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: Unassigned
`U.S. Patent No. 6,836,691
`_____________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,836,691
`
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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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`

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`Petition for Inter Partes Review
` of U.S. Patent No. 6,836,691
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`TABLE OF CONTENTS
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`MANDATORY NOTICES (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 ............................................... 2
`37 C.F.R. § 42.8(b)(3), (4): Counsel and Service Information ............. 2
`37 C.F.R. § 42.103: Payment of Fees ................................................... 3
`
`SUMMARY OF THE ’691 PATENT ............................................................. 3
`Brief Description of Subject Matter ...................................................... 3
`
`Summary of Prosecution History .......................................................... 5
`Summary of Litigation History ............................................................. 6
`
`35 U.S.C. § 314(a): REASONABLE LIKELIHOOD THAT PETITIONER
`WOULD PREVAIL......................................................................................... 7
`Factors 1 and 2 Are Neutral: No Ruling on Any Motion To Stay and
`
`No Predictable Trial Date Set in Any Parallel Litigation ..................... 8
`Factor 3 Favors Institution: To Date, There Has Been Only Minimal
`Investment in the Parallel Proceedings ................................................. 9
`Factor 4 Favors Institution: Invalidity Contentions Have Not Been
`Served in Any Parallel Litigation ........................................................ 10
`Factor 5 Favors Institution: Petitioner Is Not a Party to Any Parallel
`District Court Case .............................................................................. 11
`Factor 6 Favors Institution: Petitioner Presents Strong Arguments and
`Have No Other Forum in Which To Present Their Arguments .......... 12
`35 U.S.C. § 325(d) DOES NOT WEIGH AGAINST INSTITUTION ......... 12
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 .......................... 14
` Grounds for Standing Under 37 C.F.R. § 42.104(a) ........................... 14
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`
`Requested ............................................................................................ 14
`37 C.F.R. § 42.104(b)(1), (2): Claims for Which IPR Is
`
`Requested, Specific Art and Statutory Ground on Which the
`Challenge Is Based .................................................................... 14
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`Petition for Inter Partes Review
` of U.S. Patent No. 6,836,691
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`37 C.F.R. § 42.104(b)(3): Claim Construction ................................... 15
`
` CLAIMS 1-19 OF THE ’691 PATENT ARE UNPATENTABLE UNDER
`37 C.F.R. § 42.104(b)(4) AND (5) ................................................................ 17
`Personal of Ordinary Skill in the Art as of May 1, 2003 (“POSA”) ... 17
`
`Background of Semiconductor Manufacturing ................................... 18
`Summary of Prior Art .......................................................................... 21
`U.S. Patent No. 7,123,980 (“Funk”) ......................................... 21
`
`U.S. Patent No. 6,587,744 (“Stoddard”) ................................... 30
`
` Ground: Claims 1-19 Are Obvious Over Funk in View of Stoddard
`and the Background Knowledge of a POSA ....................................... 33
`A POSA Would Have Been Motivated To Combine the APC
`
`System of Funk With the Metrology Teachings of Stoddard ... 33
`A POSA Would Have Had a Reasonable Expectation of
`Success in Combining the Disclosures of Stoddard with Funk 40
`Claims 1 and 10 ......................................................................... 41
`Claims 2 and 11 ......................................................................... 51
`Claims 3 and 12 ......................................................................... 53
`Claims 4 and 13 ......................................................................... 55
`Claims 5 and 14 ......................................................................... 58
`Claims 6 and 15 ......................................................................... 60
`Claims 7 and 16 ......................................................................... 60
` Claims 8 and 17 ......................................................................... 62
` Claims 9 and 18 ......................................................................... 63
` Claim 19 .................................................................................... 64
`Objective Indicia of Nonobviousness Do Not Weigh in Favor of
`Patentability of Claims 1-19 ................................................................ 65
` CONCLUSION .............................................................................................. 66
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`Petition for Inter Partes Review
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`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)
`
`iii
`
`Exhibit
`No.
