`
`Patent No. 6,896,775
`IPR2014-00578
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`THE GILLETTE COMPANY, TAIWAN SEMICONDUCTOR
`MANUFACTURING COMPANY, LTD., TSMC NORTH AMERICA CORP.,
`FUJITSU SEMICONDUCTOR LIMITED, and FUJITSU SEMICONDUCTOR
`AMERICA, INC.
`
`Petitioners
`
`v.
`
`ZOND, LLC
`Patent Owner
`__________________
`
`Case IPR2014-007261
`Patent 6,896,773 B2
`__________________
`
`
`JOINT MOTION TO TERMINATE
` PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.72
`
`
`
`
`1 Case IPR2014-01481 has been joined with the instant proceeding.
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`JOINT MOTION TO TERMINATE
`
`
`Pursuant to 35 U.S.C. §317 and 37 C.F.R. § 42.72, and the Board’s
`
`authorization of March 9, 2015, Patent Owner ZOND LLC (“Patent Owner”) and
`
`Petitioners TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY,
`
`LTD. and TSMC NORTH AMERICA CORP (jointly, “TSMC” or “Petitioner”)
`
`(collectively, “the Parties”) have settled their dispute and jointly request
`
`termination of Inter Partes Review No. IPR2014-00726, regarding U.S. 6,896,773
`
`as to Petitioners TAIWAN SEMICONDUCTOR MANUFACTURING
`
`COMPANY, LTD. and TSMC NORTH AMERICA CORP. only. Because
`
`additional petitioners remain, the grant of this motion will not result in the
`
`termination of this inter partes review.
`
`I. RELATED PROCEEDINGS
`
`The following related proceedings are currently before the Office:
`
`U.S. Patent Number
`
`IPR Case Number
`
`6,853,142
`
`7,147,759
`
`7,604,716
`
`IPR2014-00818
`
`IPR2014-00821
`
`IPR2014-00819
`
`IPR2014-00827
`
`IPR2014-00781
`
`IPR2014-00782
`
`IPR2014-00807
`
`IPR2014-00808
`
`1
`
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`JOINT MOTION TO TERMINATE
`
`
`IPR2014-00799
`
`IPR2014-00803
`
`IPR2014-00800
`
`IPR2014-00802
`
`IPR2014-00805
`
`IPR2014-00828
`
`IPR2014-00829
`
`IPR2014-00917
`
`IPR2014-00861
`
`IPR2014-00580
`
`IPR2014-00726
`
`IPR2014-00578
`
`IPR2014-00604
`
`7,808,184
`
`7,811,421
`
`6,805,779
`
`6,806,652
`
`6,896,773
`
`6,896,775
`
`
`
`The Parties have agreed to settle, have dismissed with prejudice their related
`
`district court litigations concerning the Patents, and jointly request termination of
`
`this proceeding and all IPRs as to TSMC for the above listed Patents.1
`
`
`
`
`
`
`1 The Parties are submitting a Joint Motion to Terminate Proceeding in each of the
`
`IPRs filed or joined by TSMC relating to the above-identified patents.
`
`2
`
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`JOINT MOTION TO TERMINATE
`
`
`The various Patents are involved in litigation as follows:
`
`
`
`Caption
`
`Case No. Patents
`
`Defendants
`
`Status
`
`6,805,779
`
`Fujitsu Semiconductor
`
`Admin.
`
`6,806,652
`
`America, Inc.; Fujitsu
`
`Closed;
`
`Zond, Inc. v.
`
`1:13-cv-
`
`6,853,142
`
`Semiconductor Limited;
`
`stipulation
`
`Fujitsu Limited
`
`11634
`
`7,147,759
`
`Taiwan Semiconductor
`
`of
`
`et al.
`
`(MAD)
`
`7,604,716
`
`Manufacturing Company
`
`dismissal
`
`7,808,184
`
`Limited; TSMC North
`
`filed as to
`
`7,811,421
`
`America Corp.
`
`TSMC
`
`Zond, Inc. v.
`
`6,805,779
`
`6,806,652
`
`Renesas
`
`1:13-cv-
`
`6,853,142
`
`Renesas Electronics
`
`Electronics
`
`11625
`
`7,147,759
`
`America, Inc.; Renesas
`
`Corporation et
`
`(MAD)
`
`7,604,716
`
`Electronics Corporation
`
`Pending;
`
`Stayed
`
`al.
