UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TEXAS INSTRUMENTS INCORPORATED,
`Petitioner,
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`v.
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`GREENTHREAD LLC,
`Patent Owner.
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`IPR2024-00771
`Patent No. 8,421,195
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`PETITIONER’S MOTION FOR JOINDER UNDER
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`35 U.S.C. § 315(c), 37 C.F.R. § 42.22, AND § 42.122(b)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TEXAS INSTRUMENTS INCORPORATED,
`Petitioner,
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`v.
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`GREENTHREAD LLC,
`Patent Owner.
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`IPR2024-00771
`Patent No. 8,421,195
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`PETITIONER’S MOTION FOR JOINDER UNDER
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`35 U.S.C. § 315(c), 37 C.F.R. § 42.22, AND § 42.122(b)
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`I.
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`Proceeding No. IPR2024-00771
`Attorney Docket No: 12189-0084IP1
`STATEMENT OF PRECISE RELIEF REQUESTED
`Texas Instruments Incorporated (“Petitioner” or “TI”) respectfully submits
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`this Motion for Joinder concurrently with a Petition (“TI Petition”) for inter partes
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`review of U.S. Patent No. 8,421,195 (“the ’195 Patent”).
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`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b), TI
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`requests institution of an inter partes review and joinder with IPR2024-00017
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`(Cirrus Logic, Inc.; Omnivision Technologies, Inc.; and Ams Sensors Usa Inc. v.
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`Greenthread LLC “Cirrus IPR”), institution decision expected on or before May 7,
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`2024. Cirrus et al. does not oppose TI’s joinder to the Cirrus IPR. TI’s petition is
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`substantively the same as the Cirrus IPR petition. It challenges the same claims, on
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`the same grounds, relies on the same prior art, and includes the exact same
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`substantive arguments as the Cirrus IPR1 and therefore would create no additional
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`burden for the Board, the Cirrus IPR Petitioner, or Patent Owner if joined. Joinder
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`would therefore lead to an efficient resolution of the validity of the ’195 patent.
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`TI is currently named as a defendant in Greenthread, LLC v Texas Instruments
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`Incorporated in the Eastern District of Texas, Civil Action No. 2-23-cv-00157 filed
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`1 The TI Petition includes different arguments regarding discretionary denial under
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`Fintiv based on the specific facts relevant to TI, including the Sotera stipulation
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`sent to the patent owner by TI.
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`1
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`Proceeding No. IPR2024-00771
`Attorney Docket No: 12189-0084IP1
`April 6, 2023. TI has been accused of infringing the ’195 patent. TI has not
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`previously filed a petition for IPR challenging the validity of the ’195 patent.
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`TI stipulates that if joinder is granted, it will act as an “understudy” and will
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`not assume an active role unless the Cirrus IPR Petitioner ceases to participate in the
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`proceeding. The Cirrus IPR Petitioner will maintain the lead role in the proceeding
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`so long as it remains in the proceeding. These limitations will avoid lengthy and
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`duplicative briefing. TI also will not seek additional depositions or deposition time.
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`Joinder will not impact the trial schedule because TI agrees to be bound by the
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`scheduling order in the Cirrus IPR proceeding.
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`In fact, joinder will help efficiently resolve the disputes among the parties. By
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`joinder, a single Board decision may dispose of the issues raised in the Cirrus IPR
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`for all interested parties.
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`Joinder will not unduly prejudice any party. Because joinder will not add any
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`new substantive issues, delay the schedule, burden deponents, or needlessly increase
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`filings, any additional costs on Patent Owner will be minimal. On the other hand,
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`denial of joinder would prejudice TI. TI’s interests may not be adequately protected
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`in the Cirrus IPR, particularly if the Cirrus IPR Petitioner settles with Patent Owner
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`and ceases to participate. TI should be allowed to join in a proceeding affecting a
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`patent asserted against it.
