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Paper 19
`Trials@uspto.gov
` Entered: June 11, 2021
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TAIWAN SEMICONDUCTOR MANUFACTURING CO. LTD.,
`Petitioner,
`
`v.
`
`ARBOR GLOBAL STRATEGIES LLC,
`Patent Owner.
`
`IPR2021-00736
`Patent 7,282,951 B2
`
`Before KARL D. EASTHOM, BARBARA A. BENOIT, and
`SHARON FENICK, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`

`

`IPR2021-00736
`Patent 7,282,951 B2
`
`
`
`
`
`
`On April 5, 2021, Taiwan Semiconductor Manufacturing Co.
`Ltd. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) seeking inter partes
`review of claims 1, 2, 4–6, and 8–29 (the “challenged claims”) of U.S.
`Patent No. 7,282,951 B2 (Ex. 1001, “the ’951 patent”). With the Petition,
`Petitioner filed a Motion for Joinder (Paper 3, “Motion” or “Mot.”) with
`Xilinx, Inc., v. Arbor Global Strategies LLC, IPR2020-01568 (“Xilinx ’951
`IPR”). Subsequently, during a conference call held on May 20, 2021,
`counsel for Patent Owner, Arbor Global Strategies LLC, confirmed that no
`opposition to the Motion had been filed and stated that no preliminary
`response to the Petition will be filed in view of representations that
`Petitioner made in its Motion. See Paper 8 (Order documenting the
`conference call).
`The Board has authority to determine whether to institute an inter
`partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). Under
`35 U.S.C. § 314(a), an inter partes review may not be authorized unless the
`information in the Petition and the Preliminary Response “shows that there
`is a reasonable likelihood that the petitioner would prevail with respect to
`at least 1 of the claims challenged in the petition.”
`For the reasons that follow, we institute an inter partes review as to
`the challenged claims of the ’951 patent on all grounds of unpatentability
`presented. We also grant Petitioner’s Motion.
`
`I. BACKGROUND
`A. Real Parties-in-Interest
`Petitioner identifies Taiwan Semiconductor Manufacturing Co. Ltd. and
`TSMC North America as real parties-in-interest. Pet. 78. Patent Owner
`identifies Arbor Global Strategies LLC as a real party-in-interest. Paper 6, 1.
`
`
`
`2
`
`

`

`IPR2021-00736
`Patent 7,282,951 B2
`
`
`
`
`
`B. Related Proceedings
`The parties identify Arbor Global Strategies LLC v. Samsung
`Electronics Co., Ltd. et al., 2:19-cv-00333-JRG-RSP (E.D. Tex.) and Arbor
`Global Strategies LLC v. Xilinx, Inc., 1:19-cv-1986-MN (D. Del.) as related
`proceedings. See Pet. 71; Paper 6, 1. In addition to the Xilinx ’951 IPR to
`which Petitioner seeks joinder as a party, Patent Owner identifies two
`pending inter partes reviews, IPR2020-01021 and IPR2021-00394, as
`involving pending challenges to the ’951 patent. See Paper 6, 1.
`Concurrent with the instant Petition, Petitioner filed petitions
`challenging claims in three related patents, specifically IPR2021-00735
`challenging U.S. Patent No. 7,126,214 B2, IPR2021-00737 challenging U.S.
`Patent No. RE42,035 E, and IPR2021-00738 challenging U.S. Patent No.
`6,781,226 B2.
`
`C. The ’951 Patent
`The ’951 patent describes a stack of integrated circuit (IC) die elements
`including a field programmable gate array (FPGA) on a die, a memory on a
`die, and a microprocessor on a die. Ex. 1001, code (57), Fig. 4. Multiple
`contacts traverse the thickness of the die elements of the stack to connect the
`gate array, memory, and microprocessor. Id.
`According to the ’951 patent, this arrangement “allows for a significant
`acceleration in the sharing of data between the microprocessor and the
`FPGA element while advantageously increasing final assembly yield and
`concomitantly reducing final assembly cost.” Id.
`
`
`
`3
`
`

