et al., Monitoring and Control of Semiconductor
`Manufacturing Processes, IEEE Control Systems Magazine, 18:46-
`58 (1998)
`Ison, A.M., et al., Fault Diagnosis of Plasma Etch Equipment,
`IEEE International Symposium on Semiconductor Manufacturing
`Conference Proceedings (1997)
`Mark Melliar-Smith and Alain C. Diebold, Metrology Needs for the
`Semiconductor Industry Over the Next Decade, AIP Conference
`Proceedings 449, 3 (1998).
`Chris J. McDonald, New tools for yield improvement in integrated
`circuit manufacturing: can they be applied to reliability?,
`Microelectronics Reliability 39 (June 1999)
`Handbook of Thin Film Deposition Process and Technologies (2nd
`Ed. 2002); Chapter 6 Keefer, M. et al., “The Role of Metrology and
`Inspection in Semiconductor Processing”
`
`ii
`
`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01348
`
`Exhibit
`No.
`
`Description
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`Tobin, K. et al, Integrated applications of inspection data in the
`semiconductor manufacturing environment, Proc. SPIE 4275,
`Metrology-based Control for Micro-Manufacturing, (5 June 2001)
`Spanos, C., et al., Real-Time Statistical Process Control Using Tool
`Data, IEEE Transactions on Semiconductor Manufacturing, Vol. 5,
`No. 4 (Nov. 1992).
`Sherry F. Lee and Costas J. Spanos, Equipment Analysis and Wafer
`Parameter Prediction Using Real-Time Tool Data, 1994
`International Symposium on Semiconductor Manufacturing VI-5.
`Lee, S., et al., RTSPC: A Software Utility for Real-Time SPC and
`Tool Data Analysis, IEEE Transactions on Semiconductor
`Manufacturing, Vol. 8, No. 1 (Feb. 1995).
`Sherry F. Lee and Costas J. Spanos,, Prediction of Wafer State After
`Plasma Processing Using Real-Time Tool Data, IEEE Transactions
`on Semiconductor Manufacturing, Vol. 8, No. 3 (Aug. 1995).
`Byungwhan Kim and Gary S. May, Real-Time Diagnosis of
`Semiconductor Manufacturing Equipment Using a Hybrid Neural
`Network Expert System, IEEE Transactions on Components,
`Packaging, and Manufacturing Technology–Part C, Vol. 20, No. 1
`(Jan. 1997).
`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 Aug. 2, 2021)
`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
`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
`
`iii
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01348
`
`Description
`
`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.
`
`1035
`
`1036
`
`1037
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`1038
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`1039
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`1040
`
`1041
`
`
`
`
`iv
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01348
`Patent Owner’s Preliminary Response (Paper 9) 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
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`(“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.
`
`1031, 1032.) 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
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`are unlikely not relevant to Fintiv analysis).
`
`Factor 2: Trial Dates Not Set/Uncertain. Along with the stayed cases, the
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`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”
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`(Ex. 2001, 2, 4), which has already shifted once. (Ex. 1033.) Although trials in the
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`WDTX cases are currently scheduled to begin December 7, 2022 in seriatim (Ex.
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`1041, 9 (ECF No. 50)), at least four other unrelated cases have also been set for
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`trial in WDTX on December 5, 2022 (Exs. 1034, 1035, 1036, 1039), and a fifth
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`case set for trial on December 8, 2022. (Ex. 1037.) 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 the WDTX “has not historically resolved
`
`1
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01348
`cases” as quickly as it has 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. 1038; accord Ex. 1030.) 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 non-party petitioners,
`
`like Applied Materials. (Paper 9, 15-16.) Further, 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 dismiss/
`
`transfer/consolidate), with “no apparent relation to the invalidity issues raised in
`
`2
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01348
`the Petition.” W. Digit. v. Ocean, IPR2021-00864, Paper 13 at 11 (Nov. 16, 2021).
