IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLIED MATERIALS, INC.STMICROELECTRONICS, INC.
`Petitioner,
`v.
`OCEAN SEMICONDUCTOR LLC,
`Patent Owner.
`
`Case IPR: UnassignedIPR2022-00681
`U.S. Patent No. 6,968,248
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,248
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLIED MATERIALS, INC.STMICROELECTRONICS, INC.
`Petitioner,
`v.
`OCEAN SEMICONDUCTOR LLC,
`Patent Owner.
`
`Case IPR: UnassignedIPR2022-00681
`U.S. Patent No. 6,968,248
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,248
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Alexandria, VA 22313-1450
`Alexandria, VA 22313-1450
`
`- 2 -
`
`Petitioner STMICROELECTRONICS,INC.,
`Ex. 1032, IPR2022-00681
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`1
`1
`1
`2
`2
`3
`3
`4
`7
`
`87
`
`I.
`
`II.
`
`III.
`
`B.
`
`TABLE OF CONTENTS
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8
`A.
`37 C.F.R. § 42.8(b)(1): Real Parties-In-Interest
`B.
`37 C.F.R. § 42.8(b)(2): Related Matters
`C.
`37 C.F.R. § 42.8(b)(3), (4): Counsel and Service Information
`37 C.F.R. § 42.103: Payment of Fees
`D.
`SUMMARY OF THE ’248 PATENT
`A.
`Description of Subject Matter
`B.
`Prosecution History
`C.
`Litigation History
`35 U.S.C. § 314(a): REASONABLE LIKELIHOOD THAT
`PETITIONER WOULD PREVAIL
`A.
`Factors 1 and 2 Are Neutral: No Ruling on Any Motion To
`Stay and No Predictable Trial Date in Any Parallel Litigation9District
`Court Stays Favor Institution (Factor 1)
`8
`Factor 3Uncertainty over the Trial Date in the District Court Case
`Against Petitioner Favors Institution: Only Minimal Investment in
`Parallel Proceedings to Date
`10 (Factor 2)
`8
`
`C.
`
`D.
`
`Factor 4 Favors Institution: Invalidity Contentions Not Yet
`Served in Any Parallel Litigation11Investments in Invalidity Issues in
`Parallel District Court
`Proceedings Are Minimal (Factor 3)
`Factor 5 Favors Institution: Petitioner Not a Party to Any
`Parallel District Court Case
`12The Petition Raises Unique Issues
`Favoring Institution
`(Factor 4)
`
`10
`
`9
`
` i
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`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
`13The Parties
`Overlap (Factor 5)
`10
`The Merits of the Petition Support Institution (Factor 6)
`10
`F.
`35 U.S.C. § 325(d) DOES NOT WEIGH AGAINST INSTITUTION 1311
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`1513
`A.
`Grounds for Standing Under 37 C.F.R. § 42.104(a)
`1513
`B.
`Identification of Challenge Under 37 C.F.R. § 42.104(b)
`and Relief Requested
`1.
`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
`37 C.F.R. § 42.104(b)(3): Claim Construction
`2.
`THE CHALLENGED CLAIMS OF THE ’248 PATENT ARE
`UNPATENTABLE UNDER 37 C.F.R. § 42.104(b)(4) AND (5)
`A.
`Personal of Ordinary Skill in the Art as of April 30, 2002
`“POSA”)
`History of Manufacturing Scheduling
`Summary of Prior Art
`1.
`Schulze
`2.
`Gupta
`Ground: Claims 1-22 Are Obvious Over Schulze in View of
`Gupta
`1.
`
`1513
`
`1513
`1614
`
`1715
`
`1715
`1815
`2320
`2320
`2926
`
`3330
`3330
`
`IV.
`V.
`
`VI.
`
`E.
`
`B.
`C.
`
`D.
`
`Combination of Schulze and Gupta
`a.
`A POSA Would Have Been Motivated To Adopt a
`Semiconductor Fabrication System With Automated
`
`ii
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`Monitoring and Assessment as Taught
`by Schulze
`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
`3432
`
`3330
`
`A POSA Would Have Had a Reasonable
`Expectation of Success Combining Schulze With
`Gupta
`
`3735
`
`b.
`
`c.
`
`iii
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`b.
`
`c.
`
`d.
`
`Independent Claim 1
`a.
