January 30, 2017
`
`Amkor Technology, Inc.
`Justin F. Boyce, lead counsel
`Robert W. Ashbrook Jr., back-up counsel
`Dechert LLP
`2440 W. El Camino Real, Suite 700
`Mountain View, CA 94040-1499
`telephone 650-813-4853
`patents@dechert.com
`justin.boyce@dechert.com
`robert.ashbrook@dechert.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`
`
`
`
`SYNAPTICS INCORPORATED,
`Petitioner,
`
`v.
`
`AMKOR TECHNOLOGY, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2017-00085
`Patent 7,358,174
`____________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`2.
`
`INTRODUCTION .......................................................................................... 1
`THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 325(D) ....... 1
`A.
`Timeline ................................................................................................ 2
`B.
`Petitioner’s Rationale for Filing This Follow-On Petition................... 3
`C.
`The Petition Should Be Denied under § 325(d). .................................. 5
`1.
`The Instant IPR Will Tax the Finite Resources of the
`Board. ......................................................................................... 8
`The Instant IPR Will Jeopardize the Board’s Ability to
`Secure the Just Resolution of IPR2016-00863 and -00865
`Within One Year. ....................................................................... 8
`Petitioner Previously Filed Three Petitions Directed to
`the Same Claims of the ‘174 Patent. ........................................ 11
`Petitioner Knew of the Fay Patent When It Filed the
`Petition in IPR2016-00863. ..................................................... 13
`Petitioner Knew of and Used Patent Owner’s Preliminary
`Response and the Board’s Institution Decision in
`IPR2016-00863 in Preparing the Instant Petition. ................... 13
`Petitioner Waited More Than Six Months After Learning
`about Fay to File the Instant Petition. ...................................... 16
`Petitioner Provides No Good Reason for Its Delay. ................ 16
`The Instant Petition Presents the Same Art and
`Arguments as the IPR2016-00863 Petition ............................. 20
`The Instant Petition Is Harassing to Patent Owner. ................. 23
`9.
`III. THE PETITIONER’S STATED OBVIOUSNESS GROUND IS NOT
`PERMITTED UNDER 35 U.S.C. § 311(B). ................................................ 24
`IV. TECHNOLOGY BACKGROUND AND PROBLEMS SOLVED BY
`THE ‘174 PATENT ...................................................................................... 25
`V. OVERVIEW OF FAY .................................................................................. 26
`VI. PERSON OF ORDINARY SKILL IN THE ART (“POSA”) ...................... 27
`VII. CLAIM CONSTRUCTION ......................................................................... 27
`A.
`“Barrier Layer” ................................................................................... 28
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`8.
`
`
`
`i
`
`

`

`
`
`b.
`
`c.
`
`d.
`
`“Pad”................................................................................................... 30
`B.
`VIII. THERE IS NOT A REASONABLE LIKELIHOOD THAT
`PETITIONER WILL PREVAIL IN AT LEAST ONE CLAIM .................. 32
`A.
`Claims 1, 18, 23, and 26 (and Their Dependent Claims) Are
`Patentable Because a POSA Would Understand that Fay Has
`No Exposed Metal Pad. ...................................................................... 32
`1.
`Professor Ivey Could Not Tell Where the Pad Was in
`Fay’s Figure7. .......................................................................... 33
`Fay’s Figure 21 is Only a “Schematic Drawing”
`Disclosing a Method. ............................................................... 34
`Fay’s Figure 8 Discloses an Actual Structure .......................... 37
`A POSA Would Know that Fay Figure 21 Should Show
`Layer 207 Extending Up Onto Layer 205. .............................. 37
`A POSA Would Know that the Pad in Fay Figure 21
`Would Be Entirely Covered, and Not Exposed. ...................... 39
`a.
`A POSA Would Know that Pads Were Normally
`Completely Covered. ..................................................... 40
`Fay’s Use of the Term “Encapsulation Layer”
`Indicates that the Pad Is Not Exposed. .......................... 42
`Fay’s Mention of a Stress Compensation Layer
`Would Lead a POSA to Believe the Pads Were
`Not Exposed ................................................................... 42
`Fay’s Failure to Discuss Any Benefits of an
`Exposed Pad Would Tell a POSA that the Pad Was
`Covered. ......................................................................... 44
`Summary: Claims 1, 18, 23, 26, and Their Dependent
`Claims Patentable Because the Pad in Fay Figure 21
`Would Be Entirely Covered, and Not Exposed. ...................... 47
`B. All Challenged Claims Are Patentable Because Fay Has No
`“Barrier” Layer. .................................................................................. 48
`C. Dependent Claim 4 Is Patentable. ...................................................... 49
`1.
`Only a Plan-View Could Reveal Details of the Type
`Required in Claim 4, and Fay Shows No Plan Views ............. 52
`
`2.
`
`3.
`4.
`
`5.
`
`6.
`
`
`
`ii
`
`

