Trials@uspto.gov
`571-272-7822
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`Paper 11
`Entered: October 22, 2024
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`QORVO, INC.,
`Petitioner,
`v.
`
`CORNELL RESEARCH FOUNDATION INC.,
`Patent Owner.
`
`IPR2024-00758
`Patent 7,250,360 B2
`
`
`Before KIMBERLY McGRAW, JULIA HEANEY, and
`MICHAEL G. McMANUS, Administrative Patent Judges.
`
`McGRAW, 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
`
`
`
`
`
`
`
`

`

`IPR2024-00758
`Patent 7,250,360 B2
`
`INTRODUCTION
`I.
`Qorvo, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`an inter partes review of claims 1–24 of U.S. Patent No. 7,250,360 B2
`(Ex. 1001, “the ’360 patent”). Petitioner filed, concurrently with the
`Petition, a Contingent Motion for Joinder requesting to be joined with any
`inter partes review that is instituted with respect to the ’360 patent in IQR
`PLC v. Cornell Research Foundation Inc., IPR2024-00609 (the “IQE
`IPR”). 1 Paper 3 (“Mot.” or “Motion”). Cornell Research Foundation Inc.
`(“Patent Owner”) filed a Response to Petitioner’s Contingent Motion. Paper
`7 (“Opp”). Patent Owner also filed a Preliminary Response to the Petition
`(Paper 8, “Prelim. Resp.”). With our authorization, Petitioner filed a Reply
`to the Preliminary Response (Paper 10, “Prelim. Reply”).
`An inter partes review may not be instituted “unless . . . the
`information presented in the petition . . . 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.” 35 U.S.C. § 314(a).
`For the reasons discussed below, we institute an inter partes review as
`to all of the challenged claims of the ’360 patent on all grounds of
`unpatentability set forth in the Petition. We also grant Petitioner’s Motion
`for Joinder.
`A. Related Proceedings
`The parties identify Akoustis Technologies, Inc. et al. v. Qorvo, Inc.,
`Case No. 2:23-cv-00180 (E.D. Tex.), filed April 20, 2023 (the “Akoustis-
`Qorvo litigation”) and IQE PLC v. Cornell Research Foundation, Inc.,
`
`
`1 We granted institution of the IQE IPR on September 13, 2024. IPR2023-
`00609, Paper 9 (PTAB Sept. 13, 2024).
`
`2
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`IPR2024-00758
`Patent 7,250,360 B2
`IPR2024-00609, filed March 1, 2024 as related matters. Pet. 2–3; Paper 5
`(Patent Owner Mandatory Notices), 2. Patent Owner also identifies IQE
`KC, LLC v. Akoustis Technologies, Inc., 1:24-mc-91053-AK (D. Mass.)
`as a proceeding involving a motion to quash a subpoena issued from the
`Akoustis-Qorvo litigation. Paper 5, 2.
`B. Real Parties-In-Interest
`Petitioner identifies itself as the real party-in-interest. Pet. 2.
`Patent Owner identifies Cornell Research Foundation, Inc. as the real-
`party-in interest and further identifies Akoustis Technologies, Inc. as the
`exclusive licensee of the ’360 patent. Paper 5, 2.
`C. The ’360 Patent
`The ’360 patent, titled “Single Step, High Temperature Nucleation
`Process for a Lattice Mismatched Substrate,” relates to “a single step process
`for the nucleation and subsequent epitaxial growth on a lattice mismatched
`substrate.” Ex. 1001, code (54), 1:17–19. According to the ’360 patent,
`there are applications for a “lattice mismatched substrate having an epitaxial
`nitride based material, such as (Al)GaN” “in the areas of high power, high
`frequency electronics, short wavelength optoelectronics, biology, and
`micromachining technologies.” Id. at 3:43–47. But, the ’360 patent
`observes, “[h]eteroepitaxial growth of GaN and related alloys on severely
`mismatched substrates such as sapphire, SiC and silicon requires thin
`nucleation layers to provide nucleation sites to initiate crystal growth.” Id.
`at 1:21–24. The single step approach described in the ’360 patent “is a
`single flow, single pressure, high temperature process” that “involves a
`surface treatment prior to epitaxial growth that allows complete coalescence
`of the epitaxial film within the first 200 Å of growth.” Id. at 2:3–7. This
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`IPR2024-00758
`Patent 7,250,360 B2
`“eliminates the large temperature ramps and complex flow requirements of
`the commonly used two-step nucleation technologies.” Id. at 2:7–9.