`[1.Pre] A method for scheduling in an automated
`manufacturing environment
`[1.a] automatically detecting an occurrence of a
`predetermined event in an integrated, automated
`process flow
`[1.b] “automatically notifying a software
`scheduling agent of the occurrence”
`[1.c] reactively scheduling an action from the
`software scheduling agent responsive to the
`detection of the predetermined event
`Independent Claim 14
`a.
`a computer system, including a plurality of
`software scheduling agents
`“a plurality of predetermined events”
`b.
`“scheduling appointments for activities”
`c.
`Claims 6, 15, 18
`Claims 2-5, 10-13, 16, 17, 21, 22
`a.
`Claims 2 and 16
`b.
`Claims 3, 4, 17
`c.
`Claims 10, 11, 21
`d.
`Claims 12, 13, 22
`e.
`Claim 5
`Claims 7 and 19
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`4138
`
`4139
`
`4239
`
`4240
`
`4543
`4745
`
`4846
`5048
`5048
`5149
`5553
`5654
`5755
`6058
`6160
`6362
`6463
`
`iv
`
`2.
`
`3.
`
`4.
`5.
`
`6.
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`E.
`
`Claims 8, 9, 20
`7.
`Objective Indicia of Nonobviousness Do Not Weigh in
`Favor of Patentability of Claims 1-22
`VII. CONCLUSION
`
`6665
`
`6766
`6867
`
` v
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`1001
`
`1002
`1003
`1004
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`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)
`
`vi
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`Exhibit No.
`
`Description
`
`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)
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`vii
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`Exhibit No.
`
`Description
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`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)
`R. Langlois, Capabilities and Vertical Disintegration in Process
`Technology: The Case of Semiconductor Fabrication Equipment
`(January 1998)
`Comparison between the current Petition and petition in
`IPR2021-01342
`
`viii
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`Applied MaterialsSTMicroelectronics, Inc. (“Petitioner”, “ST”) respectfully
`
`requests Inter Partes Review of claims 1-22 of U.S. Patent No. 6,968,248 (“’248
`
`patent) pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100.
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`A.
`37 C.F.R. § 42.8(b)(1): Real Parties-In-Interest
`Applied Materials, Inc. is the real party-in-interest for this proceeding. In an
`
`abundance of caution, Petitioner identifies the following potential additional real
`
`parties-in-interest:
`
`Infineon Technologies AG and Infineon Technologies Americas Corp.;
`
`MediaTek Inc. and MediaTek USA Inc.;
`
`NVIDIA Corporation;
`
`NXP USA, Inc.;Western Digital Technologies, Inc.STMicroelectronics, Inc.
`
`is a real party-in-interest. Although STMicroelectronics N.V., ST’s parent
`
`company, is not a real party-in-interest under the governing legal standard for
`
`making that determination, ST identifies it as a real party-in-interest for purposes
`
`of this Petition to avoid any disputes over that issue.
`
`B.
`
`37 C.F.R. § 42.8(b)(2): Related Matters
`
` 1
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`The ’248 patent is asserted in ten pending litigations:1 Ocean
`
`Semiconductor LLC v. Analog Devices, Inc., No. 1:20-cv-12310 (D. Mass.), Ocean
`
`Semiconductor LLC v. Infineon Techs. AG, No. 1:20-cv-12311 (D. Mass.), Ocean
`
`Semiconductor LLC v. Huawei Devices USA, Inc., No. 4:20-cv-991 (E.D. Tex.),
`
`Ocean Semiconductor LLC v. MediaTek Inc., No. 6:20-cv-1210 (W.D. Tex.),
`
`Ocean Semiconductor LLC v. NVIDIA Corp., No. 6:20-cv-1211 (W.D. Tex.),
`
`Ocean Semiconductor LLC v. NXP Semiconductors N.V., No. 6:20-cv-1212 (W.D.
`
`Tex.), Ocean Semiconductor LLC v. Renesas Electronics Corp., No. 6:20-cv-1213
`
`(W.D. Tex.), Ocean Semiconductor LLC v. Silicon Labs. Inc., No. 6:20-cv-1214
`
`(W.D. Tex.), Ocean Semiconductor LLC v. ST MicroSTMicroelectronics, Inc., No.