`

`
`
`
`
`2.
`
`2.
`
`3.
`4.
`
`Fay’s Cross-Sectional Views Do Not Reveal Features As
`Required by Claim 4 ................................................................ 56
`D. Dependent Claims 9–12 and 28–31 Are Patentable. .......................... 58
`1.
`Petitioner Relied upon Professor Ivey’s Opinions about
`the Shape of Pads 205. ............................................................. 59
`Professor Ivey Then Changed His Original Opinions
`about the Shape of Pads 205. ................................................... 60
`Fay Does Not Disclose Professor Ivey’s L-Shaped Pads. ....... 64
`Instead, a POSA Would Know that Fay Discloses
`Conventional Pads with a Conventional Centered UBMs. ...... 66
`Summary: Dependent Claims 9–12 and 28–31 Are
`Patentable. ................................................................................ 70
`
`5.
`
`iii
`
`

`

`
`
`Exhibit
`No.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`TABLE OF EXHIBITS
`
`Description
`
`IPR2016-00863 Docket (from PTAB E2E)
`
`IPR2016-00865 Docket (from PTAB E2E)
`
`IPR2016-00866 Docket (from PTAB E2E)
`
`IPR2016-00863 Institution-in-Part Decision (Paper 27)
`
`IPR2016-00865 Institution-in-Part Decision (Paper 28)
`
`IPR2016-00863 Scheduling Order (Paper 28)
`
`2007
`IPR2016-00865 Scheduling Order (Paper 29)
`2008 Declaration of Leonard W. Schaper, Dr. Engr. Sci., Ex. 2001 in
`IPR2016-00863
`2009 Declaration of Leonard W. Schaper, Dr. Engr. Sci., Ex. 2001 in
`IPR2016-00865
`
`2010
`
`Supplemental Declaration of Leonard W. Schaper, Dr. Engr. Sci., Ex.
`2019 in IPR2016-00865
`
`2011 Curriculum Vitae of Leonard W. Schaper, Dr. Engr. Sci.
`
`2012
`
`M. Datta et al., “`Electrochemical Fabrication of Mechanically Robust
`PbSn C4 Interconnections,” 142 J. Electrochemical Society 11 (Nov.
`1995)
`
`2013 US Patent 5,162,257 ( “Yung”);
`
`2014
`
`International Publication WO 1996/30933 (by the same inventor,
`Mis).
`
`2015–
`2024
`
`Not used, so that Exhibit Nos. 2025-2033 will correspond to the
`exhibit numbers in IPR2016-00863
`
`iv
`
`

`

`
`
`2025
`
`2026
`
`2027
`
`Figure drawn by Professor Peter Ivey in ¶ 267 of Ex. 1003, and
`annotated by the professor during his deposition on December 13,
`2016, in IPR2016-00863
`
`Figure drawn by Professor Peter Ivey in ¶ 265 of Ex. 1003, and
`annotated by the professor during his deposition on December 13,
`2016 in IPR2016-00863 (separate annotations from Ex. 2027)
`
`Figure drawn by Professor Peter Ivey in ¶ 265 of Ex. 1003, and
`annotated by the professor during his deposition on December 13,
`2016 in IPR2016-00863 (separate annotations from Ex. 2026)
`
`2028
`
`not used
`
`2029
`
`2030
`
`2031
`
`2032
`
`2033
`
`Supplemental Declaration of Leonard W. Schaper, Dr. Engr. Sci., in
`IPR2016-00863
`
`Transcript of the deposition of Professor Peter Ivey in IPR2016-00863
`(December 13, 2016) with Certificate in the Form of an Affidavit by
`court reporter Elizabeth Ray Rockett
`
`Tummala, Rao R. Fundamentals of Microsystems Packaging
`(McGraw Hill 2001), chapter 10 pp. 398-418
`
`Simon P.C. Law et al., “Process Issues on Peripheral to Area-Array
`Bond Pad Redistribution,” 8th International Symposium on Advanced
`Packaging Materials (IEEE 2002)
`
`John H. Lau, “Critical Issues of Wafer Level Chip Scale Package
`(WLSCP) with Emphasis on Cost Analysis and Solder Joint
`Reliability,” 25 IEEE Transactions on Electronics Packaging
`Manufacturing no. 1 (Jan. 2002)
`
`v
`
`