`1001
`1002
`1003
`1004
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`1010
`
`1011
`
`1012
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`1013
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`1014
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`

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`Petition for Inter Partes Review
` of U.S. Patent No. 6,836,691
`
`
`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”
`
`iv
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`Exhibit
`No.
`1015
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`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`

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`Exhibit
`No.
`1024
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`1025
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`1026
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`1027
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`1028
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`1029
`
`1030
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`Petition for Inter Partes Review
` of U.S. Patent No. 6,836,691
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`Description
`
`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)
`
`
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`Applied Materials, Inc. (“Petitioner”) respectfully requests Inter Partes
`
`Petition for Inter Partes Review
` of U.S. Patent No. 6,836,691
`
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`Review of claims 1-19 of U.S. Patent No. 6,836,691 (Ex. 1001) pursuant to
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`35 U.S.C. § 311 and 37 C.F.R. § 42.100.
`
` MANDATORY NOTICES (37 C.F.R. § 42.8)
`37 C.F.R. § 42.8(b)(1): Real Parties-in-Interest
`
`Applied Materials, Inc. is the real party-in-interest for this proceeding. PDF
`
`Solutions, Inc. is another potential real party-in-interest. Although Petitioner has
`
`discussed this Petition and the Ground presented with non-party PDF Solutions,
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`Inc., PDF Solutions, Inc. did not fund, control, or participate in the drafting or
`
`filing of this Petition. In an abundance of caution, Petitioner also identifies the
`
`following additional potential real parties-in-interest, none of whom had any access
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`to the Petition:
`
`Analog Devices, Inc.;
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`Huawei Device USA, Inc.; Huawei Device Co., Ltd.; HiSilicon
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`Technologies Co., Ltd.;
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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;
`
`NXP USA, Inc.;
`
`Renesas Electronics Corporation and Renesas Electronics America, Inc.;
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`Silicon Laboratories Inc.;
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`STMicroelectronics, Inc.;
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`Western Digital Technologies, Inc.
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`37 C.F.R. § 42.8(b)(2): Related Matters
`
`The ’691 patent is asserted in the following cases: Ocean Semiconductors
`
`LLC v. Analog Devices, Inc., No. 1:20-cv-12310 (D. Mass.); Ocean
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`Semiconductors LLC v. Infineon Techs. AG, et al., No. 1:20-cv-12311 (D. Mass.);
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`Ocean Semiconductor LLC v. Huawei Device USA, Inc. et al., No. 4:20-cv-991
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`(E.D. Tex.); Ocean Semiconductor LLC v. MediaTek Inc., et al., No. 6:20-cv-
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`01210 (W.D. Tex.); Ocean Semiconductor LLC v. NVIDIA Corp., No. 6:20-cv-
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`01211 (W.D. Tex.); Ocean Semiconductor LLC v. NXP Semiconductors NV, et al.,
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`No. 6:20-cv-01212 (W.D. Tex.); Ocean Semiconductor LLC v. Renesas Elecs.
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`Corp., et al., No. 6:20-cv-01213 (W.D. Tex.); Ocean Semiconductor LLC v.
`
`Silicon Labs. Inc., No. 6:20-cv-01214 (W.D. Tex.); Ocean Semiconductor LLC v.
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`STMicroelectronics Inc., No. 6:20-cv-01215 (W.D. Tex.); and Ocean
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`Semiconductor LLC v. Western Digital Technologies, Inc., No. 6:20-cv-01216
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`(W.D. Tex.).
`
`37 C.F.R. § 42.8(b)(3), (4): Counsel and Service Information
`
`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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`Petition for Inter Partes Review
` of U.S. Patent No. 6,836,691
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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.
`
`37 C.F.R. § 42.103: Payment of Fees
`
`The undersigned authorizes Deposit Account No. 013050 to be charged:
`
`(1) the $41,500 fee set forth in 37 C.F.R. § 42.15(a) for this Petition for IPR that
`
`requests review of nineteen (19) claims ($19,000 IPR Request fee and $22,500.00
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`IPR Post-Institution fee); and (2) any additional fees that may be due in connection
`
`with this Petition.
