UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STMicroelectronics, Inc.,
`
`Petitioner
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`v.
`
`Ocean Semiconductor LLC,
`
`Patent Owner
`
`Case IPR2022-00681
`Patent No. 6,968,248
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`
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`
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`PATENT OWNER’S RELIMINARY RESPONSE
`
`Under 35 U.S.C. § 42.107
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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
`Submitted Electronically via PTAB E2E
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`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STMicroelectronics, Inc.,
`
`Petitioner
`
`v.
`
`Ocean Semiconductor LLC,
`
`Patent Owner
`
`Case IPR2022-00681
`Patent No. 6,968,248
`
`
`
`
`
`PATENT OWNER’S RELIMINARY RESPONSE
`
`Under 35 U.S.C. § 42.107
`
`
`
`
`
`
`
`
`
`
`
`
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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
`Submitted Electronically via PTAB E2E
`
`
`
`
`
`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`II.
`STATEMENT OF FACTS .............................................................................. 2
`III. THE PETITION MAY NOT CONTAIN ANY ASSERTIONS NOT
`ALREADY AT ISSUE IN APPLIED MATERIALS ....................................... 2
`IV. STMICRO MUST WITHDRAW ITS CLAIMS IF AMAT WITHDRAWS
`THE APPLIED MATERIALS PETITION ....................................................... 4
`CONCLUSION ................................................................................................ 6
`
` I.
`
`V.
`
`
`
`
`
`
`
`i
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`
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`TABLE OF AUTHORITIES
`
`Cases
`Apple Inc. v. UNILOC 2017 LLC,
`IPR2020-00854, Paper 9 (P.T.A.B. Oct. 28, 2020) ............................................5, 6
`Facebook, Inc. v. Windy City Innovations, LLC,
`973 F.3d 1321 (Fed. Cir. 2020) .............................................................................. 3
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) .................................................. 4
`SAS Institute, Inc. v. Iancu,
`138 S. Ct. 1348 (2018)............................................................................................ 5
`Statutes
`35 U.S.C. § 314 .......................................................................................................... 4
`35 U.S.C. § 316 .......................................................................................................... 5
`37 C.F.R. § 42 .................................................................................................. passim
`
`
`
`
`
`ii
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`
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`TABLE OF EXHIBITS
`
`Description
`February 9, 2022 Decision Granting Institution of Inter Partes Review
`
`Exhibit
`2001
`
`iii
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`
`
`I.
`
`INTRODUCTION
`Through the undersigned Counsel, Patent Owner, Ocean Semiconductor,
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`LLC (“Ocean” or “Patent Owner”) submits the following Patent Owner
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`Preliminary Response pursuant to 37 C.F.R. § 42.107 (a). See also 37 C.F.R. §
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`42.107 (b).
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`Petitioner STMicroelectronics, Inc. (“STMicro” or “Petitioner”) filed a
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`Petition for Inter Partes Review of U.S. Patent No. 6,968,248 (the “’248 patent”)
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`on March 9, 2022. (IPR2022-00680, Paper No. 1 (“Petition”).) The Petition was
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`filed with an accompanying Motion for Joinder (Paper No. 3 (“Motion for
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`Joinder”)) requesting that this matter be joined with an already-pending matter,
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`Applied Materials, Inc. v. Ocean Semiconductor LLC, IPR2021-01342 (P.T.A.B.)
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`(the “AMAT IPR”). As discussed in more detail below, Ocean does not oppose
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`the Motion for Joinder, provided that: (1) the Petition does not contain any
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`arguments not already set forth in the AMAT IPR; and (2) if Applied Materials,
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`Inc. (“AMAT”) withdraws its contentions in the co-pending AMAT IPR, STMicro
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`must also withdraw each of its Grounds from this matter.
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`1
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`
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`II.
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`STATEMENT OF FACTS
`On December 31, 2020, Ocean filed a district court action against STMicro
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`in the Western District of Texas.1 Ocean accuses STMicro of infringement of
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`various patents—including the ’248 patent—directed to semiconductor
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`manufacturing methods based on the use of accused tools and software. The
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`accused tools and software are either developed internally by STMicro or
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`purchased from a third-party.
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`Soon after Ocean brought this district court action, AMAT brought the
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`AMAT IPR challenging the validity of the ’248 patent. On February 9, 2022, the
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`Board granted institution of AMAT’s petition in the AMAT IPR. (See Ex. 2001.)