`

`
`
`I.
`
`
`INTRODUCTION
`
`This is the fourth petition filed by Petitioner against the `174 Patent, and all
`
`three earlier petitions relied on Fay (Ex. 1006), which is the focus of the instant
`
`Petition. Exs. 2001-2005. The petition in IPR2016-00863 also centers on Fay, and
`
`it was granted-in-part. Ex. 2004. The petition in IPR2016-00865 cited Fay, and it
`
`was also granted-in-part. Ex. 2005. The Petition in IPR2016-00866 cited Fay, but
`
`it was wholly denied. Ex. 2003.
`
`
`
`First, the Petition should be denied under 35 U.S.C. § 325(d) because it is
`
`merely a follow-on to the petition in IPR2016-00863. It presents the same prior art
`
`and arguments, and it constitutes little more than a plea for reconsideration of the
`
`institution decision in IPR2016-00863. Ex. 2004. Second, for the same reasons
`
`demonstrated in the record of IPR2016-00863, the present Petition does not
`
`demonstrate a reasonable likelihood of prevailing in showing any challenged claim
`
`to be unpatentable.
`
`II. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 325(d)
`
`Petitioner wants a “do over” of its petition in IPR2016-00863. As Petitioner
`
`admits, the current Petition makes the same arguments and relies on the same prior
`
`art and the same declarant against the same claims of the same patent as IPR2016-
`
`00863. See Paper 4 (Joinder motion) at 6. If 35 U.S.C. § 325(d) is to ever apply to
`
`1
`
`

`

`
`
`a petition, this is the one.1
`
`A. Timeline
`
`
`
`On October 9, 2015, Amkor sued Petitioner for infringement of the `174
`
`Patent. Ex. 1032 at 1.
`
`
`
`
`
`On October 15, 2015, Petitioner was served the complaint. Ex. 1031.
`
`On April 8, 2016, Petitioner filed three petitions for IPR review of the `174
`
`Patent based on prior art including Fay (Ex. 1006). Exs. 2001 (IPR2016-00863
`
`docket), 2002 (IPR2016-00865 docket), 2003 (IPR2016-00866 docket).
`
`On July 13, 2016, Patent Owner filed a preliminary response in all three
`
`IPRs, including Paper No. 6 in IPR2016-00863 (“POPR”). Id.
`
`
`
`On October 12, 2016, the Board instituted-in-part both IPR2016-00863 and
`
`IPR2016-00865. Exs. 2004, 2005. The Board denied institution in IPR2016-
`
`00866. Ex. 2003.
`
`
`
`
`
`On October 14, 2016, Patent Owner filed its petition in this IPR. Paper 1.
`
`On October 27, 2016, Patent Owner filed a motion for joinder with
`
`IPR2016-00863. Papers 3 & 4.
`
`
`1
`The Board could use the same rationale to deny this petition under 35 U.S.C.
`
`§ 315(d).
`
`2
`
`

`

`
`
`
`
`During a conference call on November 17, 2016, the Board denied
`
`Petitioner’s request to accelerate this preliminary response.
`
`Petitioner’s Rationale for Filing This Follow-On Petition
`
`B.
`In considering questions under § 325(d), the Board asks how the petitioner
`
`
`
`justifies the need for filing serial petitions. Medtronic, Inc. v. Nuvasive, Inc., IPR
`
`2014-00487, slip op. at 6 (PTAB Sep. 11, 2014) (Paper 8) (Informative Opinion)
`
`(finding that petitioner offered no “specific reasoning” for its argument that certain
`
`grounds were “not redundant” relative to an earlier petition).
`
`
`
`Here, Petitioner offers the following as a purported justification:
`
`This petition relies on the same reference as IPR2016-00863, and
`addresses issues raised by Amkor. This petition also provides
`additional explanation, in light of the Board’s institution decision
`in IPR2016-00863, as to why Claim 4 would have been obvious.
`
`Petition at [second2] p. 1. Neither justification is persuasive.
`
`
`
`The “issues raised by Amkor” are those presented in the Preliminary
`
`Response in IPR2016-00863, which distinguished Fay over the challenged claims.
`
`Petitioner did not need to file a new Petition in order to reply. Petitioner could
`
`
`2
`The present Petition has two pages labeled as page 1. The first starts the
`
`mandatory notices, and the second starts the introduction.
`
`3
`
`