`
`
`
`SUMMARY OF THE ’691 PATENT
` Brief Description of Subject Matter
`The ’691 patent is generally directed to collecting and filtering metrology
`
`data to improve manufacturing tool processes for workpieces or manufactured
`
`items. (Ex. 1001, Abstract, 1:7-11; Ex. 1002, ¶ 44.) The claimed subject matter is
`
`implemented in a “semiconductor fabrication facility” but could also “be applied to
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`workpieces or manufactured items other than semiconductor devices.” (Ex. 1001,
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`3:27-37; Ex. 1002, ¶ 44.)
`
`The specification states that “[a] particular wafer or lot of wafers progresses
`
`through the tools 30-80 … with each tool [] performing a specific function in the
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`process flow” and lists exemplary processing tools and exemplary metrology tools,
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`including photolithographic steppers, etch tools, deposition tools, thickness
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`Petition for Inter Partes Review
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`metrology tools, and optical metrology tools. (Ex. 1001, 3:46-55, 6:7-9; Ex. 1002,
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`¶ 45.) The specification describes collecting metrology data related to the
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`processing of workpieces in a plurality of tools. (Ex. 1001, 2:34-36, 4:61-65, 6:7-
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`9; Ex. 1002, ¶¶ 45-46.) Metrology data collected by metrology tools is stored with
`
`associated context data, which includes identification data and collection purpose
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`data. (Ex. 1001, 6:11-13; Ex. 1002, ¶ 46.) “Exemplary identification data”
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`includes lot identification number (ID), wafer ID, location data, and process-
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`operation data. (Ex. 1001, 6:14-17; Ex. 1002, ¶ 47.) Collection purpose data
`
`indicates the initial purpose for collection of the metrology data, for example,
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`process control sampling, fault detection sampling, and targeted fault detection.
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`(Ex. 1001, 6:18-21; Ex. 1002, ¶ 47.)
`
`Metrology data can then be filtered based on the purpose data, such as by
`
`excluding data where the likelihood of a fault being present is higher (Ex. 1001,
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`6:21-32; Ex. 1002, ¶ 48), where a fault is detected (Ex. 1001, 6:44-49; Ex. 1002, ¶
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`48), ignoring data that is less useful for process control purposes (Ex. 1001, 7:51-
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`55; Ex. 1002, ¶ 48), and generally removing non-process sources of variation (Ex.
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`1001, 7:59-62; Ex. 1002, ¶ 48). A “process control activity” is then conducted
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`based on the filtered metrology data. (Ex. 1001, 8:4-6; Ex. 1002, ¶ 49.) Some of
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`these process control activities include updating a control model and generating a
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`control action for controlling the processing tools, the control action including
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`Petition for Inter Partes Review
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`subsequent processing (Ex. 1001, 2:10-12, 4:60-65, 6:21-28, 7:51-55; Ex. 1002, ¶
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`49), removing outlier data to improve the process controller (Ex. 1001, 6:29-40;
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`Ex. 1002, ¶ 49), and calculating and modifying operating recipe parameters by
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`comparing the performance model and metrology information to achieve post-
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`processing results as close as possible to a process target value (Ex. 1001, 1:53-56,
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`6:21-28; Ex. 1002, ¶ 49).
`
`The earliest claimed priority date of the ’691 patent is May 1, 2003.
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`According to the Office’s electronic assignment records, Ocean Semiconductor
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`LLC (“Ocean”) owns the ’691 patent by assignment.
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`Summary of Prosecution History
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`The application that issued as the ’691 patent was filed May 1, 2003 with
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`twenty claims. As-filed claim 1 is representative and is identical to issued claim 1.
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`(Compare Ex. 1004, 19 with Ex. 1001 at 8:19-28.) The Examiner rejected all
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`claims as being anticipated by U.S. Patent No. 5,864,773 (“Barna”), which
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`disclosed all of the steps of the method of claim 1. (Ex. 1004, 61.)
