UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TCL INDUSTRIES HOLDINGS CO., LTD.,
`Petitioners,
`v.
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`ATI TECHNOLOGIES ULC,
`Patent Owner.
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`
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`PTAB Case No. IPR2024-00366
`U.S. Patent No. 8,760,454 B2
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`TCL’S MOTION FOR JOINDER TO IPR2023-00922
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`TCL INDUSTRIES HOLDINGS CO., LTD.,
`Petitioners,
`v.
`
`ATI TECHNOLOGIES ULC,
`Patent Owner.
`
`
`
`
`
`
`
`
`PTAB Case No. IPR2024-00366
`U.S. Patent No. 8,760,454 B2
`
`
`
`
`
`
`
`TCL’S MOTION FOR JOINDER TO IPR2023-00922
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`TABLE OF CONTENTS
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`Page
`I. STATEMENT OF PRECISE RELIEF REQUESTED ............................................... 1
`II.
`STATEMENT OF MATERIAL FACTS .................................................................... 1
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ................................. 2
`IV. CONCLUSION .................................................................................................................. 5
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`TCL’s Motion for Joinder to IPR2023-00922
`PTAB Case No. IPR2024-00366
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`
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`STATEMENT OF PRECISE RELIEF REQUESTED
`Petitioner TCL Industries Holdings Co, Ltd. (“TCL”) moves for joinder of
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`I.
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`its contemporaneously-filed Petition for inter partes review (“IPR”) of claims 1–11
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`of U.S. Patent No. 8,760,454 (“the ’454 patent”) with a pending IPR, Realtek
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`Semiconductor Corp. v. ATI Technologies ULC, No. IPR2023-00922 (“the Realtek
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`IPR”), which the Board instituted on December 1, 2023.
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`The Realtek IPR concerns the same patent and the same claims as TCL’s
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`Petition. TCL’s Petition and supporting expert declaration are substantively
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`identical to the petition and expert declaration submitted in the Realtek IPR. TCL
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`here asserts that the same claims are obvious over the same prior art based on the
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`same arguments supported by the same expert opinions as in the Realtek IPR.
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`TCL agrees to take an “understudy” role if joined. Joinder will not cause
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`any delay in the resolution of the Realtek IPR. Joinder, therefore, is appropriate
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`because it will resolve the same patentability issues of the same patent, it will not
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`delay the schedule that the Board has issued in the Realtek IPR, and the parties in
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`the Realtek IPR will not be prejudiced.
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`II.
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`STATEMENT OF MATERIAL FACTS
`ATI Technologies ULC (“ATI”) purports to own the ʼ454 patent.
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`On May 5, 2022, ATI asserted the ’454 patent against TCL in the following
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`case: Certain Graphics Systems, Components Thereof, and Digital Televisions
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`1
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`
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`TCL’s Motion for Joinder to IPR2023-00922
`PTAB Case No. IPR2024-00366
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`Containing The Same, Inv. No. 337-TA-1318 (U.S. International Trade
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`Commission).
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`On May 6, 2022, ATI asserted the ’454 patent against TCL in the following
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`case: Advanced Micro Devices, Inc. et al. v. TCL Industries Holdings Co., LTD., et
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`al., Case No. 2:22-cv-00134 (E.D. Tex.).
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`On May 19, 2023, Realtek filed the Realtek IPR, requesting cancellation of
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`claims 1–11 of the ʼ454 patent. IPR2023-0922, Paper 1.
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`On December 1, 2023, the Board instituted the Realtek IPR and entered a
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`Scheduling Order. IPR2023-0922, Papers 10 and 11.
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`Along with this Motion for Joinder, TCL simultaneously files the Petition,
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`which argues, among other things, that the same claims of the ’454 patent are
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`obvious based on the same grounds and for the same reasons as set forth in the
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`Realtek IPR petition.
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`The grounds proposed in the Petition are the same as those described in the
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`Realtek IPR petition—the Petition does not contain any additional arguments or
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`evidence in support of the unpatentability of claims 1–11 of the ’454 patent.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`Joinder is timely
`A.
`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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`2
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`TCL’s Motion for Joinder to IPR2023-00922
`PTAB Case No. IPR2024-00366
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`The Kyocera factors support joinder
`B.
`The Board has discretion to join this IPR with the Realtek IPR. See 35
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`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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`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
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`at 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 TCL 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 grounds
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`and relies on the same evidence for unpatentability presented in the Realtek IPR.
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`Specifically, the Petition and the Realtek IPR petition rely on the same prior art
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`3
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`
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`TCL’s Motion for Joinder to IPR2023-00922
`PTAB Case No. IPR2024-00366
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`references, alone and/or in the same combination of references. Moreover, the
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`Petition and the Realtek IPR petition rely on the same expert opinions in the
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`declaration of Dr. Pfister. The arguments in both petitions are identical; there are
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`no new grounds of unpatentability asserted in the Petition.