`

`
`
`have asked the Board to file a reply to the POPR in IPR2016-00863,3 and
`
`Petitioner still has an opportunity to file a reply to the POPR. Ex. 2006 (Due Date
`
`2). Petitioner is trying to expand its arguments in IPR2016-00863, not only as to
`
`scope (e.g., the present Petition asserts new grounds not asserted in IPR2016-
`
`00863), but also as to word-count limits (14,000 words for a new petition, versus
`
`5,600 for a reply).
`
`
`
`The present Petition is crafted as a reply to the POPR in IPR2016-00863
`
`with new arguments and evidence not presented in IPR2016-00863, including a
`
`260-page declaration by Professor Ivey, and several new exhibits. Exs. 1003, and
`
`1033-1038. During his deposition in IPR2016-00863, Professor Ivey tried to put
`
`his new declaration—first submitted in IPR2017-000865—into evidence in
`
`IPR2016-00863 by reading from it. Ex. 2030 at 167:16–169:21 (upon redirect
`
`examination, Petitioner leading the witness to read from Exhibit 2023, a
`
`highlighted copy of his declaration in IPR2017-00085); id., 8:03–18:18
`
`(establishing that Professor Ivey brought the highlighted copy to his deposition in
`
`IPR2016-00863). But the proper procedure for supplementing evidence in an IPR
`
`is via procedures outlined under 37 C.F.R. § 42.123, not by filing a new petition.
`
`
`3
`Petitioner filed a reply to the preliminary response in IPR2016-00863
`
`concerning the real party in interest.
`
`4
`
`

`

`
`
`The instant petition is an improper attempt to sidestep the Board’s rules for
`
`submitting supplemental evidence.
`
`
`
`Petitioner’s second justification for this Petition is to “provide additional
`
`explanation” in light of the Board’s decision declining to institute review of claim
`
`4 in IPR2016-00863 based on a ground of obviousness over Fay in light of other
`
`references. Petition at 1; Ex. 2004, p. 29. The proper way to challenge an
`
`institution decision is by filing a motion for rehearing, not by filing a new petition.
`
`See Butamax Advance Biofuels LLC v. Gevo, Inc., IPR2014-00581, slip op. at 9
`
`(PTAB Oct. 14, 2014) (Paper 8) (“Furthermore, [the petitioner’s] proposed ground
`
`is effectively an attempt to request rehearing of a prior decision instituting trial,
`
`outside the time period provided in our Rules for such requests.”); Microsoft Corp.
`
`v. Enfish, LLC, IPR2014-00577, slip op. at 8 (PTAB Sep. 29, 2014) (Paper 13)
`
`(denying a second petition that was “essentially a rehearing request.”).
`
`C. The Petition Should Be Denied under § 325(d).
`
`
`
`This is Petitioner’s fourth IPR petition against the ‘174 patent. It is also a
`
`“do-over” of the petition in IPR2016-00863—an attempted second bite at the apple
`
`following Patent Owner’s preliminary responses and the Board’s institution
`
`decisions in the prior IPRs. The presently asserted prior art reference—Fay (Ex.
`
`1006)—was asserted in the original IPR requests more than six months earlier.
`
`5
`
`

