UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MACRONIX INTERNATIONAL CO., LTD., MACRONIX ASIA LIMITED,
`MACRONIX (HONG KONG) CO., LTD. and MACRONIX AMERICA, INC.
`Petitioners
`
`v.
`
`SPANSION LLC
`Patent Owner
`
`
`
`Case: IPR2014-00108
`
`
`
`MOTION TO EXPUNGE AND REPLACE DECLARATION OF DHAVAL
`J. BRAHMBHATT (EXHIBIT 1002)
`FOR
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,151,027
`
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`Submitted Electronically via the Patent Review Processing System
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MACRONIX INTERNATIONAL CO., LTD., MACRONIX ASIA LIMITED,
`MACRONIX (HONG KONG) CO., LTD. and MACRONIX AMERICA, INC.
`Petitioners
`
`v.
`
`SPANSION LLC
`Patent Owner
`
`
`
`Case: IPR2014-00108
`
`
`
`MOTION TO EXPUNGE AND REPLACE DECLARATION OF DHAVAL
`J. BRAHMBHATT (EXHIBIT 1002)
`FOR
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,151,027
`
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`Submitted Electronically via the Patent Review Processing System
`
`
`
`MOTION TO EXPUNGE AND REPLACE DECLARATION OF DHAVAL
`J. BRAHMBHATT (EXHIBIT 1002)
`
`Petitioners Macronix International Co., Ltd., Macronix Asia Limited,
`
`Macronix (Hong Kong) Co., Ltd., and Macronix America, Inc. herewith file this
`
`Motion pursuant to § 42.104(c).
`
`This motion is accompanied by the Declaration of Andrew R. Sommer
`
`(Exhibit 1010), and a Corrected Declaration of Dhaval J. Brahmbhatt (Corrected
`
`Exhibit 1002).
`
`No fee is believed to be required for consideration of this motion. The
`
`Office is authorized to charge any fee deficiency, or credit any overpayment, to
`
`Deposit Acct. No. 50-1814.
`
`37 C.F.R. § 42.104(c) states:
`
`Applicable Rule
`
`A motion may be filed that seeks to correct a clerical or typographical
`
`mistake in the petition. The grant of such a motion does not change the
`
`filing date of the petition.
`
`Facts Relevant to this Motion
`
`1.
`
`On November 8, 2013, Petitioners filed concurrent inter partes review
`
`proceedings against five of Patent Owner’s patents: U.S. Patent No.
`
`6,459,635 (IPR2014-00104), U.S. Patent No. 6,731,536 (IPR2014-00105),
`
`U.S. Patent No. 6,900,124 (IPR2014-00106), U.S. Patent No. 7,018,922
`
`(IPR2014-00107) and U.S. Patent No. 7,151,027 (IPR2014-00108). Each
`2
`
`
`
`
`
`of these IPRs have been given the filing date of November 8, 2013.
`
`2.
`
`Andrew Sommer, a partner at Winston & Strawn LLP, supervised the
`
`preparation and filing of the original Petition (Paper 1, the “’108 Petition”)
`
`and the preparation and filing the original Declaration of Dhaval J.
`
`Brahmbhatt (Exhibit 1002, MX124-1002, the “Original Brahmbhatt
`
`Declaration”) in the present proceeding. Exhibit 1010, ¶ 2.
`
`3.
`
`Due to a final formatting change in the Original Brahmbhatt Declaration, a
`
`blank, but numbered, paragraph was deleted from the declaration. The
`
`deletion of this paragraph caused an automatic software renumbering of the
`
`paragraphs below the deletion. The automated renumbering resulted in
`
`errors in some of the citations to the Original Brahmbhatt Declaration
`
`contained in the ’108 Petition. Exhibit 1010, ¶ 5.
`
`3.
`
`The changes in the paragraph numbers in the Original Brahmbhatt
`
`Declaration were inadvertently not reflected in some of the citations to the
`
`Original Brahmbhatt Declaration contained in the ’108 Petition, which
`
`caused the clerical errors being corrected hereby. Exhibit 1010, ¶ 6.
`
`4.
`
`Lead counsel for the Patent Owner, J. Steven Baughman has indicated that
`
`Patent Owner does not oppose this motion.
`
`5. Maria Vignone, Paralegal Operations Manager for the Patent Trial and
`
`
`
`3
`
`
`
`Appeal Board indicated in an email dated February 10, 2014, that
`
`Petitioner may file a replacement Declaration for Exhibit 1002, with a
`
`motion to expunge the original copy.
`
`6.
`
`Additional supporting facts are discussed in context below.
`
`By this motion, Petitioners requests the following relief:
`
`Relief Requested
`
`• Petitioners asks that Exhibit 1002 be expunged and replaced with the
`
`Corrected Declaration of Dhaval J. Brahmbhatt filed concurrently as
`
`Corrected Exhibit 1002.
`
`• Petitioners ask that the filing date of November 8, 2013 be maintained for
`
`IPR2014-00108.