`In one embodiment, a surface of a lattice mismatched substrate, such
`as silicon, sapphire, or SiC, is pre-treated with at least one group III reactant
`or group II reactant, prior to the introduction of a group V or group VI
`reactant, respectively. Ex. 1001, 2:25–33. Preferably, group III includes
`gallium, aluminum, boron, and indium reactants, while group II includes
`cadmium and zinc reactants. Id. at 2:36–38, 2:45–46. More specifically, at
`least one of the group III or group II reactants “is introduced into a growth
`chamber at an elevated growth temperature to pre-treat the surface of the
`substrate prior to any actual crystal growth.” Id. at 2:47–50. “Once the pre-
`treatment is complete, the group V reactant or the group VI reactant is
`introduced to begin the growth of the nucleation layer.” Id. at 2:56–58.
`Preferably, group V includes nitrogen, arsenic, and phosphorus reactants,
`while group VI includes tellurium and sulfur reactants. Id. at 2:59–60, 2:65–
`67. “After the nucleation layer is formed, a buffer layer is formed on the
`nucleation layer,” which “provides a surface upon which the epitaxial layer
`is grown.” Id. at 2:67–3:1.
`The ’360 patent describes that preferred III-V and II-VI compounds
`for the nucleation layer include “AlN, GaN, AlGaN, BGaN, BInN, CdTe,
`and ZnS.” Ex. 1001, 3:4–6. Figure 1 of the ’360 patent, reproduced below,
`shows “a schematic representation of a single step process for nucleation and
`subsequent growth of a preferred GaN-based material,” with “[r]elative
`reactant fluxes and exposure cycles . . . depicted for the surface pre-
`treatment, the AlN/AlGaN nucleation layer, and the transition to GaN
`epitaxial growth on both sapphire and SiC substrates.” Id. at 3:51–56.
`
`4
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`IPR2024-00758
`Patent 7,250,360 B2
`
`
`
`In the process shown in Figure 1, after heating the substrates to 1100 °C in
`hydrogen for 10 minutes for cleaning, the temperature is decreased to
`1040 °C . Id. at 3:59–64. Aluminum and gallium reactants, preferably TEG
`(triethylgallium) and TMA (trimethylaluminum), are introduced into the
`growth chamber for 100 seconds. Id. at 3:65–4:3. Next, ammonia is
`switched into the chamber to form AlxGa1-xN on the substrate. Id. at 4:4–7.
`If not already present, the gallium reactant is switched into the chamber, for
`example, if the nucleation layer is comprised of AlN. Id. at 4:8–10. The
`aluminum reactant is then ramped down and switched out of the chamber
`after 30 seconds, resulting “in GaN deposition, providing a buffer layer on
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`IPR2024-00758
`Patent 7,250,360 B2
`which other GaN-based epitaxial layers can subsequently be deposited
`without any change in growth chamber temperature.” Id. at 4:11–16.
`D. Illustrative Claim
`Of the challenged claims, claims 1 and 18 are independent.
`Claim 1 is reproduced below.
`1. A process for growing an epitaxial layer on a lattice
`mismatched substrate comprising the steps of:
`a) providing a substrate;
`b) pre-treating a surface of the substrate with at least one
`group III reactant or at least one group II reactant at an elevated
`growth temperature prior to introducing a group V reactant or a
`group VI reactant;
`c) introducing a group V reactant or a group VI reactant to
`grow a nucleation layer on the surface of the substrate; and
`d) growing a buffer layer on said nucleation layer, said
`buffer layer providing a surface upon which said epitaxial layer
`is grown.
`Ex. 1001, 5:2–14.
`E. The Asserted Grounds of Unpatentability
`Petitioner contends claims 1–24 of the ’360 patent are unpatentable on
`the following grounds. Pet. 5.
`
`Ground
`
`Reference(s)
`
`35 U.S.C. §
`
`Claims
`Challenged
`1–4, 6–14
`
`1
`
`Urashima2
`
`103(a) 3
`
`
`2 Urashima et al., U.S. Patent Appl. Pub. No. 2002/0155712 A1 (published
`Oct. 24, 2002) (Ex. 1004, “Urashima”).