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`One month after the Board’s institution of the AMAT IPR—but nearly fifteen
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`months after Ocean filed the district court complaint against STMicro—STMicro
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`filed the instant Petition and Motion for Joinder.
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`III. THE PETITION MAY NOT CONTAIN ANY ASSERTIONS NOT
`ALREADY AT ISSUE IN APPLIED MATERIALS
`The Board, at its discretion, may join an IPR with a co-pending instituted
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`IPR. See 37 C.F.R. § 42.122(b). The party requesting joinder—here Petitioner—is
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`not permitted to bring new issues from its petition to the already-instituted IPR.
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`See Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1336 (Fed.
`
`
`1 Ocean Semiconductor LLC v. STMicroelectronics Inc., No. 6:20-cv-01215 (W.D.
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`Tex.).
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`2
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`
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`Cir. 2020) (“[T]he unambiguous meaning of § 315(c) is that it allows the Director
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`discretion to join a person as a party to an already-instituted IPR but does not
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`permit the joined party, by virtue of the joinder decision alone, to bring new issues
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`from a second proceeding into the existing proceeding”) (emphasis original); see
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`also id. at 1336 (emphasis original):
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`The final committee report states that under § 315(c), “[t]he
`Director may allow other petitioners to join an inter partes . . .
`review.” H.R. Rep. No. 112-98, pt. 1, at 76 (2011), as reprinted
`in 2011 U.S.C.C.A.N. 67, 100 (emphasis added). Like the
`statutory language itself, this contemplates allowing a person to
`join an already-instituted IPR as a party but not to bring with it
`its new issues.
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`Here, the Petitioner is unequivocal in affirmatively averring that it is arguing
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`nothing new beyond the issues already raised in the AMAT IPR:
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`The Applied Materials [AMAT] IPR concerns the same patent
`and the same claims as ST’s Petition. The prior art-related
`portions of ST’s Petition and supporting expert declaration are
`substantively identical to those submitted in the Applied
`Materials IPR. Petitioner here asserts that the same claims are
`obvious over the same prior art based on the same arguments
`supported by the same expert as in the Applied Materials IPR.
`
`(Motion for Joinder at 1.)
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`To the extent that the Board agrees, Ocean does not dispute this fact. Even
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`so, should the Board ever determine that an argument raised by STMicro is
`3
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`
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`inconsistent or new when compared with the issues currently pending in the
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`AMAT IPR, or if STMicro in due course files a brief or raises an issue distinct
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`from the briefs and issues raised by AMAT now or at any point during the AMAT
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`IPR proceeding, Ocean reserves the right to object to STMicro’s new arguments
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`and move to reverse joinder and/or dismiss the IPR proceeding as statutorily time-
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`barred.
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`IV.
`
`STMICRO MUST WITHDRAW ITS CLAIMS IF AMAT
`WITHDRAWS THE APPLIED MATERIALS PETITION
`The purpose of the AIA—and, subsequently, inter partes review
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`proceedings—is clear: “[T]o establish a more efficient and streamlined patent
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`system that will improve patent quality and limit unnecessary and
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`counterproductive litigation costs.” H.R. Rep. No. 112-98, pt. 1, at 40 (2011); see
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`also General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-
`
`01357, Paper 19 at 16 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i) (“In
`
`exercising discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a), we are
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`mindful of the goals of the AIA—namely, to improve patent quality and make the
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`patent system more efficient by the use of post-grant review procedures”).
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`To that end, the Board has stated that it must be aware of potential abuse of
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`the post-grant review process “by repeated attacks on patents.” Id. at 16-17.
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`Indeed, the Board has expressly warned against the inefficiencies created by
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`instances where a Petitioner seeking joinder might continue a proceeding which
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`4
`
`
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`would otherwise be terminated. See Apple Inc. v. UNILOC 2017 LLC, IPR2020-
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`00854, Paper 9 at 4 (P.T.A.B. Oct. 28, 2020) (“Petitioner’s understudy argument is
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`not persuasive here where . . . should Microsoft settle, Petitioner would stand in to
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`continue a proceeding that would otherwise be terminated”).
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`More specifically, the Board’s concern regarding a joined party’s ability to
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`continue litigation rests in the “follow-on” petitioner’s ability to effectively
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`contravene the controlling authority of: (1) 37 CFR § 42.101(b), requiring that
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`petitions be filed no more than one year after the date on which the petitioner is
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`served with a complaint alleging infringement of the patent; and (2) 35 U.S.C. §
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`316(a)(11), requiring that a final determination issue not later than one year after
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`the date on which the Director notices institution of review. Indeed, the Board’s
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`concerns are consistent with Supreme Court precedent. See SAS Institute, Inc. v.