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`Applicant responded that Barna did not disclose filtering the data based on
`
`the collection purpose and that it was not an inherent feature of Barna. (Id., 70-
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`71.) The Examiner then issued a Final Rejection, rejecting all claims as anticipated
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`by Barna. (Id., 73-80.) The Examiner stated that the broadest reasonable
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`interpretation for “filtering the metrology data based on the collection purpose” is
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`Petition for Inter Partes Review
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`“filtering/collecting data [from] a large amount of data/raw data, based on what is
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`needed/collection purpose.” (Id., 77.) In response, Applicant reiterated the same
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`argument that Barna did not filter the data based on collection purpose data. (Id.,
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`83-86.)
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`Applicant then filed a Notice of Appeal and Appeal Brief to the Board of
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`Patent Appeals and Interferences, repeating that “none of the[] filtering operations
`
`described in Barna are based on data collection purposes.” (Id., 100.) Applicant
`
`argued that “the collection purpose data indicates the initial purpose for the
`
`collection of the metrology data, i.e. the reason the data is being collected.” (Id.,
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`98-99 (citing Ex. 1001, 6:16-21).) The Examiner thereafter issued a Notice of
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`Allowance, allowing all twenty claims, and the ’691 patent issued December 28,
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`2004. (Ex. 1004, 108-121.)
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`Summary of Litigation History
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`The cases involving the ’691 patent are listed in I.B. above. A hearing on
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`motions to dismiss is scheduled for September 29, 2021 in the two Massachusetts
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`cases, and no initial case management conference has been set in either case. No
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`scheduling order has yet been entered in the case pending in the Eastern District of
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`Texas. In the cases pending in the Western District of Texas, a case management
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`conference has been deemed to occur on June 30, 2021.
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`Petition for Inter Partes Review
` of U.S. Patent No. 6,836,691
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` 35 U.S.C. § 314(a): REASONABLE LIKELIHOOD THAT
`PETITIONER WOULD PREVAIL
`Because the ’691 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
`
`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 ’691 patent. Resolution of those cases would not resolve the dispute
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`between Petitioner and Ocean with respect to the asserted Ground. Where
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`Petitioner is not a party to any litigations involving the challenged patent, the
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`Board has repeatedly found that institution is appropriate in light of the Fintiv
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`factors, even where the parties to those cases are 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
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`Factors 1 and 2 Are Neutral: No Ruling on Any Motion To Stay
`and No Predictable Trial Date Set in Any Parallel Litigation
`Petitioner is not a party to any of the pending litigations involving the ’691
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`patent. See Factor 5.
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`Based on public records, Petitioner understands that no party has filed a
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`motion to stay, nor has a court commented on its willingness to grant a stay, in any
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`of the litigations. 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
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`should a stay be requested by the parties in the parallel case here.”). Where a court
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`has not considered or resolved a motion to stay, the Board “will not attempt to
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`predict how the district court in the related district court litigation will proceed
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`because the court may determine whether or not to stay any individual case …
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`based on a variety of circumstances and facts beyond [the Board’s] control and to
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`which the Board is not privy.” Sand Revolution II, LLC v. Continental Intermodal
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`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
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`been set in some of the cases, the volatility of case schedules and conditions due to
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`the COVID-19 pandemic continue to create delays and lack of certainty regarding
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`trial dates. Ex. 1030 (“70% of trial dates initially relied upon by the PTAB to deny
`
`petitions have slid” in the Western District of Texas). Trial dates set in a subset of
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`cases do not override the lack of trial dates in other cases. Shenzhen, Paper 20 at
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`Petition for Inter Partes Review
` of U.S. Patent No. 6,836,691
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`56-57 (“Where multiple parallel litigations are involved, the proper analysis
`
`extends beyond identifying, for each Fintiv factor, whether one or more parallel
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`proceedings fit the bill, and then determining the sum.”). The absence of trial dates
`
`in the other cases weigh in favor of institution. Google LLC v. Uniloc 2017 LLC,
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`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 some cases
`
`and the lack of trial dates in other cases, the potential for the defendants in the
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`various cases to seek a stay based on institution of this Petition, and the lack of
`
`participation or control of Petitioner in any of those cases all militate against the
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`Board’s exercising its authority to deny institution.
