UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________________________
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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 No. IPR2022-00681
`U.S. Patent No. 6,968,248
`________________________________
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`
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`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2021-01342
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`________________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________________
`
`
`STMICROELECTRONICS, INC.,
`
`Petitioner,
`
`v.
`
`OCEAN SEMICONDUCTOR LLC,
`
`Patent Owner.
`________________________________
`
`Case No. IPR2022-00681
`U.S. Patent No. 6,968,248
`________________________________
`
`
`
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2021-01342
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`I.
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`II.
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`TABLE OF CONTENTS
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`Page
`STATEMENT OF PRECISE RELIEF REQUESTED .................................... 1
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`STATEMENT OF MATERIAL FACTS ......................................................... 2
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`III.
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`STATEMENT OF REASONS FOR RELIEF REQUESTED ......................... 3
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`IV. CONCLUSION ................................................................................................. 6
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`i
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`TABLE OF AUTHORITIES
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`PAGE(S)
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`CASES
`Garmin Int’l, Inc. v. Philips North Am. LLC,
`IPR2020-00910, Paper 8 (PTAB Nov. 19, 2020) ................................................. 5
`HTC v. Parthenon Unified Memory Architecture LLC,
`IPR2017-00512, Paper 12 (PTAB, June 1, 2017) ............................................ 3, 5
`Kyocera Corp. v. Softview LLC,
`IPR2013-00004, Paper 15 (PTAB Apr. 24, 2013) ............................................... 4
`Mylan Pharms., Inc. v. Novartis AG,
`IPR2014-00550, Paper 38 (PTAB Apr. 10, 2015) ............................................... 5
`Samsung Elecs. Co. v. Raytheon Co.,
`IPR2016-00962, Paper 12 (PTAB Aug. 24, 2016) ............................................... 4
`STMicroelectronics, Inc. v. Lone Star Silicon Innovations, LLC,
`IPR2018-00436, Paper 7 (PTAB May 4, 2018) ................................................... 5
`STATUTES
`35 U.S.C. § 315(c) ..................................................................................................... 3
`REGULATIONS
`37 C.F.R. § 42.122(b) ................................................................................................ 3
`
`ii
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
`Petitioner STMicroelectronics, Inc. (“Petitioner” or “ST”) moves for joinder
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`of its contemporaneously-filed Petition for Inter Partes Review (“IPR”) of claims
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`1–22 of U.S. Patent No. 6,968,248 (“the ’248 patent”) with a pending IPR, Applied
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`Materials, Inc. v. Ocean Semiconductor LLC, IPR2021-01342 (“the Applied
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`Materials IPR” or “the Applied Materials proceeding”), which the Board instituted
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`on February 9, 2022.
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`The Applied Materials IPR concerns the same patent and the same claims as
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`ST’s Petition. The prior art-related portions of ST’s Petition and supporting expert
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`declaration are substantively identical to those submitted in the Applied Materials
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`IPR. Petitioner here asserts that the same claims are obvious over the same prior art
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`based on the same arguments supported by the same expert as in the Applied
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`Materials IPR.
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`Petitioner agrees to take an “understudy” role if joined. Joinder will not
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`cause any delay in the resolution of the Applied Materials IPR. The Applied
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`Materials IPR petitioner has no position on ST’s joinder request. Patent Owner
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`does not oppose this motion. Joinder is appropriate because it will resolve the same
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`patentability issues of the same patent, it will not delay the schedule that the Board
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`has issued in the Applied Materials IPR, and the parties in the Applied Materials
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`IPR will not be prejudiced.
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`1
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`II.
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`STATEMENT OF MATERIAL FACTS
`1.
`Ocean Semiconductor LLC (“Patent Owner”) purports to own the
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`ʼ248 patent.
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`2.
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`Patent Owner has asserted the ’248 patent against Petitioner and
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`others in several district court lawsuits: Ocean Semiconductor LLC v. Analog
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`Devices, Inc., No. 1:20-cv-12310 (D. Mass.), Ocean Semiconductor LLC v.
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`Infineon Techs. AG, No. 1:20-cv-12311 (D. Mass.), Ocean Semiconductor LLC v.