`

`
`
`
`
`Denial of a petition under 35 U.S.C. § 325(d) may be discretionary, but it is
`
`certainly not arbitrary. The Board may deny institution of a trial under § 325(d)
`
`upon considering whether “the same or substantially the same prior art or
`
`arguments previously were presented to the Office,” and early on the Board
`
`designated seven different opinions—more than any other trial issue—as
`
`“informative” about how it applies § 325(d). The Board has developed a non-
`
`exclusive list of seven factors to be considered:
`
`(1) the finite resources of the Board;
`
`(2) the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review;
`
`(3) whether the same petitioner already previously filed a petition
`directed to the same claims of the same patent;
`
`(4) whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should have
`known about it;
`
`(5) whether at the time of filing of the second petition the petitioner
`already received patent owner’s preliminary response to the first
`petition or received the Board’s decision on whether to institute
`review in the first petition;
`
`(6) the length of time that elapsed between the time petitioner learned
`of the prior art asserted in the second petition and filing of the
`
`6
`
`

`

`
`
`second petition; and
`
`(7) whether petitioner provides adequate explanation for the time
`elapsed between the filings of multiple petitions directed to the
`same claims of the same patent.
`
`NVIDIA Corp. v. Samsung Electronics Co., IPR2016-00134, slip op. at 7 (PTAB
`
`May 4, 2016) (Paper 9). Some panels further consider an eighth factor:
`
`(8) whether the same or substantially the same prior art or arguments
`previously were presented to the Office.
`
`These seven or eight factors are cited in Blue Coat Sys., Inc. v. Finjan, Inc.,
`
`IPR2016-01441, slip op. at 8–9 (PTAB Jan. 23, 2017) (Paper 14), IPR2016-01443
`
`slip op. at 8–9 (PTAB Jan. 23, 2017) (Paper 13); Alarm.com Inc. v. Vivint, Inc.,
`
`IPR2016-01124, slip op. at 6–7 (PTAB Dec. 5, 2016) (Paper 11), IPR2016-01110,
`
`slip op. at 4–5 (PTAB Nov. 28, 2016) (Paper 11), IPR2016-01091, slip op. at 5–6
`
`(PTAB Nov. 23, 2016) (Paper 11), IPR2016-01080, slip op. at 5–6 (PTAB Nov.
`
`17, 2016) (Paper 11); Duncan Parking Techs., Inc. v. IPS Group Inc., IPR2016-
`
`01144, slip op. at 8–9 (PTAB Nov. 21, 2016); and many other decisions.
`
`
`
`The statutory eighth factor (substantially the same art or argument) is not
`
`necessary in order to deny a petition under 35 U.S.C. § 325(d), but it is an
`
`important consideration. NVIDIA Corp., IPR2016-00134, Paper 9 at 12 (“Separate
`
`Reasoning under 35 U.S.C. § 325(d).”); Duncan Parking Techs., IPR2016-01144
`
`Paper 9 at 12 (same); Great W. Cas. Co., IPR2016-00453 Paper 12 at 13 (same).
`
`7
`
`

`

`
`
`
`
`Finally, the Board also considers:
`
`(9) the burden and inequity on the Patent Owner if it is forced to
`defend the same claims twice from attack by the same Petitioner.
`
`ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00454, slip op. at 7 (PTAB
`
`Sep. 25, 2013) (Paper 12) (Informative Opinion).
`
`
`
`In this case, every single one of the factors indicates that the Board should
`
`deny the Petition under 35 U.S.C. § 325(d).
`
`1.
`
`2.
`
`The Instant IPR Will Tax the Finite Resources of the Board.
`
`The Instant IPR Will Jeopardize the Board’s Ability to
`Secure the Just Resolution of IPR2016-00863 and -00865
`Within One Year.
`
`
`
`In IPR2014-00702, the Board denied institution because it “would have been
`
`a waste of time, effort, and resources to re-litigate the same issues” in a second
`
`proceeding, even though the petitioner was different. Unified Patents, Inc. v.
`
`Personal Web Techs., LLC, IPR2014-00702, Paper 13 at 7 (PTAB July 24, 2014)
`
`(Informative Opinion). The Board’s resources are “more fairly expended on initial
`
`petitions, rather than on follow-on petitions.” Alarm.com, IPR2016-01091 Paper
`
`11 at 13, quoted by Blue Coat Sys., IPR2016-01441 Paper 14 at 8–9, IPR2016-
`
`01443 Paper 13 at 15. If trial is instituted in this follow-on IPR—the fourth IPR by
`
`this petitioner on this patent—the trial will require considerably more work from
`
`the Board—regardless whether this IPR is joined with IPR2016-00863 or not—and
`
`8
`
`