`
`Iancu, 138 S. Ct. 1348, 1356 (2018) (“[T]he petitioner’s petition, not the Director’s
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`discretion, is supposed to guide the life of the litigation.”).
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`In other words, a petitioner may only bypass the one-year bars of these
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`statutes when the petition is filed with an accompanying request for joinder
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`under 37 CFR § 42.122(b). Without joinder, the petitioner would be explicitly
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`time-barred from challenging the validity of the patent-at-issue by way of an IPR
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`petition because the petitioner is a defendant served with a district court complaint
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`more than one year ago alleging infringement of the patent.
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`5
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`
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`As noted above, the Petitioner here (STMicro) is a defendant served with a
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`complaint more than one year prior to the filing of the instant Petition that asserted
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`the ‘248 patent. As such, without an accompanying request for joinder, Petitioner
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`STMicro is time-barred from filing the Petition challenging the validity of the ’248
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`patent. See 37 CFR § 42.101(b).
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`As recognition of the fact that STMicro’s Petition would be time-barred
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`under 37 C.F.R. § 42.101(b), STMicro filed a request for joinder under 37 CFR §
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`42.122(b). Indeed, what would be the purpose of the Motion for Joinder if not to
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`bypass the one-year bar? The only reasonable answer is that, as noted above, such
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`a request is the only means available to Petitioner STMicro to bypass the one-year
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`time-bar of 37 C.F.R. § 42.101(b).
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`Given all of the above, STMicro must not be permitted to “continue a
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`proceeding that would otherwise be terminated.” Apple, IPR2020-00854, Paper 9
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`at 4. To do so would allow STMicro to flout multiple Federal statutes, P.T.A.B.
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`precedential opinions, and Supreme Court precedent by proceeding in a matter
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`where it would otherwise have been explicitly barred. Thus, should AMAT
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`withdraw or otherwise dismiss its contentions in the AMAT IPR (for whatever
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`reason), STMicro must similarly be ordered to withdraw its Petition.
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`V.
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`CONCLUSION
`For the foregoing reasons, Ocean does not oppose the Motion for Joinder so
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`long as: (1) the Petition does not, and will not, contain any arguments different
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`6
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`
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`from the Petition in the AMAT IPR; and (2) STMicro will be ordered to withdraw
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`each of its asserted Grounds in the matter should AMAT withdraw or dismiss its
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`contentions in the AMAT IPR.
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`Dated: June 9, 2022
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`
`s/ Timothy Devlin
`Timothy Devlin (Lead Counsel)
`Registration No. 41,706
`Alex Chan
`Registration No. 52,713
`DEVLIN LAW FIRM LLC
`1526 Gilpin Avenue
`Wilmington, DE 19806
`Telephone: (302) 449-9010
`Facsimile: (302) 353-4251
`
`Attorney for Patent Owner
`
`7
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`
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`CERTIFICATE OF WORD COUNT
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that there are
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`1,428 words in this paper, excluding any table of contents, table of authorities,
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`mandatory notices under 37 C.F.R. § 42.8, certificate of word count, certificate of
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`service, or appendix of exhibits. This certification relies on the word count of the
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`word-processing system used to prepare this paper.
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`
`
`s/ Timothy Devlin
`Timothy Devlin (Lead Counsel)
`Registration No. 41,706
`Alex Chan
`Registration No. 52,713
`DEVLIN LAW FIRM LLC
`1526 Gilpin Avenue
`Wilmington, DE 19806
`Telephone: (302) 449-9010
`Facsimile: (302) 353-4251
`tdevlin@devlinlawfirm.com
`
`Attorney for Patent Owner
`
`8
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`CERTIFICATE OF SERVICE
`The undersigned certifies that the foregoing document was served
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`electronically via electronic mail on June 9, 2022 on the following counsel of
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`record for Petitioners:
`
`LEAD COUNSEL
`
`Tyler R. Bowen
`(Reg. No. 60,461)
`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
`
`
`Counsel for STMicroelectronics, Inc.
`BACKUP COUNSEL
`
`Philip A. Morin
`(Reg. No. 45,926)
`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
`
`
`/s/ Timothy Devlin
` Timothy Devlin
`
`
`
`9
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`
`
`
`
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