`
`6:20-cv-1215 (W.D. Tex.), and Ocean Semiconductor LLC v. Western Digital
`
`Techs., Inc., No. 6:20-cv-1216 (W.D. Tex.). Petitioner has also filed a petition for
`
`Inter Partes review of related patent U.S. Patent No. 6,907,305.
`
`C.
`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
`
`Mission Street, San Francisco, CA 94105, Telephone: (415)490-1491, Facsimile:
`
`(415)490-2001, email: ekrause@axinn.com; and Christopher M. Gallo, Reg. No.
`
`1 Petitioner is not aware of any assertion of the ‘248 patent implicating Petitioner’s
`products in Case Nos. 1:20-cv-12310 (D. Mass.), 4:20-cv-991 (E.D. Tex.),
`6:20-cv-1213 (W.D. Tex.), 6:20-cv-1214 (W.D. Tex.), 6:20-cv-1215 (W.D. Tex.).
`
` 2
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`70,291, as Backup Counsel, 1901 L Street NW, Washington, DC 20036,
`
`Telephone: (202)721-5413, Facsimile: (202)912-4700, email: cgallo@axinn.com.
`
`D.
`
`37 C.F.R. § 42.103: Payment of Fees
`
`Lead Counsel
`Tyler R. Bowen
`(Reg. No. 60,461)
`
`Back-Up Counsel
`Philip A. Morin
`(Reg. No. 45,926)
`
`PERKINS COIE LLP
`2901 N. Central Avenue,
`Suite 2000
`Phoenix, Arizona 85012
`Telephone: (602) 351-8000
`Facsimile: (602) 648-7000
`Email: bowen-ptab@perkinscoie.com
`
`PERKINS COIE LLP
`11452 El Camino Real,
`Suite 300
`San Diego, California 92130
`Telephone: (858) 720-5700
`Facsimile: (858) 720-5799
`Email: morin-ptab@perkinscoie.com
`
`Chad S. Campbell
`Pro hac vice to be submitted
`
`PERKINS COIE LLP
`2901 N. Central Avenue,
`Suite 2000
`Phoenix, Arizona 85012
`Telephone: (602) 351-8000
`Facsimile: (602) 648-7000
`Email: campbell-ptab@perkinscoie.com
`
`ST consents to service by email at:
`
`STMicro-Ocean-IPR_Service@perkinscoie.com.
`
` 3
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`The undersigned authorizes Deposit Account No. 013050 to be charged:
`
`(1)$43,750 fee set forth in 37 C.F.R. § 42.15(a) for this Petition for IPR which
`
`requests review of 22 claims ($19,000 IPR Request fee, $750 IPR Request fee for
`
`two claims in excess of twenty, $22,500.00 IPR Post-Institution fee, $1,500 IPR
`
`Post-Institution fee for two claims in excess of twenty); and (2) any additional fees
`
`that may be due in connection with this Petition.ST is concurrently filing an
`
`executed Power of Attorney appointing the above counsel.
`
`II.
`
`SUMMARY OF THE ’248 PATENT
`A.
`Description of Subject Matter
`The ’248 patent is directed to event-driven scheduling in an automated
`
`manufacturing environment (e.g., a semiconductor fabrication factory, also known
`
`as a “fab”). Ex. 1003, ¶¶ 57, 63; Ex. 1001, Abstract. The purported invention first
`
`detects a predefined event (e.g., machine downtime) and notifies a software
`
`scheduling agent of the detected event. Ex. 1003, ¶ 63; Ex. 1001, 3:64-4:14. In
`
`response, the agent reactively schedules an action or an appointment (e.g., delaying
`
`the next scheduled loading). Ex. 1003, ¶ 63; Ex. 1001, 3:64-4:14. The
`
`specification describes “appointment” as “a time period certain in which the
`
`process tool 115 has obligated itself to perform the process operation, and is
`
`defined by an Appointment Start Time (‘TS’) and an Appointment End Time
`
`(‘TE’).” Ex. 1001, 10:32-36; Ex. 1003, ¶ 63.
`
` 4
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`The ’248 patent purports to be an improvement over prior art by reducing
`
`reliance on personnel (e.g., a fab technician) through automation to “monitor the
`
`state of the factory, to continuously react to change, to make rapid logistical
`
`decisions, and to initiate and coordinate factory control activity in a timely
`
`manner.” Ex. 1001, 3:25-34; Ex. 1003, ¶ 64. The earliest priority date claimed by
`
`the ’248 patent is April 30, 2002. According to public records, Ocean owns the
`
`’248 patent by assignment. Ex. 1010.