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`Given the similarities of the proceedings, the lack of undue prejudice to Patent
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`2
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`Proceeding No. IPR2024-00771
`Attorney Docket No: 12189-0084IP1
`Owner, and the potential benefit to the public and to the Board that would accrue by
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`TI’s cooperative participation, in an understudy role, in the Cirrus IPR in the event
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`that the Cirrus IPR Petitioner’s participation terminates, the Board should institute
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`IPR and grant TI’s Motion for Joinder.
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`II. ARGUMENT
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`A. Legal Standards and Applicable Rules
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`A petitioner may request joinder, without prior authorization, up to one
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`month after the institution date of the proceeding to which joinder is requested. 37
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`C.F.R. § 42.122(b); Taiwan Semiconductor Mfg. Co., Ltd. v. Zond LLC, IPR2014-
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`00781 and IPR2014-00782, Paper 5 at 3 (PTAB May 29, 2014).
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`The Board has discretion to grant a motion for joinder of a petitioner for
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`inter partes review to another inter partes review proceeding. See 35 U.S.C. §
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`315(c). In determining whether to exercise its discretion to grant a motion for
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`joinder, the Board considers: (1) reasons why joinder is appropriate; (2) any new
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`grounds of unpatentability asserted in the petition; (3) what impact (if any) joinder
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`would have on the trial schedule for the existing review; and (4) specifically how
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`briefing and discovery may be simplified. See Dell, Inc. v. Network-1 Security
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`Solutions, Inc., IPR201300385, Paper 17 at 3 (July 29, 2013).
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`B.
`TI’s Motion for Joinder is Timely
`Joinder may be requested “no later than one month after the institution date
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`3
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`Proceeding No. IPR2024-00771
`Attorney Docket No: 12189-0084IP1
`of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b).
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`The Cirrus IPR is expected to be instituted on or before May 7, 2024.
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`IPR2024-00017. TI’s current motion is timely as it is being filed prior to the
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`institution date.
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`C.
`Petitioner Cirrus Does Not Oppose Joinder
`TI has conferred with Petitioner Cirrus, and Cirrus does not oppose TI’s
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`joinder to the Cirrus IPR.
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`D. The Four Factors Favor Joinder
`Each of the four factors weighs in favor of granting TI’s Motion for Joinder.
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`TI’s Petition is substantively identical to the petition in the Cirrus IPR; it presents
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`no new grounds of unpatentability. Joinder will have no impact on the pending
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`schedule of the Cirrus IPR. Moreover, the briefing and discovery will be
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`simplified by resolving all issues in a single proceeding.
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`1.
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`Joinder of TI Is Appropriate Because It Will Promote an
`Efficient Determination of the Validity of the ’195 Patent
`Without Prejudice to Any Party
`TI seeks to join the Cirrus IPR in order to ensure that an accused infringer
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`with an active interest in the proceeding remains a party to this IPR if the Cirrus
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`IPR Petitioner’s participation is terminated prior to completion. Thus, joining TI
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`to the Cirrus IPR is the most practical way to secure the just, speedy, and
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`inexpensive resolution of the challenge to the ’195 patent. See 37 C.F.R. §
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`42.1(b).
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`4
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`Proceeding No. IPR2024-00771
`Attorney Docket No: 12189-0084IP1
`If TI is joined as a party, the validity of the grounds raised in the Cirrus IPR
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`can be determined in a single proceeding. Joinder is also appropriate because TI’s
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`petition challenges the validity of the same claims of the ’195 patent on identical
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`grounds to those in the Cirrus IPR. There are no substantive differences between
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`TI’s and the Cirrus IPR Petitioner’s Petition, IPR2024-00017, Paper 1 (October
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`18, 2023). TI also relies on the same supporting evidence in its Petition as is relied
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`on in the Cirrus IPR A consolidated proceeding, including TI and the Cirrus IPR
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`Petitioner, will therefore be more efficient and less wasteful, as only a single trial
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`on these common grounds would be required. See, e.g., Oracle America Inc. v.
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`Realtime Data LLC, IPR2016-01672, Paper 13 at 7 (PTAB Mar. 7, 2017) (noting
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`that “joining Oracle’s identical challenges to those in the 1002 IPR will lead to
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`greater efficiency while reducing the resources necessary from both Realtime and
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`the Board”). The Board “routinely grants motions for joinder where the party
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`seeking joinder introduces identical arguments and the same grounds raised in the
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`existing proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016- 00962,
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`Paper 12 at 9 (PTAB Aug. 24, 2016) (internal quotations and citations omitted).
