`Tel: 571-272-7822
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`Paper 20
`Entered: June 11, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`MACRONIX INTERNATIONAL CO., LTD., MACRONIX ASIA
`LIMITED, MACRONIX (HONG KONG) CO., LTD., and
`MACRONIX AMERICA, INC.,
`Petitioner,
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`v.
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`SPANSION LLC,
`Patent Owner.
`____________
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`Case IPR2014-00103 (Patent 6,369,416 B1)
`Case IPR2014-00104 (Patent 6,459,625 B1)
`Case IPR2014-00105 (Patent 6,731,536 B1)
`Case IPR2014-00108 (Patent 7,151,027 B1)
`Case IPR2014-00898 (Patent 7,151,027 B1)1
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`Before HOWARD B. BLANKENSHIP, DEBRA K. STEPHENS,
`KRISTEN L. DROESCH, JUSTIN T. ARBES, and
`RICHARD E. RICE, Administrative Patent Judges.
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`ARBES, Administrative Patent Judge.
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`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
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`1 This Order addresses issues pertaining to all five cases. We exercise our
`discretion to issue one Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
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`
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`Cases IPR2014-00103, IPR2014-00104, IPR2014-00105,
`IPR2014-00108, and IPR2014-00898
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`An initial conference call in Cases IPR2014-00103, IPR2014-00104,
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`IPR2014-00105, and IPR2014-00108 was held on June 5, 2014, among
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`respective counsel for Petitioner and Patent Owner, and Judges Blankenship,
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`Stephens, Droesch, Arbes, and Rice. The purpose of the call was to discuss
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`any proposed changes to the Scheduling Order in each proceeding and any
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`motions the parties intend to file. Prior to the call, the parties filed lists of
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`proposed motions. See IPR2014-00103, Paper 11; IPR2014-00104, Papers
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`12, 13; IPR2014-00105, Papers 16, 17; IPR2014-00108, Paper 18. A
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`subsequent conference call was held on June 9, 2014, regarding Cases
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`IPR2014-00108 and IPR2014-00898. The following issues were discussed
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`during the calls.
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`Schedule
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`The parties indicated that they had no issues with DUE DATES 1-6 in
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`the Scheduling Order in each proceeding. Patent Owner requested that
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`DUE DATE 7 be modified for at least some of the four instituted
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`proceedings to allow the parties sufficient time to prepare in between
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`hearings. We instructed the parties to confer with each other and provide, in
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`a single email to Trials@uspto.gov, several other dates when both parties
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`would be available for oral argument during the weeks of January 12 and 19,
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`2015. Patent Owner’s request will be subject to Board availability. The
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`parties also are reminded that they may stipulate to different dates for DUE
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`DATES 1 through 3 in the Scheduling Orders (provided the dates are no
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`later than DUE DATE 4) and, if they do so, the parties shall file promptly a
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`notice of the stipulation.
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`2
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`Cases IPR2014-00103, IPR2014-00104, IPR2014-00105,
`IPR2014-00108, and IPR2014-00898
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`Motion for Additional Discovery
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`Patent Owner stated that it intends to seek additional discovery
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`regarding secondary considerations of nonobviousness, such as copying, in
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`Case IPR2014-00105. Patent Owner indicated that it had mentioned the
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`issue to Petitioner, but had not yet conferred about the matter in detail. We
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`advised the parties that they should continue their discussions and, if the
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`parties are unable to reach an agreement, Patent Owner may request another
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`conference call to seek authorization to file a motion for additional discovery
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`under 37 C.F.R. § 42.51(b)(2). To make the parties’ discussions more
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`productive, Patent Owner should identify for Petitioner, as specifically as
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`possible, exactly what materials Patent Owner is requesting.
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`The parties also are directed to Garmin Int’l, Inc. v. Cuozzo Speed
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`Techs. LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013), for guidance
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`regarding motions for additional discovery. In particular, the mere
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`possibility of finding something useful and a mere allegation that something
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`useful will be found are insufficient. Further, requests for discovery will not
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`be granted if they are unduly broad and burdensome.
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`
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`Motion to Submit Supplemental Information
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`Petitioner requested authorization to file, in Cases IPR2014-00104
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`and IPR2014-00105, a motion to submit certain documents as supplemental
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`information pursuant to 37 C.F.R. § 42.123(a). Petitioner stated that after
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`filing its petitions in the instant proceedings, Patent Owner’s technical
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`expert, Sanjay Banerjee, Ph.D, and the named inventor of the challenged
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`patent in IPR2014-00105 were deposed in the U.S. International Trade
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`Commission investigation involving the two challenged patents, Certain
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`3
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`Cases IPR2014-00103, IPR2014-00104, IPR2014-00105,
`IPR2014-00108, and IPR2014-00898
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`Flash Memory Chips and Products Containing Same, Inv. No. 337-TA-893.