`

`
`
`will jeopardize the Board’s ability to fairly resolve this matter within a year.
`
`“Permitting second chances in cases like this one is up the Board’s limited
`
`resources; we must be mindful not only of this proceeding, but of ‘every
`
`proceeding.’” Samsung Elecs. Co. v. Rembrandt Wireless Techs., LP, IPR2015-
`
`00555, slip op. at 8 (PTAB June 19, 2015). Thus, the first two factors weigh
`
`against institution of this IPR.
`
`
`
`If this IPR is instituted but not joined, the Board will obviously have twice
`
`as much work to do: two opinions to write at the institution stage, two oral
`
`hearings to prepare for and conduct, two sets of any procedural and evidentiary
`
`requests to decide, and two final written decisions. This serial request would
`
`create a risk of inconsistent final written decisions.
`
`
`
`Less apparent (to Petitioner, at least) is how even joinder would significantly
`
`increase the burden on the Board. Petitioner did not propose a consolidated
`
`schedule in its motion for joinder of this IPR with IPR2016-00863 (Paper 4), but
`
`instead withheld its proposal until its reply brief (Paper 9). As an initial matter,
`
`Petitioner would require the Board to issue a decision regarding the Petition and
`
`this Preliminary Response in just 29 days. Paper 9 at 3. And Petitioner would
`
`have the Board decide not only the issues that were decided in the IPR2016-00863
`
`institution decision, but also a slew of new issues:
`
`• whether 35 U.S.C § 325(d) applies;
`
`9
`
`

`

`
`
`• whether Fay teaches elements of the challenged claims “inherently,”
`
`(see Petition at 63);
`
`• whether Fay anticipates Claim 4 or renders it obvious;
`
`• the broadest reasonable interpretation of “pad;”
`
`• the broadest reasonable interpretation of “barrier layer” (which the
`
`Board did not construe in IPR2016-00863).
`
`These issues would complicate those already presented in IPR2016-00863.
`
`Petitioner might have given the Board more time to consider these issues, had it
`
`acted promptly to file the instant Petition instead of waiting until after the POPR
`
`and the Board’s Institution Decision in IPR2016-00863. As it happens, however,
`
`granting this Petition will tax the resources of the Board unnecessarily.
`
`
`
`Petitioner’s proposed schedule for a joined case prejudices Patent Owner
`
`and jeopardizes the chance for a just resolution of the issues within one year. For
`
`example, Petitioner would give Patent Owner just 31 days to file a “Supplemental
`
`POR” after the Board provides an institution decision in this IPR. That amount of
`
`time is insufficient for Patent Owner to consider the institution decision, plan for
`
`and take the deposition of Professor Ivey, receive the transcript of that deposition,
`
`obtain the opinion of Patent Owner’s expert witness, and write a Patent Owner
`
`Response. Petitioner says “there is little need for another round of deposition,”
`
`Paper 9 at 4, but the new issues discussed above show otherwise. Moreover, the
`
`10
`
`