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`Joining TI as a party to the Cirrus IPR would promote the public interest
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`relating to the unpatentability of the ’195 patent and not cause any undue prejudice
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`to Patent Owner or the Cirrus IPR Petitioner. The Patent Owner must respond to
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`the common invalidity grounds identified in the Cirrus and TI’s Petitions
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`5
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`Proceeding No. IPR2024-00771
`Attorney Docket No: 12189-0084IP1
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`regardless of joinder.
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`2.
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`TI’s Petition Does Not Raise Any New Grounds of
`Unpatentability and Therefore Does Not Add Additional
`Complexity to the Grounds in the Cirrus IPR Petitioner’s
`Petition
`TI’s Petition challenges the validity of the ’195 patent on identical grounds
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`to those in the Cirrus IPR. See IPR2024-00017, Paper 1 (October 18, 2023). TI’s
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`supporting materials―including its supporting expert declaration, exhibits, and
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`exhibit numbering―are identical to those presented in the Cirrus IPR. See supra
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`n.2. Accordingly, no new grounds are being introduced. See Sony Corp. v.
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`Memory Integrity, LLC., IPR2015-01353, Paper No. 11 at 5-6 (PTAB Oct. 5,
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`2015).
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`Therefore, consolidation of this proceeding with Cirrus’ via joinder of TI’s
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`Petition will not raise any new issues of unpatentability and will not impose any
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`additional burden on the Board or Patent Owner, or add additional complexity to
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`the case.
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`Joinder Will Not Affect the Schedule in the Cirrus IPR
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`3.
`Given that the Board has not yet instituted the Cirrus IPR, joinder of TI
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`would not affect the schedule in any potential forthcoming trial. TI’s participation
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`should result in no changes to the schedule.
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`TI agrees to adhere to all applicable deadlines set forth in the Cirrus IPR
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`Scheduling Order, if instituted.
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`6
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`4.
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`Proceeding No. IPR2024-00771
`Attorney Docket No: 12189-0084IP1
`Joinder Will Simplify Briefing Because TI Has Agreed to
`Consolidated Filings and an Understudy Role if the Cirrus
`Petitioner Remains
`To further prevent joinder from imposing any burden on the Cirrus IPR
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`Petitioner, Patent Owner, or the Board and to further ensure that there are no
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`changes in the potential trial schedule, TI has agreed, as long as the Cirrus IPR
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`Petitioner remains a party to the Cirrus IPR, to take an understudy role, which will
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`simplify briefing and discovery. In this role, TI agrees to the following conditions:
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`(a) TI shall not make any substantive filing and shall be bound by the
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`filings of the Cirrus IPR Petitioner, unless a filing concerns termination and
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`settlement, or issues solely involving TI;
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`(b) TI shall not present any argument or make any presentation at oral
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`hearing unless an issue solely involves TI, or when addressing Board-approved
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`motions that do not affect the Cirrus IPR Petitioner, or its respective position;
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`(c) TI shall not seek to cross-examine or defend the cross-examination
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`of any witness, unless the topic of cross-examination concerns issues solely
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`involving TI;
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`(d) TI shall not seek discovery from Patent Owner on issues not solely
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`involving TI;
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`(e) TI will not rely on expert testimony beyond that submitted by the
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`Cirrus IPR Petitioner unless the Cirrus IPR Petitioner is terminated from the case.
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`7
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`Proceeding No. IPR2024-00771
`Attorney Docket No: 12189-0084IP1
`If the Cirrus IPR Petitioner is not terminated from the case, TI agrees to rely entirely
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`on, and be bound by, the expert declarations and depositions in the Cirrus IPR.
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`Unless and until the current petitioner in IPR2024-00017 ceases to participate in
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`the instituted Cirrus IPR, TI will not assume an active role.