`
`B.
`Prosecution History
`The ’248 patent issued from U.S. App. No. 11/151,098 (“’098 application”),
`
`which claims priority to U.S. App. No. 10/135,145 (“parent ’145 application”)
`
`filed April 30, 2002, now U.S. Patent No. 6,907,305 (“’305 patent”). Ex. 1001;
`
`Ex. 1002. The ’098 application was filed June 13, 2005, one day before the
`
`issuance of the ’305 patent, with 22 claims. Ex. 1005, 75-81; Ex. 1003, ¶¶ 70, 81.
`
`On August 22, 2005, the Examiner issued a Notice of Allowance without providing
`
`any reasons for allowance, Ex. 1005, 93-94, and the ’248 patent issued November
`
`22, 2005. Ex. 1003, ¶ 81.
`
`The two applications share the same specification and claim substantially the
`
`same features (as shown below with differences in underline). Ex. ¶ 71.
`
`Parent ’145 Application
`Claim 1
`
`’098 Application
`Claim 1
`
` 5
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`Parent ’145 Application
`Claim 1
`A method for scheduling in an
`automated manufacturing
`environment, comprising:
`
`’098 Application
`Claim 1
`A method for scheduling in an
`automated manufacturing environment,
`comprising:
`
`detecting an occurrence of a
`predetermined event in a process
`flow;
`
`automatically detecting an occurrence of
`a predetermined event in an integrated,
`automated process flow automatically
`
`notifying a software scheduling agent
`of the occurrence; and
`
`notifying a software scheduling agent of
`the occurrence; and
`
`reactively scheduling an action from
`the software scheduling agent
`responsive to the detection of the
`predetermined event.
`
`reactively scheduling an action from the
`software scheduling agent responsive to
`the detection of the predetermined event.
`
`The parent ’145 application was filed April 30, 2002 with 53 claims. Ex.
`
`1006, 48-57; Ex. 1003, ¶ 72. In the August 21, 2003 Office Action, the Examiner
`
`found all pending claims anticipated or obvious in view of U.S. Patent No.
`
`5,444,632 (“Kline”), which discloses a method and a computer system with a
`
`scheduler module in an automated manufacturing environment. Ex. 1006, 152-54;
`
`Ex. 1003, ¶ 73. In response, the Applicant argued that Kline only disclosed
`
`providing wafer specification information to the scheduler module and did not
`
`disclose detecting “an event.” Ex. 1006, 163-64; Ex. 1003, ¶ 74. The Applicant
`
`further argued that Kline did not disclose a “software scheduling agent” because
`
`(1) the claimed agent is implemented in software, whereas the scheduler module
`
` 6
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`disclosed in Kline “includes a user and significant hardware components”; (2) the
`
`claimed agent represents a manufacturing domain entity21 in contrast with the
`
`scheduling module in Kline “operate[s] across the whole fab”; and (3) the claimed
`
`agent reactively schedules an action, as opposed to the scheduling module in Kline
`
`which “merely provides and/or obtains information and does not schedule.” Ex.
`
`1006, 164-65; Ex. 1003, ¶¶ 74-75.
`
`In a second Office Action dated January 16, 2004, the Examiner rejected all
`
`pending claims as anticipated by U.S. Patent No. 5,369,570 (“Parad”), which
`
`disclosed a method and a computer system for scheduling by using distributed
`
`resource engines in an automated manufacturing environment. Ex. 1006, 178-79;
`
`Ex. 1003, ¶ 76. In response, the Applicant argued that Parad did not disclose a
`
`“software scheduling agent,” as the scheduling functionality in Parad “could be
`
`implemented in, for example hardware, as opposed to software.” Ex. 1006,
`
`187-92; Ex. 1003, ¶ 77.
`
`In a Final Rejection dated June 15, 2004, the Examiner maintained the
`
`anticipation-based rejection from the previous office action. Ex. 1006, 194-97; Ex.
`
`1003, ¶ 78. The Examiner stated that Parad inherently met the ‘software
`
`scheduling agent’ limitation because “Applicant’s definition of the term ‘software
`21 Examples of a “manufacturing domain entity” in a semiconductor factory
`include a lot, a process tool, a resource, a preventative maintenance procedure
`(“PM”), or an equipment qualification (“Qual”) procedure. Ex. 1001, 6:40-43.