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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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`By permitting joinder of TCL to the Realtek IPR in an “understudy” role, the
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`Board will allow TCL to challenge these asserted claims while not creating any
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`additional burdens on ATI or the Board. TCL warrants that this result is both fair
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`and efficient, and therefore appropriate. See also Petition (Paper 1), § VIII
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`(discussing General Plastic factors and other related frameworks relevant to
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`institution).
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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 Realtek IPR. TCL will not
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`request any alterations to the trial schedule that the Board issued in the Realtek IPR
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`(IPR2023-00922, Paper 11) on the basis of joinder, leaving that schedule
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`4
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`unchanged.
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`TCL’s Motion for Joinder to IPR2023-00922
`PTAB Case No. IPR2024-00366
`
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`TCL also agrees to adopt a secondary, “understudy” role in the Realtek IPR,
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`if joined. See, e.g., Garmin Int’l, Inc. v. Philips North Am. LLC, IPR2020-00910,
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`Paper 8 at 45, 47–50 (PTAB Nov. 19, 2020) (granting joinder where petitioners
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`agreed to accept an “understudy” role); STMicroelectronics, IPR2018-00436,
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`Paper 7 at 5 (similar). TCL will assume a primary role only if the Realtek IPR
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`petitioner ceases its participation in that proceeding. TCL’s agreement to take an
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`“understudy” role removes any potential complication or delay caused by joinder,
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`while providing the parties an opportunity to address all issues that may arise. See,
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`e.g., Mylan Pharms. Inc. v. Novartis AG, IPR2014-00550, Paper 38 at 5-6 (PTAB
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`Apr. 10, 2015). Thus, joinder will not affect the cost of the Realtek IPR for ATI,
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`the Realtek IPR petitioner, and the Board.
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`Joinder will not complicate briefing and discovery (factor 4)
`3.
`This factor favors joinder. If joinder is granted, TCL agrees to take on an
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`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, Realtek will file briefing and conduct discovery. TCL will make filings and
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`conduct discovery only if Realtek exits the proceeding.
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`IV. CONCLUSION
`For the foregoing reasons, TCL respectfully requests that the Board institute
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`5
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`
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`TCL’s Motion for Joinder to IPR2023-00922
`PTAB Case No. IPR2024-00366
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`its Petition for Inter Partes Review of U.S. Patent No. 8,760,454 and join this
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`proceeding with the Realtek IPR.
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`Dated: January 2, 2024
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`PERKINS COIE LLP
`11452 El Camino Real, Suite 300
`San Diego, California 92130-2080
`(858) 720-5700
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`Respectfully submitted,
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` /John Schnurer/
`Lead Counsel
`John Schnurer, Reg. No. 52,196
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`Back-up Counsel
`Yun (Louise) Lu, Reg. No. 72,766
`Kevin J. Patariu, Reg. No. 63,210
`Kyle R. Canavera, Reg. No. 72,167
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`Attorneys for PETITIONER
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`6
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`TCL’s Motion for Joinder to IPR2023-00922
`PTAB Case No. IPR2024-00366
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of this TCL’S MOTION
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`FOR JOINDER TO IPR2023-00922 was served by FedEx® mail delivery service
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`in its entirety on the date indicated below on Patent Owner at the correspondence
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`address of record at the U.S. Patent and Trademark Office as follows:
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`Volpe Koenig - AMD
`30 South 17th Street -18th Floor
`Philadelphia, PA 191035
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` courtesy copy of this Motion was also served via electronic mail on Patent
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` A
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`Owner’s counsel of record in a related district court litigation:
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`Adam S. Rizk
`MINTZ, LEVIN, COHN, FERRIS, GLOSKY, AND POPEO PC
`One Financial Center Boston, MA 02111
`Email: AMD-ITC@mintz.com
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`1
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`Dated: January 2, 2024
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`PERKINS COIE LLP
`11452 El Camino Real, Ste 300
`San Diego, California 92130-2080
`858.720.5700 (phone)
`858.720.5799 (fax)
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`TCL’s Motion for Joinder to IPR2023-00922
`PTAB Case No. IPR2024-00366
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`
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`Respectfully submitted,
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` /John Schnurer/
`Lead Counsel
`John Schnurer, Reg. No. 52,196
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`Back-up Counsel
`Yun (Louise) Lu, Reg. No. 72,766
`Kevin J. Patariu, Reg. No. 63,210
`Kyle R. Canavera, Reg. No. 72,167
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`Attorneys for PETITIONER
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`2
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