`

`IPR2021-00736
`Patent 7,282,951 B2
`
`
`
`Figure 4 follows:
`
`
`
`
`
`
`
`Figure 4 above depicts a stack of dies including FPGA die 68, memory
`die 66, and microprocessor die 64, interconnected using contact holes 70.
`Ex. 1001, 4:61–5:4.
`The ’951 patent explains that an FPGA provides known advantages as
`part of a “reconfigurable processor.” See Ex. 1001, 1:26–41. Reconfiguring
`the FPGA gates alters the “hardware” of the combined “reconfigurable
`processor” (e.g., the processor and FPGA) making the processor faster than
`one that simply accesses memory (i.e., “the conventional ‘load/store’
`paradigm”) to run applications. See id. A “reconfigurable processor”
`provides a known benefit of flexibly providing the specific functional units
`required by an application after manufacture. See id.
`
`4
`
`

`

`IPR2021-00736
`Patent 7,282,951 B2
`
`
`
`
`
`
`D. Illustrative Claim 1
`The Petition challenges independent claims 1, 5, and 10, and
`dependent claims 2, 4, 6, 8, 9, and 11–29. Claim 1 illustrates the challenged
`claims at issue:
`1. A processor module comprising:
`[1.1] at least a first integrated circuit functional element including
`a programmable array that is programmable as a processing
`element; and
`[1.2] at least a second integrated circuit functional element stacked
`with and electrically coupled to said programmable array of said
`first integrated circuit functional element [1.3] wherein said first
`and second integrated circuit functional elements are electrically
`coupled by a number of contact points distributed throughout the
`surfaces of said functional elements and [1.4] wherein said second
`integrated circuit includes a memory array functional to accelerate
`external memory references to the processing element.
`Ex. 1001, 7:58–8:4 (alterations by Board to conform to Petitioner’s
`nomenclature); see Pet. 23–30 (addressing claim 1).
`
`
`
`
`
`5
`
`

`

`IPR2021-00736
`Patent 7,282,951 B2
`
`
`
`
`
`E. The Asserted Grounds
`Petitioner challenges claims 1, 2, 4–6, and 8–29 of the ’951
`patent on the following grounds (Pet. 1):
`35 U.S.C.
`§
`1031
`103
`
`Claims Challenged
`
`1, 2, 4–6, 8–24, 27, 29
`25
`
`26
`
`28
`
`103
`
`103
`
`References
`
`Zavracky,2 Chiricescu,3 Akasaka4
`Zavracky, Chiricescu, Akasaka,
`Trimberger5
`Zavracky, Chiricescu, Akasaka,
`Satoh6
`Zavracky, Chiricescu, Akasaka,
`Alexander7
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. For purposes of
`institution, the ’951 patent contains a claim with an effective filing date before
`March 16, 2013 (the effective date of the relevant amendment), so the pre-AIA
`version of § 103 applies.
`2 Zavracky et al., US 5,656,548, issued Aug. 12, 1997. Ex. 1003.
`3 Silviu M. S. A. Chiricescu and M. Michael Vai, A Three-Dimensional FPGA
`with an Integrated Memory for In-Application Reconfiguration Data,
`Proceedings of the 1998 IEEE International Symposium on Circuits and
`Systems, May 1998, ISBN 0-7803-4455-3/98. Ex. 1004.
`
` Yoichi Akasaka, Three-Dimensional IC Trends, Proceedings of the IEEE,
`Vol. 74, Iss. 12, pp. 1703–14, Dec. 1986, ISSN 0018-9219. Ex. 1005.
`5 Steve Trimberger, Dean Carberry, Anders Johnson, and Jennifer Wong,
`A Time-Multiplexed FPGA, Proceedings of the 1997 IEEE International
`Symposium on Field-Programmable Custom Computing Machines, April
`1997, ISBN 0-8186-8159-4. Ex. 1006.
`6 Satoh, PCT App. Pub. No. WO00/62339, published Oct. 19, 2000. Ex. 1008
`(English translation).
`7 Michael J. Alexander, James P. Cohoon, Jared L. Colflesh, John Karro,
`and Gabriel Robins, Three-Dimensional Field-Programmable Gate
`Arrays, Proceedings of Eighth International Application Specific
`6
`
`
` 4
`
`