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103 effective March 16, 2013.
`Because the application giving rise to the ’360 patent was filed before that
`date, the pre-AIA version of §§ 102 and 103 applies. See Ex. 1001, code
`(22).
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`6
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`IPR2024-00758
`Patent 7,250,360 B2
`
`Ground
`
`Reference(s)
`
`35 U.S.C. §
`
`2
`3
`4
`5
`6
`
`Urashima, Nagata4 103(a)
`Urashima, Keiper5
`103(a)
`Urashima, Manabe6 103(a)
`Guo7
`103(a)
`Guo, Ashby8
`103(a)
`
`Claims
`Challenged
`5, 17
`15, 16
`18–24
`1–4, 6–9, 11–14
`5, 10, 17
`
`In support of its unpatentability arguments, Petitioner relies on the
`declaration of Dr. Stanley Shanfield (Ex. 1003 “Shanfield Declaration”).
`II. REQUEST FOR DISCRETIONARY DENIAL–35 U.S.C. § 314(a)
`FINTIV
`Patent Owner argues that we should exercise discretion to deny
`institution under 35 U.S.C. § 314(a) in view of the Akoustis-Qorvo litigation
`currently pending in the Eastern District of Texas involving the ’360 patent,
`Petitioner Qorvo and Akoustis, the exclusive licensee of Patent Owner. See
`Prelim. Resp. 20–28. Patent Owner asserts that the issues presented by the
`
`
`4 Nagata et al., Japanese Patent App. Pub. No. H5-63305 (published Mar. 12,
`1993) (Ex. 1005, “Nagata” (pp. 1–8, certified English translation; pp. 9–15,
`foreign language original)). Unless otherwise indicated, all citations are to
`the English translation.
`5 Keiper et al., Metal organic vapour-phase epitaxy (MOVPE) growth of InP
`and InGaAs using tertiarybutylarsine (TBA) and tertiarybutylphosphine
`(TBP) in N2 ambient, J. of Crystal Growth 256–262, Vol. 204, No. 3 (1999)
`(Ex. 1006, “Keiper”).
`6 Manabe et al., U.S. Patent No. 5,122,845 (issued June 16, 1992) (Ex. 1007,
`“Manabe”).
`7 Guo et al., U.S. Patent App. Pub. No. 2004/0119063 A1 (published June
`24, 2004) (Ex. 1008, “Guo”).
`8 Ashby et al., U.S. Patent App. Pub. No. 2002/0090816 A1 (published July
`11, 2002) (Ex. 1009, “Ashby”).
`
`7
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`IPR2024-00758
`Patent 7,250,360 B2
`Petition will be resolved in the Akoustis-Qorvo litigation months before any
`Final Written Decision would issue in the present proceeding. See Prelim.
`Resp. 20.
`The Board has held that the advanced state of a parallel district court
`action is a factor that may weigh in favor of denying a petition under
`35 U.S.C. § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Patent
`Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 58
`& n.2, available at https://www.uspto.gov/TrialPracticeGuideConsolidated
`(“Trial Practice Guide”). We consider the following nonexclusive factors to
`assess “whether efficiency, fairness, and the merits support the exercise of
`authority to deny institution in view of an earlier trial date in the parallel
`proceeding”:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`investment in the parallel proceeding by the court and the
`parties;
`overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20,
`2020) (precedential) (“Fintiv”). These factors “relate to whether efficiency,
`fairness, and the merits support the exercise of authority to deny institution
`in view of an earlier trial date in the parallel proceeding.” Fintiv, IPR2020-
`
`2.
`
`3.
`
`4.
`
`6.
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`8
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`IPR2024-00758
`Patent 7,250,360 B2
`00019, Paper 11 at 6. Fintiv further instructs that the Board should take “a
`holistic view of whether efficiency and integrity of the system are best
`served by denying or instituting review.” Id.; see Trial Practice Guide at 55–
`56, 58.
`The Director has issued additional guidance on the application of
`Fintiv. See USPTO Memorandum, Interim Procedure for Discretionary
`Denials in AIA Post-Grant Proceedings with Parallel District Court
`Litigation (June 21, 2022) (“Fintiv Memo”).9 The Fintiv Memo instructs
`that “the PTAB will not discretionarily deny institution in view of parallel
`district court litigation where a petitioner stipulates not to pursue in a
`parallel district court proceeding the same grounds as in the petition or any
`grounds that could have reasonably been raised in the petition.” Id. at 3
`(citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12
`(PTAB Dec. 1, 2020) (precedential as to § II.A)); see id. at 7, 9. The Fintiv
`Memo also explains that such a stipulation (a Sotera stipulation) “mitigates
`concerns of potentially conflicting decisions and duplicative efforts between
`the district court and the PTAB.” Id. at 7.