`
`Discussion
`
`Six inter partes review requests regarding Patent Owner’s patents were
`
`being prepared for Petitioners in parallel for filing on or near November 8, 2013.
`
`IPR2014-00103 is directed to U.S. Patent No. 6,369,416. IPR2014-00104 is
`
`directed to U.S. Patent No. 6,459,635. IPR2014-00105 is directed to U.S. Patent
`
`No. 6,731,536. IPR2014-00106 is directed to U.S. Patent No. 6,900,124.
`
`IPR2014-00107 is directed to U.S. Patent No. 7,018,922. IPR2014-00108 is
`
`directed to U.S. Patent No. 7,151,027. IPR2014-00104-108 were all filed on
`
`November 8, 2013. IPR2014-00103 was filed on November 12, 2013.
`4
`
`
`
`
`During the week of November 4, 2013, the final editing and formatting of
`
`all the IPR petitions, including the ’108 Petition and the Original Brahmbhatt
`
`Declaration was being performed and reviewed. Exhibit 1010, ¶ 4. As part of
`
`this final formatting process, a blank, but numbered, paragraph was deleted from
`
`the Original Brahmbhatt Declaration. The deletion of this paragraph caused an
`
`automatic software renumbering of the paragraphs below the deletion. Exhibit
`
`1010, ¶ 5.
`
`The inadvertent renumbering of the affected paragraphs in the Original
`
`Brahmbhatt Declaration was not noticed and thus not reflected in the final
`
`version of the ’108 Petition. Exhibit 1010, ¶ 6. The ’108 Petition and the
`
`Original Brahmbhatt Declaration containing the errors were filed on November 8,
`
`2013.
`
`The errors in the citations were clerical in nature as they were caused by
`
`automated software renumbering of paragraphs in the Original Brahmbhatt
`
`Declaration.
`
`As noted by the Board “[i]n analyzing the availability of correction under
`
`37 C.F.R. § 42.104, the Board starts with the proposition that the rule is remedial
`
`in nature and is therefore entitled to a liberal interpretation. See, e.g., Tcherepnin
`
`v. Knight, 389 U.S. 332, 336 (1967) (‘[W]e are guided by the familiar canon of
`
`statutory construction that remedial legislation should be construed broadly to
`
`
`
`5
`
`
`
`effectuate its purposes.’); ABB, Inc. v. ROY-G-BIV Corp., IPR2013-00063, Paper
`
`21 (Jan. 16, 2013).
`
`Petitioners respectfully submit that the errors in the citations in the ’108
`
`Petition are the type of clerical errors which are correctable under § 42.104. In
`
`order to correct these errors, Petitioners are filing the Corrected Declaration of
`
`Dhaval J. Brahmbhatt. In the Corrected Declaration, a new paragraph number 48
`
`has been added with the language “This paragraph intentionally left blank” and
`
`the paragraphs below 48 have been correctly renumbered. This correction of the
`
`numbering of the paragraphs does not present a substantive change to the ’108
`
`Petition. The corrected citations do not point to any new sections of references,
`
`do not present new references and are not wholesale substitutions of any section
`
`of the 108 Petition. See, e.g., HBPSI – Hong Kong Ltd. v. SRAM, LLC, IPR2013-
`
`00174, Paper 21 (Aug. 12, 2013). Rather, the corrected citations simply adjust
`
`the erroneous paragraph citations by one paragraph.
`
`Finally, 37 C.F.R. § 42.104 (c) permits the correction of clerical errors
`
`without changing the filing date of the petition.
`
`Accordingly, Petitioners ask that this motion be granted.
`
`
`
`
`
`
`
`Dated: February 19, 2014
`
`
`
`
` /Andrew R. Sommer/
`Andrew R. Sommer (Reg. No. 53,932)
`
`6
`
`
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)
`I hereby certify that on this 19th day of February 2014, a true and correct copy of
`the foregoing “MOTION TO EXPUNGE AND REPLACE DECLARATION OF
`DHAVAL J. BRAHMBHATT (EXHIBIT 1002)” was served, by electronic mail,
`upon the following:
`
`J. Steven Baughman
`Gabrielle E. Higgins
`Ropes & Gray LLP
`One Metro Center
`700 12th Street, NW - Suite 900
`Washington, DC 20005-3948
`steven.baughman@ropesgray.com
`gabrielle.higgins@ropesgray.com
`Counsel for Spansion LLC
`
`Dated: February 19, 2014
`
`WINSTON & STRAWN LLP
`200 Park Avenue
`New York, NY 10166-4193
`D: +1 (212) 294-3325
`F: +1 (212) 294-4700
`mscheer@winston.com
`
`
`Respectfully submitted,
`
`
`/Michael J. Scheer/
`Michael J. Scheer, Reg. No. 34,425
`
`Counsel for Petitioners Macronix
`International Co., Ltd., Macronix Asia
`Limited, Macronix (Hong Kong) Co., Ltd.,
`and Macronix America, Inc.
`
`
`
`7
`
`
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