IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`STMICROELECTRONICS, INC.
`Petitioner,
`v.
`OCEAN SEMICONDUCTOR LLC,
`Patent Owner.
`____________________
`
`IPR2022-00681
`U.S. Patent No. 6,968,248
`____________________
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`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`STMICROELECTRONICS, INC.
`Petitioner,
`v.
`OCEAN SEMICONDUCTOR LLC,
`Patent Owner.
`____________________
`
`IPR2022-00681
`U.S. Patent No. 6,968,248
`____________________
`
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
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`PTAB Case No. IPR2022-00681
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`Ocean advances two arguments in its preliminary response, but one is moot
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`and the other is meritless. Ocean first conditions its non-opposition to joinder on
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`ST’s petition not “contain[ing] any arguments different from the Petition in the
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`AMAT IPR.” Paper 7 at 6-7. Ocean does not dispute, however, that ST’s petition
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`includes no new arguments. Paper 7 at 3; Paper 3 at 4-5. Of course, after joinder
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`ST reserves the right to respond to Ocean’s arguments if Applied Materials exits
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`IPR2021-01342 before the Board issues a final written decision and ST therefore
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`assumes a “primary” rather than “understudy” role in that IPR. Paper 3 at 5-6.
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`Second, Ocean argues the Board “must not” permit ST to proceed as the
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`petitioner in IPR2021-01342 should Applied Materials withdraw because doing
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`so would “flout multiple Federal statutes, P.T.A.B. precedential opinions, and
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`Supreme Court precedent.” Paper 7 at 6 (emphasis in original). That is wrong. To
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`begin, ST has followed the controlling statutes and regulations for IPR joinder.
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`ST properly filed a petition and motion for joinder within one month of the
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`institution date of the AMAT IPR. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b).
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`Ocean concedes as much. Paper 7 at 6. And while Ocean suggests ST did
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`something untoward regarding the one-year bar imposed by 35 U.S.C. § 315(b)
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`and 37 C.F.R. § 42.101(b), both the statute and the rule explicitly note that the bar
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`does not apply to joinder. 35 U.S.C. § 315(b) (“The time limitation set forth in the
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`preceding sentence shall not apply to a request for joinder under subsection
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`-1-
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`(c).”) (emphasis added); 37 C.F.R. § 42.122(b) (“The time period set forth in
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`PTAB Case No. IPR2022-00681
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`§ 42.101(b) shall not apply when the petition is accompanied by a request for
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`joinder.”) (emphasis added). In moving for joinder, ST complied with the law.
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`By contrast, Ocean asks the Board to depart from controlling statutes and
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`regulations and create a new rule that a joined petitioner otherwise time-barred
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`under § 315(b) must “be ordered to withdraw its asserted Grounds” if the original
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`petitioner exits a joined IPR. Paper 7 at 6-7. That is not what the IPR statutes and
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`regulations provide; nor is there any support for Ocean’s proposal in the statutory
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`framework relating to IPRs. Ocean has invented the concept in an attempt to limit
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`ST’s rights to proceed with IPR2021-01342 if Applied Materials withdraws.
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`Congress placed no such limits on joined petitioners, and Ocean cannot
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`unilaterally add the requirement to the rules.
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`Moreover, Ocean has cited to case law that does not support its position
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`that, as a precondition for joinder, ST must withdraw from IPR2021-01342 if
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`Applied Materials withdraws. Ocean relies heavily on and quotes from Apple Inc.
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`v. UNILOC 2017 LLC, IPR2020-00854, Paper 9 (PTAB Oct. 28, 2020), but omits
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`critical text from its quotation. Specifically, Ocean leaves out the text in bold
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`below, including through use of a carefully placed ellipsis.
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`Petitioner’s understudy argument is not persuasive here
`where the copied petition is Petitioner’s second chal-
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`PTAB Case No. IPR2022-00681
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`lenge to the patent, and should Microsoft settle, Peti-
`tioner would stand in to continue a proceeding that
`would otherwise be terminated. In effect, it would be
`as if Apple had brought the second challenge to the
`patent in the first instance. This is the kind of serial
`attack that General Plastic was intended to address.”
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`Apple, IPR2020-00854, Paper 9 at 4; Paper 7 at 4-5. Ocean fails to mention that,
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`unlike ST here, Apple had earlier filed an unsuccessful first petition before sub-
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`mitting a second petition and request to join an instituted IPR on the same patent.
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`Apple, IPR2020-00854, Paper 9 at 5-7. For that reason, the Board denied institu-
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`tion based on General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
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`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017)—a decision that Ocean cites in
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`its preliminary response (Paper 7 at 4). Apple, IPR2020-00854, Paper 9 at 8-13.
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`The driving force behind the decision in Apple (and in General Plastic) was the
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`existence of serial attacks by the same petitioner on the same patent, not the fact
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`that proceedings would continue rather than terminate if joinder was granted, as
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`Ocean suggests. Paper 7 at 4-5. Here, ST has filed just one petition regarding the
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`’248 patent so the concern at play in Apple and General Plastic is absent. Further,
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`SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018), which Ocean also cites,
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`is irrelevant. Paper 7 at 5. It says nothing about joinder.
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`ST requests institution and joinder without Ocean’s conditions.
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`-3-
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`Dated: July 15, 2022
`
`
`PERKINS COIE LLP
`2901 North Central Avenue
`Suite 2000
`Phoenix, AZ 85012-2788
`Telephone: 602.351.8448
`Fax: 602.648.7007
`
`PTAB Case No. IPR2022-00681
`
`Respectfully submitted,
`
`
`
` / Tyler R. Bowen /
`Lead Counsel
`Tyler R. Bowen, Reg. No. 60,461
`
`Back-up Counsel
`Chad S. Campbell (to be admitted pro
`hac vice)
`Philip A. Morin, Reg. No. 45,926
`
`Attorneys for STMicroelectronics, Inc.
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`PTAB Case No. IPR2022-00681
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`CERTIFICATE OF SERVICE
`
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`The undersigned hereby certifies that true copies of the foregoing Reply to
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`Patent Owner’s Preliminary Response have been served this 15th day of July 2022
`via electronic mail to the attorneys of record for Patent Owner:
`DEVLIN LAW FIRM LLC
`1526 Gilpin Avenue
`Wilmington, DE 19806
`
`Timothy Devlin, TD-PTAB@devlinlawfirm.com
`Alex Chan, achan@devlinlawfirm.com
`Joel W. Glazer, jglazer@devlinlawfirm.com
`Henrik Parker, hparker@devlinlawfirm.com
`dlflitparas@devlinlawfirm.com
`
`
`Dated: July 15, 2022
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`
`
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`
`
`/Anita Chou/
`Anita Chou
`Paralegal
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`-5-
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