`

`
`
`Petitioner submitted a revised, 260-page declaration by Professor Ivey rather than
`
`relying upon his previous declaration in IRP2016-00863, and so Patent Owner
`
`should be entitled to a fair chance to depose him on his new declaration. See Tellit
`
`Wireless Solutions, Inc. v. M2M Solutions, Inc., IPR2016-01081, slip op. at 6–7 &
`
`n.2 (PTAB Sep. 29, 2016) (Paper 11) (“If instituted and joined, Patent Owner
`
`would be permitted to responds to the new arguments in the Petition and cross-
`
`examine Petitioner’s declarant.”).
`
`
`
`These effects are not only in the IPR2016-00863 trial, but also in IPR2016-
`
`00865 trial. The trials overlap not only because the same `174 Patent is involved,
`
`but also because particular claims and claim terms are at issue in both trials (e.g.,
`
`independent Claim 1 and dependent claims 6, 8, 13–15, and 19). The risk of delay
`
`and prejudice to Amkor will accrue in both trials.
`
`3.
`
`Petitioner Previously Filed Three Petitions Directed to the
`Same Claims of the ‘174 Patent.
`
`
`
`The third factor considers whether the same petitioner already filed a
`
`petition directed to the same claims of the same patent, but Petitioner in this case
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`has already filed three such petitions. See Exs. 2001, 2002, 2003. One might
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`wonder why Petitioner now needs a fourth “bite at the apple.” See Great W. Cas.
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`Co., IPR2016-00453 Paper 12 at 12 (denying institution in part because “Petitioner
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`previously filed three petitions challenging the same claims.”); Alarm.com,
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`11
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`IPR2016-01124 Paper 11 at 8, 9 (same).
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`
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`In addition, Petitioner challenged every claim at issue in the instant Petition
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`in at least one, and in many cases two or all three, of Petitioner’s previous
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`petitions. Petitioner challenged each of the independent claims in all three of the
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`previous petitions. Petitioner also challenged dependent Claims 4, 6, 8, 13–15, and
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`19–21 in all three of its previous petitions, and it challenged dependent Claims 9–
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`10 and 12 in two of its previous petitions. Gen. Plastic Indus. Co., IPR2016-01327
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`Paper 16 at 12 (denying institution and stating that “the filing of sequential attacks
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`against the same claims, with the opportunity to morph positions along the way,
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`imposes inequities on [Patent Owner].”)
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`
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`Moreover, it is not merely that Petitioner has already challenged every claim
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`at issue here in one of its prior petitions. In fact, Petitioner already has a trial
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`instituted on every claim at issue—including Claim 4 that was denied institution in
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`IPR2016-00863 (but upon which trial was granted in IPR2016-00865). See
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`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., IPR2014-00436, slip op. at
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`12 (PTAB June 16, 2014) (Paper 17) (Informative Opinion) (“Petitioner already is
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`involved in a trial involving the [same] patent and concerning substantially similar
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`grounds.”); Butamax Advance Biofuels LLC v. Gevo, Inc., IPR2014-00581, slip op.
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`at 10 (PTAB Oct. 14, 2014) (Paper 8) (“Our discretion [to deny the petition under
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`§ 325(d)] is further informed by the fact that Butamax has already succeeded in
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`12
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`

`

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`petitioning the Board to institute inter partes review of [the claim at issue], albeit
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`on grounds other the [the grounds being denied].); Great W. Cas. Co., IPR2016-
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`00453 Paper 12 at 12 (denying institution in part because the Board had already
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`instituted trial on some of the claims asserted). Petitioner does not explain why the
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`Board should conduct multiple trials on all of the challenged claims.
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`4.
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`5.
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`Petitioner Knew of the Fay Patent When It Filed the
`Petition in IPR2016-00863.
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`Petitioner Knew of and Used Patent Owner’s Preliminary
`Response and the Board’s Institution Decision in
`IPR2016-00863 in Preparing the Instant Petition.
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`
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`The fourth and fifth factors deal with what Petitioner knew, and when
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`Petitioner knew it. They both concern whether a petitioner has justified getting a
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`“second bite at the apple.” In this IPR, both weigh heavily against institution.
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`
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`Petitioner freely admits that one of its purposes for delaying the filing of its
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`Petition until nearly the last day permitted under 35 U.S.C. § 315(b) was to address
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`the issues raised in the POPR in IPR2016-00863. Petition at [second] 1. But the
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`Board’s trial rules are set up to secure the just, speedy, and inexpensive resolution
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`of every proceeding, 37 C.F.R. § 42.1(b), and that requires Petitioner to make its
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`best arguments up-front in the first petition, before seeing a patent owner’s
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`preliminary response. Allowing this Petitioner to tailor a follow-on Petition to
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`address the Preliminary Response in IPR2016-00863 defeats the intent of the rules
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`13
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`and is unjust. See Toyota Motor Corp. v. Cellport Sys., Inc., IPR2015-01423, slip
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`op. at 8 (PTAB Oct. 28, 2015) (Paper 7) (noting the opportunity to read a POPR in
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`an earlier IPR was “unjust.”); Great W. Cas. Co., IPR2016-00453 Paper 12 at 12
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`(denying institution in part because “Petitioner’s primary justification for this
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`Petition is expressly admitted as being based on a position taken by Patent Owner
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`in the earlier proceeding.”).
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`
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`Petitioner also freely admits that it used the Board’s institution decision in
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`IPR2016-00863 to draft the instant Petition. Petition at [second] 1 (“This petition
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`also provides additional explanation, in light of the Board’s institution decision in
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`IPR2016-00863, as to why Claim 4 would have been obvious.”) (emphasis added).
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`In ZTE Corp. IPR2013-00454 Paper 12 at 6 (Informative Opinion), the Board
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`explained that a first Board decision:
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`should not act as an entry ticket, and a how-to guide, for
`the same Petitioner . . . for filing a second petition to
`challenge those claims which it unsuccessfully challenged
`in the first petition.
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`Then in Conopco, Inc. v. The Procter & Gamble Co., IPR2014-00506, slip
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`op. at 4–5 (PTAB Dec. 10, 2004) (Paper 25) (Informative Opinion), the Board
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`explained why a petitioner should not be allowed to “correct deficiencies noted” by
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`the Board in an initial institution decision:
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`14
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`