`
`Although a Markman hearing occurred in the WDTX cases (Ex. 1040), neither
`
`Ocean nor Petitioner has put forth any constructions in 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 non-stayed cases, fact discovery has
`
`not closed, and expert reports and dispositive motions are not due for months. (Ex.
`
`2001, 2-3; Ex. 2008, 2-4); Bose at 16-17; Dish at 17-20.
`
`Factor 4: No Substantial Overlap. The Petition challenges claims 1-19,
`
`whereas only claims 1-9 are at issue in the litigations, to which Petitioner is not a
`
`party. (Ex. 2024, 3; Ex. 2025, 2.) Moreover, Funk and Stoddard are only 2 out of
`
`24 prior art references cited in the defendants’ invalidity contentions, which
`
`include 13 other references identified as anticipatory or as primary references for
`
`§ 103 combinations, 4 prior art systems/services, and invalidity grounds under
`
`§§ 101 and 112. (Ex. 2024, 133-57, 246, 249-56; Ex. 2025, 132-56, 161-69.) 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 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
`
`3
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01348
`which to present its challenge. Kuster and Code200, cited by Ocean (Paper 9, 28-
`
`29), are also inapposite because Petitioner is not in the same corporate family as
`
`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
`
`litigation party, and even though defendants were RPIs).
`
`Factor 6: Ocean Misrepresents the Merits. Ocean mischaracterizes the
`
`background knowledge of a POSA as a third “separate alleged prior art
`
`resource[],” in addition to Funk and Stoddard (Paper 9, 30, 33), in contravention of
`
`the legal requirement that the knowledge of a POSA must be considered in
`
`determining obviousness. B/E Aerospace, Inc. v. C&D Zodiac, 962 F.3d 1373,
`
`1380 (Fed. Cir. 2020) (“courts must consider common sense, common wisdom,
`
`and common knowledge in analyzing obviousness”). Disregarding the principle
`
`that a POSA “is presumed to know all the pertinent prior art,” In re Carlson, 983
`
`F.2d 1032, 1038 (Fed. Cir. 1992), Ocean argues that “metrology techniques in a
`
`semiconductor manufacturing context is a broad topic consisting of a potentially
`
`huge universe of [prior art].” (Paper 9, 39.) Beyond its reference to the scale of
`
`the universe of prior art, which is irrelevant under the law, In re Bigio, 381 F.3d
`
`1320, 1325 (Fed. Cir. 2004) (analogous prior art includes art “from the same field
`
`4
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01348
`of endeavor”), Ocean provides no support for its argument that Stoddard, which
`
`addresses metrology outside of the APC framework, should not be considered
`
`within the APC framework of the ’691 patent. Ocean’s contention that a POSA
`
`would not have considered Stoddard because it does not expressly refer to an APC
`
`framework, even though Funk and Stoddard both concern semiconductor
`
`manufacturing processing (Ex. 1005, Abstract; Ex. 1008, 1:15-18), is contrary to
`
`established law. KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A
`
`person of ordinary skill is also a person of ordinary creativity, not an automaton.”).
`
`Ocean’s “hindsight” characterization (Paper 9, 31-41) overlooks the
`
`extensive background of what was conventionally known in the industry before the
`
`alleged invention date, such as APC systems being industry standard since the mid-
`
`1990s and metrology data being well-known in semiconductor manufacturing, both
`
`maximizing throughput without interrupting fabrication. (Paper 1, 18-20, 33-40;
`
`Ex. 1002, ¶¶ 29-43.) The Funk APC system was modular and extendable to
`
`additionally process metrology data, which was well-known to improve process
`
`control and fault detection (both goals of the Funk APC system); there is no reason
`
`to ignore the extensive motivation to combine the Funk APC system with the
`
`metrology teachings of Stoddard. (Paper 1, 33-40.) Petitioner correctly analyzed
`
`the prior art in view of the general knowledge of a POSA as of the alleged
`
`invention date. Koninklijke v. Google, 948 F.3d 1330, 1337-38 (Fed. Cir. 2020).
`
`5
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01348
`
`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
`
`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-01348
`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
`
`1031-1041) 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
`
`
`
`
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