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`Huawei Device USA, Inc., No. 4:20-cv-991 (E.D. Tex.), Ocean Semiconductor
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`LLC v. MediaTek Inc., No. 6:20-cv-1210 (W.D. Tex.), Ocean Semiconductor LLC
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`v. NVIDIA Corp., No. 6:20-cv-1211 (W.D. Tex.), Ocean Semiconductor LLC v.
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`NXP Semiconductors NV, No. 6:20-cv-1212 (W.D. Tex.), Ocean Semiconductor
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`LLC v. Renesas Elec. Corp., No. 6:20-cv-1213 (W.D. Tex.), Ocean Semiconductor
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`LLC v. Silicon Laboratories Inc., No. 6:20-cv-1214 (W.D. Tex.), Ocean
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`Semiconductor LLC v. STMicroelectronics, Inc., No. 6:20-cv-1215 (W.D. Tex.),
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`and Ocean Semiconductor LLC v. Western Digital Techs., Inc., No. 6:20-cv-1216
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`(W.D. Tex.).
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`3.
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`On August 3, 2021, Applied Materials filed the Applied Materials
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`IPR, requesting cancellation of claims 1–22 of the ʼ248 patent. IPR2021-01342,
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`Paper 1.
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`4.
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`On February 9, 2022, the Board instituted the Applied Materials IPR
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`2
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`and entered a Scheduling Order. IPR2021-01342, Papers 17 and 18.
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`5.
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`Along with this Motion for Joinder, Petitioner simultaneously files the
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`Petition, which argues, among other things, that the same claims of the ’248 patent
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`are obvious based on the same ground and for the same reasons as set forth in the
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`Applied Materials IPR petition. The Petition is supported by the same expert
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`declaration of Stanley Shanfield, Ph.D. submitted in support of the Applied
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`Materials IPR petition.
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`6.
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`The ground proposed in the Petition is the same as the one described
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`in the Applied Materials IPR petition—the Petition does not contain any additional
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`arguments or evidence in support of the unpatentability of claims 1–22 of the ’248
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`patent. Exhibit 1032 to the Petition provides a comparison between the Petition and
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`the Applied Materials IPR petition, showing minor, non-substantive edits and
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`changes related to a different party filing the petition.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A.
`Joinder is timely
`This request is being submitted within the time period set forth in 37
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`C.F.R. § 42.122(b).
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`B.
`The applicable factors support joinder
`The Board has discretion to join this IPR with the Applied Materials IPR.
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`See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); HTC v. Parthenon Unified Memory
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`Architecture LLC, IPR2017-00512, Paper 12 at 6 (PTAB June 1, 2017). In
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`3
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`evaluating a motion for joinder, the Board considers the following factors: (1) the
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`reasons why joinder is appropriate; (2) whether the petition raises any new grounds
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`of unpatentability; (3) any impact joinder would have on the cost and trial schedule
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`for the existing review; and (4) whether joinder will add to the complexity of
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`briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at
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`4 (PTAB Apr. 24, 2013); Consolidated Trial Practice Guide 76 (Nov. 2019),
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`https://go.usa.gov/xpvPF. These factors weigh in favor of joinder. As a result, the
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`Board should exercise its discretion to allow joinder here.
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`1.
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`Joinder is appropriate because Petitioner proposes no new
`grounds of unpatentability (factors 1 and 2)
`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
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`proceeding.” Samsung Elecs. Co. v. Raytheon Co., IPR2016-00962, Paper 12 at 9
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`(PTAB Aug. 24, 2016) (internal quotations and citations omitted) (emphasis
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`original). Joinder is appropriate here because the Petition asserts the same ground
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`and relies on the same evidence for unpatentability presented in the Applied
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`Materials IPR. See Exhibit 1032. Specifically, the Petition and the Applied
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`Materials IPR petition rely on the same prior art references in the same
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`combination. Moreover, the Petition and the Applied Materials IPR petition rely on
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`the same declaration of Stanley Shanfield, Ph.D. The arguments in both petitions
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`are identical; there are no new grounds of unpatentability asserted in the Petition.
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`4
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`As the same issues will be addressed in both proceedings, joinder makes
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`sense. See, e.g., HTC, IPR2017-00512, Paper 12 at 7 (granting motion for joinder
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`where the second petition involved “the same claims, the same patent, the same
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`prior art references, the same expert declaration, and the same arguments and
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`rationales”); STMicroelectronics, Inc. v. Lone Star Silicon Innovations, LLC,
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`IPR2018-00436, Paper 7 at 5 (PTAB May 4, 2018) (similar).