`
` 7
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`scheduling agent’ is very broad and can be interpreted as any body involv[ed] in
`
`scheduling.” Ex. 1006, 196; Ex. 1003, ¶ 78. In response, Applicant disputed the
`
`breadth of the “software scheduling agent” by arguing that “there is no support in
`
`Applicant[’s] specification for the proposition that a scheduling agent represents
`
`more than one manufacturing domain entity at any given time or that a scheduling
`
`agent be implemented in anything other than software.” Ex. 1006, 203-06; Ex.
`
`1003, ¶ 79.
`
`On November 24, 2004, the Applicant filed a Notice of Appeal, reiterating
`
`the responses to the final rejection. Ex. 1006, 213-25; Ex. 1003, ¶ 80. On
`
`February 3, 2005, the Examiner issued a Notice of Allowance without providing
`
`any reasons for allowance, Ex. 1006, 243-44, and the ’305 patent issued June 14,
`
`2005. Ex. 1003, ¶ 80.
`
`C.
`Litigation History
`The cases involving the ’248 patent arehas been asserted in ten different
`
`cases in three different venues, as listed above in I.B. No initial case management
`
`conference has been set in three of the cases. In two of the cases, a hearing on
`
`motions to dismiss is scheduled for September 29, 2021. In the other cases, a case
`
`management conference has been deemed to occur on June 30, 2021 by operation
`
`of that court’s standing orderClaim construction has occurred in eight of the cases,
`
` 8
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`and discovery is ongoing in those cases. The two remaining cases have been
`
`stayed.
`
`III.
`
`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,
`
`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at
`
`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,
`
`2020), also favors institution. Petitioner is not a party to any of the litigations
`
`involving the ’248 patent. Resolution of those litigations would not resolve the
`
`dispute between Petitioner and Ocean with respect to the asserted Ground. Where
`
`Petitioner is not a party to litigations involving the subject patent, the Board has
`
`repeatedly found that institution is appropriate in light of the Fintiv factors, even
`
`where parties to those other cases are named as real parties-in-interest. Dolby v.
`
`Intertrust, IPR2020-00665, Paper 11 (PTAB Feb. 16, 2021); Shenzhen v. Noco,
`
`IPR2020-00944, Paper 20 (PTAB Nov. 12, 2020); Edwards v. Colibri, IPR2020-
`
`01649, Paper No. 8 (PTAB Mar. 26, 2021favors institution. Indeed, the Board
`
`recently instituted an IPR filed by Petitioner under highly similar circumstances.
`
`STMicroelectronics, Inc. v. Ocean Semiconductor LLC, IPR2021-01349, Paper 13
`
`at 8-13 (PTAB Mar. 4, 2022).
`
` 9
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`Of the six factors assessing “whether efficiency, fairness, and the merits
`
`support the exercise of authority to deny institution” under § 314(a), four support
`
`institution, and two are neutral. Fintiv, IPR2020-00019, Paper 11 at 6.
`
`A.
`
`Factors 1 and 2 Are Neutral: No Ruling on Any Motion To Stay
`and No Predictable Trial Date in Any Parallel LitigationDistrict
`Court Stays Favor Institution (Factor 1)
`Petitioner is not a party to any of the pending litigations between Ocean and
`
`the defendants. See Factor 5.
`
`Regarding Factor 1, no party has filed a motion to stay, nor has a court
`
`commented on its willingness to grant a stay in any of the parallel litigations
`
`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.”).
`
`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
`
`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).
`
`10
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`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
`
`trial dates. Ex. 1011 (“70% of trial dates initially relied upon by the PTAB to deny
`
`petitions have slid” in the Western District of Texas). Even if the date were firm,
`
`trial dates in some cases do not negate the lack of trial dates in other cases.
`
`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
`
`more parallel proceedings fit the bill, and then determining the sum.”) The absence
`
`of trial dates in other cases weighs in favor of institution. Google LLC v. 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,”
`
`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
`
`various parallel cases to seek stays based on institution of this Petition, and the lack
`
`of participation or control by Petitioner in any of these cases militate against
`
`exercising the Board’s authority to deny institution.