`Petitioner presents a Sotera stipulation in the present Petition. See
`Pet. 70. Specifically, Petitioner stipulates that it will not pursue invalidity of
`the Challenged Claims (i.e., all claims of the ’360 patent) in the Akoustis-
`Qorvo litigation on the grounds raised, or that reasonably could have been
`raised, in this IPR Petition. Id.
`Patent Owner does not dispute that Petitioner presents a Sotera
`stipulation in the present Petition. See, e.g., Prelim. Resp. Instead, Patent
`
`9 The Fintiv Memo is available at https://www.uspto.gov/sites/
`default/files/documents/interim_proc_discretionary_denials_aia_parallel
`_district_court_litigation_memo_20220621_.pdf
`
`9
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`IPR2024-00758
`Patent 7,250,360 B2
`Owner asserts that because Petitioner Qorvo has filed a motion to join the
`IQE IPR, and the petitioner in that proceeding (i.e., IQE) did not file a
`Sotera stipulation,10 it is unclear whether Qorvo’s stipulation would apply or
`provide any real benefit if Qorvo’s joinder motion is granted. Id. at 2; see
`also id. at 27 (stating that Petitioner’s “Sotera stipulation does not eliminate
`overlap in these specific circumstances”). More particularly, Patent Owner
`contends that:
`Petitioner has stipulated that “if the Board institutes this Petition,
`Petitioner will not pursue invalidity of the Challenged Claims in
`the Akoustis-Qorvo litigation on the grounds raised, or that
`reasonably could have been raised, in this IPR Petition.” Pet. 70
`(emphases added). But Petitioner has sought to join the largely
`identical IQE IPR proceedings if that IPR is instituted. Paper 3.
`If Petitioner is joined in that matter (which does not include a
`Sotera stipulation and for which institution should also be
`denied), it is unclear that its stipulation that is specific to “this
`IPR Petition” would indeed bar Petitioner from re-raising the
`same art in the district court case. Petitioner’s stipulation should
`thus not be seen as dispositive in this matter and because
`Petitioner asserts that same art the factor should weigh in favor
`of denial.
`Prelim. Resp. 27 (emphasis added by Patent Owner).
`Patent Owner’s arguments appear to be based on the premise that
`Qorvo’s stipulation (i.e., Qorvo will not pursue invalidity of the Challenged
`Claims in the Akoustis-Qorvo litigation on the grounds raised, or that
`reasonably could have been raised, in this Petition if this Petition is granted)
`would somehow not apply if this Petition is granted and Qorvo is then joined
`
`10 While not as broad as a Sotera stipulation, IQE did stipulate in its petition
`in the IQE IPR that, in the event its petition is instituted, IQE would not raise
`in any future litigation that might be brought by Patent Owner or Akoustis
`involving the ’360 patent, any invalidity challenges based on the prior art
`asserted in the IQE IPR. IQE IPR, Paper 1 (IQE Petition) at 74.
`
`10
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`IPR2024-00758
`Patent 7,250,360 B2
`to the IQE IPR. Patent Owner, however, does not explain why joining
`Qorvo to the IQE IPR –– which Patent Owner acknowledges is based on a
`petition that is substantially identical to the present Petition –– would impact
`Qorvo’s stipulation.
`Patent Owner argues that IQE did not make a Sotera stipulation.
`However, IQE is not a party to the Akoustis-Qorvo litigation, and therefore,
`as a non-party cannot pursue any invalidity challenges in that litigation.
`Indeed, the Board is not aware of any district court litigation in which IQE
`has been charged with infringing the ’360 patent. Patent Owner does not
`explain why IQE’s failure to file a Sotera stipulation applicable to the
`Akoustis-Qorvo litigation, to which IQE is not a party, would impact
`Qorvo’s stipulation, which applies to the Akoustis-Qorvo litigation. As
`such, we disagree with Patent Owner’s argument that if Qorvo is joined as a
`party to the IQE IPR, then Qorvo’s stipulation would not prevent Qorvo
`from asserting the same art that is presented in both the present Petition and
`in the IQE IPR in the Akoustis-Qorvo litigation.
