UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`STMicroelectronics, Inc.,
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`Petitioner
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`v.
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`Ocean Semiconductor LLC,
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`Patent Owner
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`Case IPR2022-00681
`Patent No. 6,968,248
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`PATENT OWNER’S AUTHORIZED SUR-REPLY
`PURSUANT TO THE BOARD’S JUNE 23, 2022 ORDER
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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 AUTHORIZED SUR-REPLY
`PURSUANT TO THE BOARD’S JUNE 23, 2022 ORDER
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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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`Exhibit
`2001
`2002
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`2003
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`2004
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`TABLE OF EXHIBITS
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`Description
`2022-02-09 Decision Granting Institution of Inter Partes Review
`Petitioner’s Final Invalidity Contentions, Ocean Semiconductor LLC v.
`STMicroelectronics, Inc., No. 6:20-cv-01215-ADA (W.D. Tex.)
`Petitioner’s Preliminary Invalidity Contentions, Ocean Semiconductor
`LLC v. STMicroelectronics, Inc., No. 6:20-cv-01215-ADA (W.D. Tex.)
`Proof of Service of Process, Ocean Semiconductor LLC v.
`STMicroelectronics, Inc., No. 6:20-cv-01215-ADA (W.D. Tex.)
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`i
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`Patent Owner Ocean Semiconductor LLC (“Patent Owner” or “Ocean”)
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`submits this Sur-Reply, pursuant to the Board’s June 23, 2022, Order. Petitioner
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`STMicroelectronics, Inc.’s (“Petitioner” or “ST”) Reply fails to address its lack of
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`diligence in bringing the Petition underlying the joinder motion. Because
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`Petitioner seeks only to skirt the statutory one-year bar under 35 U.S.C. § 315(b),
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`Petitioner should not be permitted this prejudicial second bite at the apple.
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`I.
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`PETITIONER OFFERS NO EXPLANATION WHY ITS MOTION
`SHOULD BE GRANTED IN VIEW OF FAIRNESS AND PREJUDICE
`CONCERNS
`Petitioner relies on 35 U.S.C. § 315(b) and 37 C.F.R. § 42.122 for the
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`proposition that it should be permitted to join and continue asserting its Petition
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`even if the AMAT IPR is terminated. Paper 8 at 1-2. But Petitioner ignores that
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`its Petition identifies the same prior art references as those already asserted by
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`Petitioner in its Preliminary and Final Invalidity Contentions served in the pending
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`district court proceeding. See IPR2021-01342, Paper 1 at 26 (laying out the
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`complete overlap as to claims and prior art references raised in the original petition
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`and in the parallel proceedings including that involving Petitioner as a defendant);
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`see also Ex. 2002 at 30-50.
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`Accordingly, such a joinder (where Petitioner would be permitted to join and
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`continue if and when AMAT exits) would not only offer Petitioner a second bite at
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`asserting invalidity against the same patent but also impose undue prejudice on
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`1
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`
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`Patent Owner. See, e.g., Code200, UAB et al. v. Bright Data Ltd., IPR2021-01503,
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`Paper 13 at 8 (P.T.A.B. Mar. 13, 2022) (allowing joinder would offer Petitioner a
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`second bite at asserting invalidity . . . [and] would not be in the interest of justice . .
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`. .”). This is particularly true where Petitioner never disputed that it is a real party-
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`in-interest in the original petition filed by AMAT. See, Applied Materials, Inc. v.
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`Ocean Semiconductor LLC, IPR2021-01339, Paper 1 at 1-2 (P.T.A.B.); Applied
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`Materials, Inc. v. Ocean Semiconductor LLC, IPR2021-01340, Paper 1 at 1-2
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`(P.T.A.B.). Petitioner was sued on the ’248 patent in 2020 (see IPR2021-01344,
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`Paper 13, Ex. 2006) and could have filed an IPR against the ’248 patent at that
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`time as it then already knew of these same prior art references (see Ex. 2003 at 39-
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`45). But Petitioner did not do so in the one-year time frame following service of
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`the Complaint. (See Ex. 2004). Now, twenty months later after commencement of
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`the lawsuit, Petitioner seeks to challenge the ’248 patent via its joinder motion and
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`attempts to skirt around the statutory one-year time bar. Neither Petitioner’s lack
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`of diligence nor the fundamental policy of fairness allows this type of harassment
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`and prejudice against Patent Owner. See Code200, IPR2021-01503, Paper 13 at 8
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`(denying joinder where “Petitioner provides no explanation for not filing for
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`review when it could have earlier done so in the one-year window” and “Petitioner
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`also does not provide an explanation why fairness now requires joinder”).
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`Indeed, in denying the motion for joinder, the Board in Proppant Express
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`2
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`Invs. v. Oren Techs., IPR2018-00914, Paper 38 at 18 (P.T.A.B. Mar. 13, 2019)
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`(precedential) emphasized that the time-bar exception under § 315(b) “does not
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`mean, however, that the exception should swallow the [one-year] rule.” Where “an
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`otherwise time-barred petitioner requests same party and/or issue joinder,”
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`discretion to allow joinder can be exercised “only in limited circumstances” but not
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`where “petitioner’s mistakes or omissions” are implicated, which is the case here
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`as evident by Petitioner’s own negligence to file. (Id. at 19.) “Because Petitioner’s
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`own conduct created the need for it to request joinder” (and not because of any
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`“late addition of newly asserted claims” in the parallel litigation), the Board must
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`“carefully balance the interest in preventing harassment against fairness and
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`prejudice concerns” against Patent Owner. For the same reasons adopted in
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`Proppant, the Board should deny this joinder.
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`In its veiled attempt to distinguishing over the Apple case, Petitioner fails to
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`address the same policy reason enumerated above—that a party cannot make use
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`of joinder as a means to “stand in to continue a proceeding that would otherwise
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`be terminated.” Apple Inc. v. UNILOC 2017 LLC, IPR2020-00854, Paper 9 at 4,
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`12 (P.T.A.B. Oct. 28, 2020),
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`II. CONCLUSION
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`Ocean opposes the Motion for Joinder to the extent Petitioner does not agree
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`to withdraw should AMAT withdraw from the AMAT IPR.
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`3
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`Dated: August 5, 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
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`Attorney for Patent Owner
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`4
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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 August 5, 2022, on the following counsel of
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`record for Petitioners:
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`COUNSEL FOR STMICROELECTRONICS, INC.
`LEAD COUNSEL
`BACKUP COUNSEL
`
`
`Tyler R. Bowen
`Philip A. Morin
`(Reg. No. 60,461)
`(Reg. No. 45,926)
`PERKINS COIE LLP
`PERKINS COIE LLP
`2901 N. Central Avenue,
`11452 El Camino Real,
`Suite 2000
`Suite 300
`Phoenix, Arizona 85012
`San Diego, California 92130
`Telephone: (602) 351-8000
`Telephone: (858) 720-5700
`Facsimile: (602) 648-7000
`Facsimile: (858) 720-5799
`Email: bowen-ptab@perkinscoie.com
`Email: morin-ptab@perkinscoie.com
`Chad S. Campbell
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`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
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`5
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