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`That approach would allow petitioners to unveil strategically
`their best prior art and arguments in serial petitions, using our
`decisions on institution as a roadmap, until a ground is advanced
`that results in review—a practice that would tax Board
`resources, and force patent owners to defend multiple attacks.
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`See also Toyota Motor Corp., IPR2015-01423 Paper 7 at 8 (“Such a second bite at
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`the apply wastes the Board’s limited resources and imposes undue burden on the
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`Patent Owner.”).
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`
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`In another case, the Board denied institution of a serial petition because it
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`“uses our prior Decision on Institution to bolster challenges that were advanced,
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`unsuccessfully, in the [petitioner’s earlier] Petition.” Unilever, Inc. v. The Procter
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`& Gamble Co., IPR2014-00506, Paper 17 at 8 (PTAB July 7, 2014) (Informative
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`Opinion); see also LG Elecs. Inc., IPR2016-00986 Paper 12 at 11 (denying
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`institution); Alarm.com, IPR2016-01124 Paper 11 at 11–12 (same); see also
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`Travlocity.com LP v. Cronos Tech., LLC, CBM2015-00047, slip op. at 13 (PTAB
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`June 15, 2015) (Paper 7) (“[A] decision on a petition . . . is not simply part of a
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`feedback loop by which a petitioner may perfect its challenges through a
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`subsequent filing.”).
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`
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`That is exactly what has happened here: Petitioner waited until after it
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`received both the POPR and the Board’s institution decision in IPR2016-00863
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`before unveiling its “additional explanation,” arguments, and grounds for the
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`15
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`invalidity of Claim 4 in the instant Petition. Petition at [second] 1. The same
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`rationale applies to Petitioner’s new grounds (i.e., anticipation), arguments (i.e., the
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`new Petition), and evidence (e.g., Professor Ivey’s new declaration) with respect to
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`the other challenged claims for which the IPR2016-00863 trial was instituted:
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`Petitioner offers no rationale for why it could not have made all those arguments
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`back when the IPR2016-00863 petition was filed. See Blue Coat Sys., IPR2016-
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`01433 Paper 13 at 13, IPR 2016-01441 Paper 14 at 12–13.
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`
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`The fact that Petitioner waited until the last moment before the bar in 35
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`U.S.C. § 315(b) would be imposed is further evidence that Petitioner delayed filing
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`this Petition for improper purposes. See Alarm.com, IPR2016-01124 Paper 11 at
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`10 (denying institution and stating that “Because the instant Petition was filed just
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`one day prior to the raising of the Section 315(b) bar against further challenges to
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`[the claims], we can discern no other explanation for the content of this petition
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`apart from the information to be gleaned from [Patent Owner’s] preliminary
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`response and our decision on institution in the related cases.”).
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`6.
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`Petitioner Waited More Than Six Months After Learning
`about Fay to File the Instant Petition.
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`Petitioner Provides No Good Reason for Its Delay.
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`7.
`Factors six and seven concern how long a petitioner waits to file its petition,
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`
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`and what excuse there is for that delay. In Unilever, Inc. v. The Procter & Gamble
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`16
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`

`

`
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`Co., IPR2014-00506, Paper 17 at 8 (PTAB July 7, 2014) (Informative Opinion),
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`the Board denied institution in part because the references used in the second
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`petition were known to the Petitioner when it filed its earlier petition. The
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`petitioner “present[ed] no argument or evidence that the seven newly cited
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`references were not known or available to it at the time of filing of [the petitioner’s
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`earlier] Petition.” Id. at 6. As the board has stated,
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`We are concern