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`Petitioner argued that certain excerpts of the deposition transcripts, expert
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`reports, and exhibits are relevant to the instant proceedings because they
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`discuss the challenged patents and prior art. Patent Owner responded that
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`Petitioner had not yet identified the specific portions of the documents it
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`would like to submit as supplemental information. Patent Owner also
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`expressed its concern that any new information that is submitted be
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`complete, rather than merely excerpts. As discussed during the call,
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`Petitioner should identify for Patent Owner the specific portions of the
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`documents and, if the parties are unable to reach an agreement, Petitioner
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`may request another conference call to seek authorization to file a motion to
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`submit supplemental information.
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`Motion to Amend
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`Patent Owner stated that it had not yet determined whether it intends
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`to file a motion to amend in any of the four instituted proceedings. If Patent
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`Owner decides to file a motion to amend, Patent Owner must request a
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`conference call and confer with the Board before doing so. See 37 C.F.R.
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`§ 42.121(a). The parties are referred to Idle Free Systems, Inc. v. Bergstrom,
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`Inc., IPR2012-00027, Paper 26 (June 11, 2013), and Toyota Motor Corp.
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`v. American Vehicular Sciences LLC, IPR2013-00419, Paper 32 (Mar. 7,
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`2014), for guidance regarding the requirements for motions to amend.
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`4
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`Cases IPR2014-00103, IPR2014-00104, IPR2014-00105,
`IPR2014-00108, and IPR2014-00898
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`Joinder
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`On May 8, 2014, we instituted an inter partes review of claims 1-6
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`and 8-13 of U.S. Patent No. 7,151,027 B1 (“the ’027 patent”) in
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`Case IPR2014-00108, and denied institution as to claims 7 and 14. On June
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`4, 2014, Petitioner filed a new petition in Case IPR2014-00898 challenging
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`claims 7 and 14, along with a motion for joinder with Case IPR2014-00108.
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`Patent Owner stated during the call on June 9, 2014 that it intends to
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`oppose the motion for joinder. As discussed during the call, Patent Owner
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`will be permitted to file an opposition to the motion for joinder by June 23,
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`2014. Petitioner, in its motion, did not provide a proposed revised trial
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`schedule for the joined proceeding if its motion is granted. Petitioner shall
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`file a notice with its proposed dates by June 13, 2014. The notice may not
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`contain any argument. In its opposition, Patent Owner should address
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`Petitioner’s proposed revised trial schedule and state, if joinder is granted,
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`what schedule Patent Owner would propose.
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`We also addressed the time period for any preliminary response in
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`Case IPR2014-00898. As explained during the call, given that the petition
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`in Case IPR2014-00898 challenges only two claims based on one ground of
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`unpatentability, an expedited schedule is appropriate. The due date for
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`Patent Owner to file a preliminary response in Case IPR2014-00898, should
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`it choose to do so, will be set to July 16, 2014.
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Patent Owner is not authorized to file a motion for
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`additional discovery, and Petitioner is not authorized to file a motion to
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`submit supplemental information, at this time;
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`5
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`
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`Cases IPR2014-00103, IPR2014-00104, IPR2014-00105,
`IPR2014-00108, and IPR2014-00898
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`FURTHER ORDERED that Petitioner shall file in Case
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`IPR2014-00898 a notice setting forth its proposed revised trial schedule if
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`the motion for joinder is granted by June 13, 2014, limited to one page and
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`not containing any argument;
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`FURTHER ORDERED that Patent Owner is authorized to file in Case
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`IPR2014-00898 an opposition to Petitioner’s motion for joinder by June 23,
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`2014, limited to ten pages;
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`FURTHER ORDERED that no reply is authorized; and
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`FURTHER ORDERED that Patent Owner may file a preliminary
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`response in Case IPR2014-00898 by July 16, 2014.
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`6
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`
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`Cases IPR2014-00103, IPR2014-00104, IPR2014-00105,
`IPR2014-00108, and IPR2014-00898
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`PETITIONER:
`
`Michael M. Murray
`Andrew R. Sommer
`Bryan N. DeMatteo
`Vivian S. Kuo
`WINSTON & STRAWN
`mmurray@winston.com
`asommer@winston.com
`bdematteo@winston.com
`vkuo@winston.com
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`PATENT OWNER:
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`J. Steven Baughman
`Gabrielle E. Higgins
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`gabrielle.higgins@ropesgray.com
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`7
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