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`2.
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`Joinder will not impact the trial schedule or cost of the
`joined proceeding (factor 3)
`Joinder will not prejudice the parties to the Applied Materials IPR. Petitioner
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`will not request any alterations to the trial schedule that the Board issued in the
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`Applied Materials IPR (IPR2021-01342, Paper 18),
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`leaving
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`that schedule
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`unchanged.
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`Petitioner also agrees to adopt a secondary, “understudy” role in the Applied
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`Materials IPR, if joined. See, e.g., Garmin Int’l, Inc. v. Philips North Am. LLC,
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`IPR2020-00910, Paper 8 at 45, 47-50 (PTAB Nov. 19, 2020) (granting joinder
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`where petitioners agreed to accept an “understudy” role); STMicroelectronics,
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`IPR2018-00436, Paper 7 at 5 (similar). Petitioner will assume a primary role only
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`if the Applied Materials IPR petitioner ceases its participation in that proceeding.
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`Petitioner’s agreement to take an “understudy” role removes any potential
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`complication or delay caused by joinder, while providing the parties an opportunity
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`to address all issues that may arise. See, e.g., Mylan Pharms. Inc. v. Novartis AG,
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`5
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`IPR2014-00550, Paper 38 at 5-6 (PTAB Apr. 10, 2015). The Applied Materials
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`IPR petitioner has no position on ST’s joinder request. Patent Owner does not
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`oppose this motion. Joinder will not affect the cost of the Applied Materials IPR
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`for Patent Owner, the Applied Materials IPR petitioner, and the Board.
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`3.
`Joinder will not complicate briefing and discovery (factor 4)
`This factor favors joinder. If joinder is granted, Petitioner agrees to take on
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`an understudy role. Accordingly, joinder will not affect briefing and discovery.
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`Those activities will proceed in the same way with or without joinder. In either
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`case, Applied Materials will file briefing and conduct discovery, and Petitioner will
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`not be involved. Petitioner will become involved only if Applied Materials exits
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`the proceeding.
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`IV. CONCLUSION
`For the foregoing reasons, ST respectfully requests that the Board institute
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`its Petition for Inter Partes Review of U.S. Patent No. 6,968,248 and join this
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`proceeding with Applied Materials, Inc. v. Ocean Semiconductor LLC, case
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`number IPR2021-01342.
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`6
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`Dated: March 9, 2022
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`Respectfully submitted,
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`
`/ Tyler R. Bowen /
`Lead Counsel
`Tyler R. Bowen, Reg. No. 60,461
`PERKINS COIE LLP
`2901 N. Central Avenue, Suite 2000
`Phoenix, AZ 85012
`Telephone: (602) 351-8000
`Fax: (602) 648-7000
`
`Back-up Counsel
`Philip A. Morin, Reg. No. 45,926
`PERKINS COIE LLP
`11452 El Camino Real, Suite 300
`San Diego, CA 92130
`Telephone: (858) 720-5700
`Fax: (858) 720-5799
`
`Chad Campbell, Pro hac vice to be submitted
`PERKINS COIE LLP
`2901 N. Central Avenue, Suite 2000
`Phoenix, AZ 85012
`Telephone: (602) 351-8000
`Fax: (602) 648-7000
`
`
`Attorneys for STMicroelectronics, Inc.
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`7
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that true copies of the foregoing MOTION
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`FOR JOINDER TO INTER PARTES REVIEW IPR2021-01342 have been
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`served this 9th day of March 2022, by Federal Express delivery service on Patent
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`Owner at the correspondence address for the attorney of record for the ’248 patent
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`shown in USPTO PAIR:
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`
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`Devlin Law Firm LLC
`1526 Gilpin Ave
`Wilmington, DE 19806
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`and via electronic mail to the attorneys of record for Petitioner Applied
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`Material:
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`
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`Eric A. Krause, Reg. No. 62,329, email: ekrause@axinn.com
`Pan C. Lee, email: plee@axinn.com
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`Date: March 9, 2022
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`By: / Anita Chou /
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`Anita Chou
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`Paralegal
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`1
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