`
`
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`Factor 3 Favors Institution: To Date, There Has Been Only
`Minimal Investment in the Parallel Proceedings
`As a non-party to any of the parallel litigations, Petitioner does not have
`
`knowledge or information as to the resources expended by the parties to the
`
`litigations. However, public records indicate that neither the parties nor the courts
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`have invested substantial resources to date, and considerable work remains to be
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`Petition for Inter Partes Review
` of U.S. Patent No. 6,836,691
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`done. In some cases, the court has yet to rule on initial pleading motions.
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`Because this Petition is being filed before the invalidity contention deadline
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`in any of the litigations (to the extent set), the defendants in those cases would not
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`need to expend resources regarding the asserted ground of unpatentability.
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`Western Digital v. Kuster, IPR2020-01391, Paper 10 at 11 (“activity in the case …
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`not [relating] to validity issues … d[o] not weigh in our consideration of this
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`issue”). Institution of the present proceeding may instead allow those parties to
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`stay some or all of the district court actions pending the Board’s final written
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`decision, placing a hold on any future investment in the pending litigations, all of
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`which are at an early stage. Thus, Factor 3 weighs in favor of institution.
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`Factor 4 Favors Institution: Invalidity Contentions Have Not
`Been Served in Any Parallel Litigation
`As a non-party, Petitioner has no control over arguments that may be raised
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`by the parties in any of the pending litigations. Based on publicly available
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`information, invalidity contentions have not been served in any of the litigations,
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`and at present, there is no overlap with this Petition.
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`Because Ocean has filed ten separate litigations in three different venues, the
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`cases will inevitably progress on different timelines. Consequently, this Petition
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`fulfills Congress’ intention for this proceeding to be an efficient alternative to
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`Petition for Inter Partes Review
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`litigation. 2019 Consolidated Trial Practice Guide, at 56 (“The AIA was ‘designed
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`to establish a more efficient and streamlined patent system that will improve patent
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`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
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`reviews meant to be “quick and cost effective alternatives to litigation”)). Thus,
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`Factor 4 weighs in favor of institution.
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`Factor 5 Favors Institution: Petitioner Is Not a Party to Any
`Parallel District Court Case
`Petitioner is not a party to any of the pending litigations. Petitioner has no
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`control over what prior art or invalidity arguments may eventually be raised in
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`each of those cases. Although they were identified as potential real parties-in-
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`interest in this Petition solely out of an abundance of caution to avoid burdening
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`the Board with any unnecessary disputes or discovery, the unrelated defendants in
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`each of the parallel cases are represented by separate counsel. Dolby, IPR2020-
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`00665, Paper 11 at 16-17 (factors 2 and 5 weighed in favor of institution where
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`defendants named as real parties-in-interest “out of an abundance of caution”).
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`None of the defendants in the parallel litigations funded, participated in, or had
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`access to or control over this Petition. Id. at 16-17 (factor 5 weighed in favor of
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`institution where “there [was] nothing in the record to indicate that Petitioner
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`exerts any control over the [parallel] Actions or the Defendants. The Defendants
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`[were] represented by separate counsel than Petitioner, and … Petitioner has not
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`Petition for Inter Partes Review
` of U.S. Patent No. 6,836,691
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`acknowledged any duty to indemnify the Defendants.”). Thus, Factor 5 weighs in
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`favor of institution.
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`Factor 6 Favors Institution: Petitioner Presents Strong
`Arguments and Have No Other Forum in Which To Present Their
`Arguments
`As demonstrated below in the Ground presented and supporting expert
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`declaration, the merits of the Petition warrant institution, and Petitioner has no
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`other forum in which to present these arguments. Fintiv at 6 (“other circumstances
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`that impact the Board’s exercise of discretion, including the merits”). Thus, Factor
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`6 also weighs in favor of institution.
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` 35 U.S.C. § 325(d) DOES NOT WEIGH AGAINST INSTITUTION
`Since no other “proceeding or matter involving the patent is before the
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`Office,” and none of “the same or substantially the same prior art or arguments
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`previously were presented to the Office,” 35 U.S.C. § 325(d), there is no reason for
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`the Board to exercise its discretion under this section to deny institution.