`Because Qorvo presents a Sotera stipulation, we decline to exercise
`our discretion under § 314(a) to deny institution in view of the Akoustis-
`Qorvo litigation. See Fintiv memo at 3, 7, 9.
`III. INSTITUTION OF INTER PARTES REVIEW
` The Petition in this proceeding asserts the same grounds of
`unpatentability that are currently subject to review in the IQE IPR. See
`IPR2024-00609, Paper 9 (institution decision); see also IPR2024-00609,
`Paper 1 (the “IQE Petition”); see also Mot. 2 (stating Qorvo’s Petition
`“challenges the same claims on the same grounds as the IQE Petition. It
`relies on the same prior art as the IQE Petition. And it is supported by
`
`11
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`IPR2024-00758
`Patent 7,250,360 B2
`substantially the same expert declaration by the same expert, Dr. Shanfield,
`as the IQE Petition.”).
`Patent Owner’s Preliminary Response in the present proceeding
`repeats the same arguments as those set forth in the preliminary response in
`the IQE IPR. Compare Prelim. Resp. 8–21, 28–61 with IPR2024-00609,
`Paper 6, 8–20, 33–61. For example, in both of its preliminary responses,
`Patent Owner repeats its arguments opposing Petitioner’s ground 611 and
`asserts that claim 10 is patentable because Guo is not prior art to claim 10
`and that Petitioner failed to provide a reason to combine Guo and Ashby to
`arrive at the claimed invention of claims 5 and 17. Prelim. Resp. 56–60.
`Patent Owner includes an additional argument in the present
`proceeding when it further contends that its arguments regarding claim 5 and
`17 also apply to claim 10. Id. at 61. In particular, Patent Owner states:
`For the reasons discussed in Section IV.C.2.a [i.e., Prelim.
`Resp. 57–60], a POSITA would not have combined Guo and
`Ashby and thus institution of claim 10 is also unwarranted.
`
`Id.
`
`For the same reasons stated in our Decision on Institution in the
`IQE IPR, we determine that institution is warranted here. See IPR2024-
`00609, Paper 9 at 41–44. With respect to Patent Owner’s additional
`argument that Petitioner failed to provide a reason to combine Guo and
`Ashby to arrive at the claimed invention of claim 10 for the same reasons set
`forth with respect claims 5 and 17 (Prelim. Resp. 61), we note that, as stated
`in our Decision on Institution, Petitioner provides argument and declaratory
`testimony that a person of ordinary skill in the art would have had reason to
`
`
`11 In Ground 6, Petitioner asserts that dependent claims 5, 10, and 17 would
`have been obvious over the combination of Guo and Ashby. Pet. 60–66.
`
`12
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`IPR2024-00758
`Patent 7,250,360 B2
`combine Guo and Ashby, and that whether Petitioner’s assertions are
`sufficient to show a reason to combine the references is best resolved on a
`full record. IPR2024-00609, Paper 9 at 43.
`For the above reasons, we determine Petitioner has set forth a
`reasonable likelihood that it would prevail with respect to at least one
`challenged claim, and we, therefore, institute an inter partes review on all
`grounds raised in the Petition.
`IV. MOTION FOR JOINDER
`Joinder in an inter partes review is subject to the provisions of
`35 U.S.C. § 315(c), which provides:
`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
`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 a petitioner to an instituted IPR, the Board first determines
`whether the Petition “warrants” institution under § 314. See Facebook, Inc.
`v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020).
`Patent Owner asserts the Board should deny institution for the reasons set
`forth in its Preliminary Response. Opp. 3. For the reasons discussed above,
`we determine that institution of inter partes review is warranted.
`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. Facebook, 973 F.3d at 1332. Petitioner timely filed its
`Contingent Motion for Joinder before institution of the IQE IPR. See Mot.
`1; 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed . . . no later
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`IPR2024-00758
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`than one month after the institution date of any inter partes review for which
`joinder is requested.”).
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). In deciding whether to
`grant joinder, we consider: (1) the reasons why joinder is appropriate,
`(2) whether the petition raises any new grounds of unpatentability, (3) any
`impact that joinder would have on the cost and trial schedule for the existing
`review, and (4) whether joinder will add to the complexity of briefing or
`discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15, 4
`(PTAB Apr. 24, 2013); Trial Practice Guide at 76.