`
`11
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`The D. Mass. cases that involve the ’248 patent were stayed in September
`
`2021, which favors institution. Even without those stays, however, this factor
`
`would be neutral rather than favorable to Ocean because, as of now, neither party
`
`has requested a stay in the related district court case. Apple Inc. v. Fintiv, Inc.,
`
`IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative). The same is
`
`true for Ocean’s other cases in W.D. Tex. and E.D. Tex.
`
`B.
`
`Factor 3 Favors Institution: Only Minimal Investment in Parallel
`Proceedings to DateUncertainty over the Trial Date in the District
`Court Case Against Petitioner Favors Institution (Factor 2)
`As a non-party, Petitioner does not have knowledge or information as to the
`
`resources expended by the parties in litigation. However, public records indicate
`
`that neither the parties nor the courts have invested substantial resources to date,
`
`and considerable work remains to be done. In two cases, the court has yet to rule
`
`on initial pleading motions.
`
`Since this Petition is being filed before the invalidity contention deadline in
`
`any of the parallel litigations, the defendants would not need to expend resources
`
`regarding the asserted grounds of unpatentability. Western Digital v. Kuster,
`
`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
`
`12
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`written decision, placing a hold on future investments in the litigations, all of
`
`which are at early stages.
`
`In the district court case against Petitioner, the court entered a Scheduling
`
`Order identifying December 7, 2022 as the target trial date. The final written
`
`decision in the IPR Petitioner is seeking to join will likely issue in or before
`
`February 2023. Applied Materials, Inc. v. Ocean Semiconductor LLC,
`
`IPR2021-01342, Paper 17 at 25 (PTAB Feb. 9, 2022). Despite the district court’s
`
`aspirational target date, trial probably will not begin on December 7, 2022. Ex.
`
`1011. Ocean has asserted numerous patents against seven different defendants
`
`(including Petitioner) in separate but parallel cases in the Western District of
`
`Texas. All these cases have the same target trial date: December 7, 2022. The
`
`district court cannot possibly try more than one case at a time. In fact, as the court
`
`recently explained and as is typical in similar situations, the court will stagger the
`
`trials across several months after December 7, 2022. STMicroelectronics,
`
`IPR2021-01349, Paper 13 at 10. The case against Petitioner is the second-to-last
`
`case that Ocean filed, which means the court will need to handle up to five prior
`
`trials before reaching the one relating to Petitioner. That makes for months of
`
`delay. The stayed D. Mass. cases have no trial date, which favors institution.
`
`13
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`C.
`
`Factor 4 Favors Institution: Invalidity Contentions Not Yet
`Served in Any Parallel LitigationInvestments in Invalidity Issues
`in Parallel District Court Proceedings Are Minimal (Factor 3)
`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
`
`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
`
`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
`
`H.R. Rep. No. 112–98, pt. 1, at 40 (2011), 2011 U.S.C.C.A.N. 67, 69 (Post grant
`
`reviews were meant to be “quick and cost effective alternatives to litigation”)).
`
`Thus, Factor 4 weighs in favor of institution.
`
`Factor 3 favors institution. The investments that matter are those regarding
`
`invalidity issues. Although preliminary invalidity contentions have been served in
`
`the W.D. Tex. cases, final invalidity contentions are not due for weeks,
`
`invalidity-related fact discovery is open for several more months, and invalidity
`
`14
`
`Petitioner STMICROELECTRONICS, INC.,
`Ex. 1032, IPR2022-00681
`
`
`
`Petition for Inter Partes Review
`of IPR2022-00681
`U.S. Patent No. 6,968,248
`
`expert reports and summary judgment briefing remain in the future. Sand
`
`Revolution II, LLC v. Cont’l Intermodal Group-Trucking LLC, IPR2019-01393,
`
`Paper 24 at 11 (PTAB June 16, 2020) (informative) (“much work remains in the
`
`district court case as it relates to invalidity”). The minimal invalidity-related
`
`investments in the W.D. Tex. cases militate in favor of institution. Similarly, there
`
`has been little invalidity investment in the stayed D. Mass. cases and the E.D. Tex.
`
`case. Moreover, the petition that Petitioner seeks to join was filed in a diligent
`
`manner. Applied Materials, IPR2021-01342, Paper 17 at 26.
`
`D.
`
`Factor 5 Favors Institution: Petitioner Not a Party to Any Parallel
`District Court CaseThe Petition Raises Unique Issues Favoring
`Institution (Factor 4)
`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
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