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`The Board has established a two-part test for exercising its discretion under
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`§ 325(d): “(1) whether the same or substantially the same art previously was
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`presented to the Office”; and if so “(2)...whether the petitioner has demonstrated
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`that the Office erred in a manner material to the patentability of challenged
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`claims.” Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
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`Paper 8 (PTAB Dec. 15, 2017); Advanced Bionics, LLC v. Med-El
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`Petition for Inter Partes Review
` of U.S. Patent No. 6,836,691
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`Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13,
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`2020) (applying Becton factors (a), (b), (d) for part one, and factors (c), (e), (f) for
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`part two).
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`In part one, factor (a) considers “the similarities and material differences
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`between the asserted art and the prior art involved during examination,” and factor
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`(b) considers “the cumulative nature of the asserted art and the prior art evaluated
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`during examination.” Becton, Paper 8 at 17. Factor (d) considers “the extent of
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`the overlap between the arguments made during examination and the manner in
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`which petitioner relies on the prior art.” Id., 17-18. In part two, factor (c)
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`considers “the extent to which the asserted art was evaluated during examination,
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`including whether the prior art was the basis for rejection,” factor (e) considers
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`“whether petitioner has pointed out sufficiently how the examiner erred in its
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`evaluation of the asserted prior art,” and factor (f) considers “the extent to which
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`additional evidence and facts presented in the petition warrant reconsideration of
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`the prior art or arguments.” Id.
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`The prior art presented in the Petition was not identified during examination
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`or in any prior litigations or any other AIA proceedings. In addition, the Examiner
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`did not raise art that disclosed filtering based on the collection purpose data during
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`prosecution. (Ex. 1004, 59-65, 73-80.) As such, this Petition does not present
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`Petition for Inter Partes Review
` of U.S. Patent No. 6,836,691
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`prior art or argument that is the same or substantially the same as any considered in
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`any other proceeding. Factors (a)-(f) therefore weigh against exercising discretion
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`to deny institution.
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` REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
` Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’691 patent is available for IPR and that
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`Petitioner is not barred or estopped from requesting IPR of claims 1-19 on the
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`Ground identified below. Petitioner has not previously initiated any civil action
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`challenging the validity of any claims of the ’691 patent and are submitting this
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`Petition less than one year after first service of the complaint in the litigations
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`identified above. There is no other proceeding involving the ’691 patent before the
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`Office.
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`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`37 C.F.R. § 42.104(b)(1), (2): Claims for Which IPR Is
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`Requested, Specific Art and Statutory Ground on Which
`the Challenge Is Based
`Petitioner requests cancellation of claims 1-19 of the ’691 patent on the
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`following Ground:
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`Petition for Inter Partes Review
` of U.S. Patent No. 6,836,691
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`Ground Proposed Statutory Rejection for the ’691 Patent
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`1
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`Claims 1-19 are obvious under 35 U.S.C. § 103 over Funk (Ex. 1005)
`and Stoddard (Ex. 1008) in view of background knowledge of a
`POSA
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`Per 37 C.F.R. § 42.6(c), copies of the cited prior art references accompany
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`the Petition. In support of the proposed Ground for unpatentability, this Petition is
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`also accompanied by the declaration of Dr. Miltiadis Hatalis (Ex. 1002), an expert
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`in semiconductor fabrication processes, including the fabrication of integrated
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`circuits (ICs). The Ground presented in this Petition establishes a reasonable
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`likelihood that claims 1-19 of the ’691 patent are unpatentable.
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`37 C.F.R. § 42.104(b)(3): Claim Construction
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`The prior art referenced in this Petition discloses the subject matter of the
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`challenged claims under any reasonable construction, including their plain
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`meaning.1 Petitioner submits that no terms need to be construed to find the
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`asserted claims unpatentable under the Ground presented. Nidec Motor Corp. v.
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`1 Petitioner does not concede that the challenged