`

`IPR2021-00736
`Patent 7,282,951 B2
`
`
`
`
`
`II. ANALYSIS
`A. Institution of Inter Partes Review
`We instituted an inter partes review in the Xilinx ’951 IPR on all
`
`challenged claims and all asserted grounds of unpatentability. Xilinx ’951
`IPR, Paper 12 (institution decision). Petitioner here challenges the same
`claims and asserts the same grounds of unpatentability as those on which
`we instituted the Xilinx ’951 IPR. Pet. 1; Mot. 1 (“The Petition was based
`on the identical grounds that form the basis for the pending inter partes
`review initiated by Xilinx, Inc., (‘Xilinx’) concerning the same patent, Case
`No. IPR2020-01568 (the ‘’Xilinx ’951 IPR’).”). Petitioner also relies on
`the same declarant as did the petition in the Xilinx ’951 IPR. Mot. 4 (“The
`Petition asserts only grounds that the Board already instituted in the Xilinx
`’951 IPR, supported by the same technical expert and the same
`testimony.”); compare Ex. 1002, with Xilinx ’951 IPR, Ex. 1002
`(Declarations of Paul Franzon, Ph.D.).
`Because the grounds of unpatentability in the instant Petition are
`identical to those in the Xilinx ’951 IPR, and for the same reasons stated in
`our Decision to Institute in the Xilinx ’951 IPR, we institute inter partes
`review in this proceeding on the grounds presented in the Petition. See
`Xilinx ’951 IPR, Paper 12, 19–47 (Analysis of challenges in Petition).
`
`B. Motion for Joinder
`Joinder in an inter partes review is subject to the provisions of
`35 U.S.C. § 315(c):
`(c) JOINDER.—If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under
`
`Integrated Circuits Conference, Sept. 1995. Ex. 1009.
`7
`
`
`

`

`IPR2021-00736
`Patent 7,282,951 B2
`
`
`
`
`section 311 that the Director, after receiving a preliminary response
`under section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
`To join Petitioner to the instituted Xilinx ‘951 IPR, the Board first
`determines whether the Petition “warrants” institution under § 314, which we
`determined above. See Facebook, Inc. Windy City Innovations, LLC, 973 F.3d
`1321, 1332 (Fed. Cir. 2020).
`The Board next determines whether to exercise “discretion to decide
`whether to ‘join as a party’ the joinder applicant,” who is the Petitioner in this
`proceeding. Id. Petitioner timely filed its Motion for Joinder on April 5,
`2021, which was no later than one month after the institution of the Xilinx
`’951 IPR on March 5, 2021. See 37 C.F.R. § 42.122(b).
`As moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`should (1) set forth the reasons joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; and (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review. See Kyocera Corp. v. SoftView, LLC, IPR2013-00004, Paper 15 at 4
`(PTAB Apr. 24, 2013).
`We determine that Petitioner has met its burden of showing that
`joinder is appropriate because, as set forth above, the Petition (1) is
`substantially identical to the petition in the Xilinx ’951 IPR, (2) contains the
`same grounds based on the same evidence, and (3) relies on the same
`declaration of Paul Franzon, Ph.D. (Ex. 1002). Mot. 1, 3, 4. Petitioner also
`represents that joinder will not impact the Xilinx ’951 IPR schedule. Mot.
`1, 3, 4–5; see, e.g., Mot. 5 (“Without any new issues present, there is no
`reason to delay or alter the trial schedule already present in the Xilinx ’951
`
`
`
`8
`
`

`

`IPR2021-00736
`Patent 7,282,951 B2
`
`
`
`
`IPR, and Petitioner explicitly consents to the existing trial schedule.”).
`Additionally, Petitioner represents that it is willing to accept a limited,
`“understudy role” to Xilinx (the original petitioner in the Xilinx IPR) such
`that Petitioner will only assume “an active role in the event Xilinx no longer
`is a party to these proceedings.” Mot. 1. Specifically, Petitioner represents
`that in its understudy role, it agrees that the following conditions will apply:
`(a) all filings by Petitioner in the joined proceeding be consolidated
`with the filings of Xilinx, and Xilinx will maintain full control over
`all such filings unless a filing solely concerns issues that do not
`involve Xilinx;
`
`(b) Petitioner shall not be permitted to raise any new grounds not
`already instituted by the Board, or introduce any argument or
`discovery not already introduced by Xilinx;
`
`(c) Petitioner shall be bound by any agreement between Patent
`Owner and Xilinx concerning discovery and/or depositions; []
`
`(d) Petitioner at deposition shall not receive any direct, cross
`examination or redirect time beyond that permitted for Samsung in
`this proceeding alone under either 37 C.F.R. § 42.53 or any
`agreement between Patent Owner and Xilinx[; and]
`
`(e) [i]f an oral hearing is requested and scheduled, Xilinx in the
`joined proceeding will designate attorney(s)
`to present a
`consolidated argument at the oral hearing.
`Mot. 6–7.
`Petitioner further represents that Xilinx does not oppose Petitioner’s
`motion to join the Xilinx ’951 IPR. Mot. 1.
`We determine above that the Petition warrants the institution of an
`inter partes review. Under these circumstances, we agree with Petitioner
`that joinder is appropriate and will not unduly impact the ongoing trial in the
`
`
`
`9
`
`

