`571-272-7822
`
`
`
`
` Paper 9
`Date Entered: March 14, 2024
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TCL INDUSTRIES HOLDINGS CO., INC.
`Petitioner
`v.
`
`ATI TECHNOLOGIES ULC,
`Patent Owner.
`____________
`
`IPR2024-00366
`Patent 8,760,454 B2
`____________
`
`
`
`Before JAMES P. CALVE, BRIAN J. McNAMARA, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Petitioner’s Motion For Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`IPR2024-00366
`Patent 8,760,454 B2
`
` TCL Industries Holing Co., Ltd. (TCL) filed a petition challenging
`claims 1–11 of U.S. Patent No. 8,760,454 B2. Paper 1. With its Petition
`TCL filed a Motion For Joinder (Paper 3, “Motion” or “Mot.”) to join this
`proceeding with Realtek Semiconductor Corp v. ATI Technologies ULC
`IPR2023-00922 (“the Realtek IPR”).
`TCL’s Motion For Joinder states that its Petition relies on the identical
`arguments and grounds and the same expert opinions and testimony as those
`asserted by the petitioner (Realtek) in the petition filed in the Realtek IPR.
`Mot. 3–4. In the Realtek IPR, we entered a Decision to Institute a trial
`(Paper 10) on December 1, 2023 (Paper 10). On December 5, 2023, we
`entered a Scheduling Order (Paper 11) in the Realtek IPR.
`In its Motion For Joinder TCL agrees that, unless the petitioner in the
`Realtek IPR ceases its participation, TCL will assume an “understudy” role
`that will not impact the schedule, create any additional burdens, or affect the
`cost of the proceeding for either of the Realtek IPR parties. Id. at 4–5.
`ATI Technologies, Inc (Patent Owner) states that, in view of TCL’s
`agreement to assume an understudy role, it does not oppose the joinder.
`Paper 7. In a separate Decision on Institution, we instituted a trail in this
`proceeding.
`In consideration of the above it is:
`ORDERED that Petitioner’s Motion for Joinder is granted;
`FURTHER ORDERED that IPR2024-00366 is hereby instituted and
`joined with IPR2023-00922;
`FURTHER ORDERED that the grounds on which IPR2023-00922
`was instituted are unchanged and no other grounds are included in the joined
`proceeding;
`
`
`
`2
`
`
`
`IPR2024-00366
`Patent 8,760,454 B2
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2023-00922 remains unchanged and shall govern the schedule of the
`joined proceedings;
`FURTHER ORDERED that, throughout the joined proceeding,
`Realtek and TCL will file all papers jointly in the joined proceeding as
`consolidated filings, and will identify each such paper as “Consolidated,”
`except that papers filed on behalf of a single party need not be marked
`Consolidated;
`FURTHER ORDERED that, unless Realtek ceases to participate in
`the IPR, TCL may not conduct discovery separately from discovery
`conducted by Realtek or rely on any separate expert opinion;
`FURTHER ORDERD that in the event of an irreconcilable divergence
`in interest between Realtek and TCL or other special circumstances
`requiring TCL to file a separate substantive paper or take any action
`independent of Realtek, TCL shall contact the Board for authorization before
`filing such a paper or taking such action;
`FURTHER ORDERED that IPR2024-00366 is terminated under 37
`C.F.R. § 42.72 and all further filings in the joined proceedings are to be
`made in IPR2023-00922;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2023-00922; and
`FURTHER ORDERED that the case caption in IPR2023-00922 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example.
`
`
`
`
`
`
`3
`
`
`
`IPR2024-00366
`Patent 8,760,454 B2
`FOR PETITIONER IPR2024-00366:
`
`John Schnurer
`Yun (Louise) Lu
`Kevin J. Patari
`Kyle R. Canavera
`PERKINS COIE LLP
`PerkinsServiceTCL-AMDIPRs@perkinscoie.com
`
`FOR PETITIONER IPR2023-00922:
`
`Jeffrey Johnson
`Christopher J. Higgins
`ORRICK, HERRINGTON & SUTCLIFFE, LLP
`3J6PTABDocket@orrick.com;
`OCHPTABDocket@orrick.com
`Realtek-AMD_OHS@orrick.com
`
`Steve Baik
`WHITE HAT LEGAL
`sbaik@whitehat.legal
`
`
`FOR PATENT OWNER:
`
`William A. Meunier
`Michael T. Renaud
`Adam S. Rizk
`Reza Dokhanchy
`MINTZ, LEVIN, COHN, FERRIS,
`GLOVSKY AND POPEO, P.C.
`WAMeunier@mintz.com
`MTRenaud@mintz.com
`ARizk@mintz.com
`RDokhanchy@mintz.com
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2024-00366
`Patent 8,760,454 B2
`Example Case Caption for Joined Proceeding
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`REALTECK SEMICONDUCTOR CORP. and
`TCL INDUSTRIES HOLDINGS CO., INC.
`Petitioners
`
`v.
`
`ATI TECHNOLOGIES ULC,
`Patent Owner.
`____________
`
`IPR2023-00922
`Patent 8,760,454 B21
`____________
`
`
`1 Joinder with IPR2024-00366
`
`
`
`5
`
`
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