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`Accordingly, due to TI taking only an “understudy” role, Patent Owner and
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`the Cirrus IPR Petitioner will only need to respond to one principal set of papers,
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`will not require additional time to address additional arguments raised by TI, and
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`can thus proceed with the existing trial schedule. These steps will minimize or
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`eliminate any potential complications or delay that could potentially result from
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`joinder. See Sony, Paper No. 11 at 6-7 (granting motion because “joinder would
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`increase efficiency by eliminating duplicative filings and discovery, and would
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`reduce costs and burdens on the parties as well as the Board” where second
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`petitioner agreed to “understudy” role). TI will also abide by any additional
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`conditions the Board deems appropriate for an “understudy” role.
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`5.
`Joinder Will Result in No Prejudice to Patent Owner
`As noted above, TI’s joining of the Cirrus IPR proceeding should not result
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`in any prejudice to Patent Owner. No additional grounds or arguments are being
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`introduced, no new evidence or issues are being added, and no additional discovery
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`or briefing or oral argument should be necessary as a result of TI’s joinder. Thus,
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`Patent Owner would not need to expend any additional resources beyond those
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`8
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`Proceeding No. IPR2024-00771
`Attorney Docket No: 12189-0084IP1
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`required in the current Cirrus IPR.
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`III.
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`INSTITUTION IS APPROPRIATE UNDER GENERAL PLASTIC
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`General Plastic does not apply here because TI has not previously
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`challenged the ’195 patent and seeks to join the Cirrus IPR in an understudy role.
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`See General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-
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`01357, Paper 19 at 15-19 (PTAB Sept. 6, 2017); Apple Inc. v. Uniloc 2017 LLC,
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`IPR2020-00224, Paper 10 at 4-5 (PTAB Apr. 6, 2020).
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`Factor 1: Under General Plastic, factor 1 considers “whether the same
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`petitioner previously filed a petition directed to the same claims of the same
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`patent.” General Plastic at 16. Here, TI has not previously filed a petition against
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`the ’195 patent.
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`TI and the Cirrus IPR Petitioner are separate, unrelated petitioners, and are
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`not similarly situated for purposes of Factor 1. This factor weighs in favor of
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`institution and against discretionary denial.
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`Factors 2, 4 and 5: As to the timing examined in these factors, TI did not
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`previously file a first petition prior to its current petition, and while TI became
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`aware of the prior art references in the Cirrus IPR, it made no serial attack on the
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`’195 patent and has filed this petition for IPR prior to institution. These factors
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`weigh in favor of institution and against discretionary denial.
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`Factor 3: As TI did not previously file a first petition, this factor weighs in
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`9
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`Proceeding No. IPR2024-00771
`Attorney Docket No: 12189-0084IP1
`favor of institution and against discretionary denial.
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`Factors 6 and 7: As stated above, TI seeks to join the Cirrus IPR and is not
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`raising arguments beyond those raised by the Cirrus petition. These factors thus
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`weigh in favor of institution, as there should be no material impact on the Board’s
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`finite resources or its ability to issue a final determination on the Cirrus petition
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`within one year.
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`IV. CONCLUSION
`For the foregoing reasons, TI respectfully requests that its Petition for Inter
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`partes review of the ’195 Patent be instituted and that TI be joined to the Cirrus IPR
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`proceeding IPR2024-00017.
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`Dated April 10, 2024
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`Respectfully submitted,
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` /Patrick J. Bisenius/
`Joshua A. Griswold, Reg. No. 46,310
`Patrick J. Bisenius, Reg. No. 63,893
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`T: 214-292-4034
`F: 877-769-7945
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`Attorneys for Petitioner
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`10
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`Proceeding No. IPR2024-00771
`Attorney Docket No: 12189-0084IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on April 10,
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`2024, a complete and entire copy of this Petitioner’s Motion for Joinder was
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`provided by Express Mail, to the Patent Owner, by serving the correspondence
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`address of record as follows:
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`Munck Wilson Mandala LLP
`P.O. Drawer 800889
`Dallas, TX 75380
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`/Hoi Cheung/
`Hoi Cheung
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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