`

`IPR2021-00736
`Patent 7,282,951 B2
`
`
`
`
`
`
`Xilinx ‘951 IPR. We limit Petitioner’s participation in the Xilinx ‘951 IPR
`proceeding, as follows: (1) Xilinx alone is responsible for all petitioner
`filings in the proceeding until such time that it is no longer an entity in the
`proceeding, and (2) Petitioner is bound by all filings by Xilinx in the
`proceeding, except for (a) filings regarding termination or settlement, and
`(b) filings where Petitioner receives permission to file an independent paper.
`Petitioner must obtain prior Board authorization to file any paper or take any
`action on its own in the proceeding, so long as Xilinx remains as a non-
`terminated petitioner in the proceeding. This arrangement promotes the just
`and efficient administration of the ongoing trial in the Xilinx ’951 IPR, and
`protects the interests of Xilinx as original petitioner in IPR2020-01568 and
`of Patent Owner.
`
`III. CONCLUSION
`For the foregoing reasons, we institute inter partes review of the
`challenged claims of the ’951 patent based on the grounds of unpatentability
`set forth in the Petition. We grant Petitioner’s Motion for Joinder and join
`Petitioner to IPR2020-01568, with the limitations set forth herein.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314, inter partes review is
`instituted as to the challenged claims of the ’951 patent with respect to all
`grounds of unpatentability presented in the Petition;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 315(c) and
`37 C.F.R. § 42.122, Petitioner’s Motion for Joinder is granted, and
`
`10
`
`
`
`
`
`

`

`IPR2021-00736
`Patent 7,282,951 B2
`
`
`
`
`
`
`Petitioner is joined as a petitioner to the IPR2020-01568 proceeding,
`subject to the above- described limitations on Petitioner’s participation in
`that proceeding;
`FURTHER ORDERED that the asserted grounds of unpatentability on
`which the Board instituted inter partes review in IPR2020-01568 are
`unchanged and remain the only instituted grounds;
`FURTHER ORDERED that the Scheduling Order in IPR2020-01568,
`and any modifications thereto, shall govern the schedule of the proceeding;
`FURTHER ORDERED that all further filings are to be made in
`IPR2020-01568;
`FURTHER ORDERED that the case caption in IPR2020-01568 for all
`further submissions shall be modified to add Taiwan Semiconductor
`Manufacturing Co. Ltd. as a named Petitioner, and to indicate by footnote
`the joinder of Petitioner to that proceeding, as indicated in the attached
`sample case caption; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record in IPR2020-01568.
`
`
`
`11
`
`

`

`
`
`IPR2021-00736
`Patent 7,282,951 B2
`
`
`
`PETITIONER:
`David Hoffman
`Kenneth Darby
`FISH & RICHARDSON P.C.
`hoffman@fr.com
`kdarby@fr.com
`
`James M. Glass
`Ziyong Li
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`scanli@quinnmanuel.com
`
`PATENT OWNER:
`Jonathan S. Caplan
`James Hannah
`Jeffrey H. Price
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jcaplan@kramerlevin.com
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`12
`
`

`

`IPR2021-00736
`Patent 7,282,951 B2
`
`
`
`
`
`
`
`
`Sample Case Caption
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`XILINX, INC.,
`Petitioner,
`
`v.
`
`ARBOR GLOBAL STRATEGIES, LLC,
`Patent Owner.
`
`IPR2020-015688
`Patent 7,282,951 B2
`
`
`
`
`
`
`
`
`
`
`
`
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`
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`8 Taiwan Semiconductor Manufacturing Co. Ltd. filed a petition in
`IPR2021-00736 and has been joined as a party to this proceeding.
`
`
`
`
`13
`
`

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