`Petitioner contends that joinder with the IQE IPR is appropriate
`because Qorvo’s Petition (Paper 1) is substantially the same as the IQE
`Petition. Mot. 2, 4–5. Petitioner states that its Petition challenges the same
`claims on the same grounds, relies on the same art, and is supported by
`substantially the same expert declaration by the same expert as the IQE
`Petition. Id. at 2, 4. Petitioner states that no additional burden would be
`created and that joinder would lead to an efficient resolution of the asserted
`invalidity of the ’360 patent. Id. at 2, 5–6. Petitioner further stipulates that
`if joinder is granted, that it will act as an “understudy” unless IQE ceases to
`participate in the proceeding and that joinder will not unduly complicate the
`IQE IPR or delay its schedule. Id. at 2, 5–8.
`Patent Owner responds that if the Board does institute the IQE IPR,
`that “joinder would be appropriate if Petitioner is given the ‘understudy’ role
`laid out in Noven Pharms., Inv. v. Novartis AG, IPR2014-00550, Paper 38
`at 5 (PTAB Apr. 10, 2015).” Opp. 3. Petitioner has agreed to the conditions
`laid out in Noven. Id. at 6–7. In particular, Petitioner agrees, upon joining
`the IQE IPR, to the following conditions:
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`IPR2024-00758
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`A. all filings by Petitioner in the IQE IPR shall be
`consolidated with the filings of IQE, unless a filing concerns
`issues solely involving Petitioner;
`B. Petitioner shall not be permitted to raise any new
`grounds not instituted by the Board in the IQE IPR, or introduce
`any argument or discovery not introduced by IQE;
`C. Petitioner shall be bound by any agreement between
`Patent Owner and IQE concerning discovery and depositions;
`and
`
`D. Petitioner at deposition shall not receive any direct,
`cross examination, or redirect time beyond that permitted under
`either 37 C.F.R. § 42.53 or any agreement between Patent Owner
`and IQE.
`Id. The Board instituted the IQE IPR. See IPR2024-00609, Paper 9. We
`agree with Petitioner that joinder with the IQE IPR is appropriate under the
`circumstances. Accordingly, we grant Petitioner’s Motion for Joinder
`V. ORDER
`For the foregoing reasons, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–24 of the ’360 patent is hereby instituted with respect to
`all grounds of unpatentability set forth in the Petition, commencing on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of trial;
`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, subject to the
`above-described limitations on Petitioner’s participation in that proceeding,
`and Petitioner is hereby joined as a petitioner in IPR2024-00609;
`FURTHER ORDERED that the asserted grounds of unpatentability on
`which the Board instituted inter partes review in IPR2024-00609 are
`unchanged and remain the only instituted grounds;
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`IPR2024-00758
`Patent 7,250,360 B2
`
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2024-00609, and any modifications thereto, shall govern the schedule of
`the proceeding;
`FURTHER ORDERED that all further filings are to be made in
`IPR2024-00609;
`FURTHER ORDERED that the case caption in IPR2024-00609 for all
`further submissions shall be modified to reflect Petitioner’s joinder in a
`manner consistent with the example included below; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record in IPR2024-00609.
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`16
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`IPR2024-00758
`Patent 7,250,360 B2
`FOR PETITIONER:
`Ryan Richardson
`Graham Phero
`Brian Burke
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`rrichardson-ptab@sternekessler.com
`gphero-ptab@sternekessler.com
`bburke-ptab@sternekessler.com
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`FOR PATENT OWNER:
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`John B. Campbell
`James Quigley
`George Fishback
`MCKOOL SMITH, P.C.
`jcampbell@mckoolsmith.com
`jquigley@mckoolsmith.com
`gfishback@mckoolsmith.com
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`17
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`IPR2024-00758
`Patent 7,250,360 B2
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`IQE PLC and
`QORVO, INC.,
`Petitioner,
`v.
`
`CORNELL RESEARCH FOUNDATION INC.,
`Patent Owner.
`
`IPR2024-0060912
`Patent 7,250,360 B2
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`12 Qorvo, Inc., which filed a petition in IPR2024-00758, has been joined as a
`party to this proceeding.
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`18
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