`
`7,808,184
`
`7,811,421
`
`6,805,779
`
`6,806,652
`
`Hynix Semiconductor
`
`Zond, Inc. v. SK
`
`1:13-cv-
`
`6,853,142
`
`America, Inc.; SK Hynix
`
`Hynix Inc. et al
`
`11591
`
`7,147,759
`
`America Inc.; SK Hynix
`
`Terminated
`
`
`
`(MAD)
`
`7,604,716
`
`Inc.; SK Hynix Memory
`
`7,808,184
`
`Solutions Inc.
`
`7,811,421
`
`Zond, Inc. v.
`
`1:13-cv-
`
`6,805,779
`
`Toshiba America
`
`Pending;
`
`3
`
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`JOINT MOTION TO TERMINATE
`
`
`Toshiba
`
`11581
`
`6,806,652
`
`Electronic Components,
`
`Stayed
`
`America
`
`(MAD)
`
`6,853,142
`
`Inc.; Toshiba America
`
`Electronic
`
`7,147,759
`
`Information Systems,
`
`Components,
`
`7,604,716
`
`Inc.; Toshiba Corporation
`
`Inc. et al
`
`7,808,184
`
`7,811,421
`
`
`
`Zond, LLC v.
`
`Advanced Micro
`
`Devices, Inc., et
`
`al.
`
`1:13-cv-
`
`11577
`
`(MAD)
`
`6,805,779
`
`Advanced Micro Devices,
`
`6,806,652
`
`Inc.; GlobalFoundries
`
`6,853,142
`
`Dresden Module One
`
`7,147,759
`
`LLC & Co. KG;
`
`Pending;
`
`7,604,716
`
`GlobalFoundries Dresden
`
`Stayed
`
`7,808,184
`
`Module Two LLC & Co.
`
`7,811,421
`
`KG; Global Foundries
`
`US, Inc.
`
`6,805,779
`
`6,806,652
`
`Zond, LLC v.
`
`1:13-cv-
`
`6,853,142
`
`Intel
`
`11570
`
`7,147,759
`
`Intel Corporation
`
`Terminated
`
`Corporation
`
`(MAD)
`
`7,604,716
`
`7,808,184
`
`7,811,421
`
`Zond, Inc. v.
`
`1:13-cv-
`
`The Gillette
`
`11567
`
`Company, et al
`
`(MAD)
`
`6,805,779
`
`The Gillette Company;
`
`6,806,652
`
`The Proctor & Gamble
`
`Pending;
`
`6,853,142
`
`6,896,773
`
`Company
`
`Stayed
`
`
`
`4
`
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`JOINT MOTION TO TERMINATE
`
`
`6,896,775
`
`7,147,759
`
`7,604,716
`
`7,808,184
`
`7,811,421
`
`8,125,155
`
`Zond, Inc. v.
`
`Fujitsu
`
`Semiconductor
`
`Limited et al.
`
`6,806,651
`
`Fujitsu Semiconductor
`
`Admin.
`
`6,896,773
`
`America, Inc.; Fujitsu
`
`Closed;
`
`1:14-cv-
`
`6,896,775
`
`Semiconductor Limited;
`
`stipulation
`
`12438
`
`6,903,511
`
`Taiwan Semiconductor
`
`of
`
`(MAD)
`
`7,095,179
`
`Manufacturing Company
`
`dismissal
`
`7,446,479
`
`Limited; TSMC North
`
`filed as to
`
`America Corp.
`
`TSMC
`
`TSMC
`
`Technology,
`
`Inc., et al. v.
`
`Zond, Inc.
`
`1:14-cv-
`
`00721
`
`(DED)
`
`
`
`6,806,651
`
`6,896,773
`
`6,896,775
`
`6,903,511
`
`7,095,179
`
`7,446,479
`
`Zond, Inc.
`
`Terminated
`
`The related district court litigations between Patent Owner and TSMC have
`
`been settled and stipulated to dismissal with prejudice. Further Zond has stipulated
`
`to dismissal of its appeal to the Federal Circuit from Order Granting Defendant’s
`
`Motion to Enjoin and Denying Plaintiff’s Motion to Transfer entered by the United
`
`5
`
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`JOINT MOTION TO TERMINATE
`
`
`States District Court for the District of Delaware, Chief Judge Leonard P. Stark,
`
`Case No. 1:14-cv-00721;LPS-CJB. The stipulations of dismissals with prejudice
`
`are attached as Exhibit 2012.
`
`The forgoing stipulations of dismissals with prejudice under Fed. R. Civ. P.
`
`41(a)(1)(A)(ii) are effective immediately upon filing, and do not require judicial
`
`approval before becoming effective. See 9 Wright & Miller, Federal Practice and
`
`Procedure: Civil § 2363 (3d ed. 2008, supp. 2014).
`
`II. BRIEF EXPLANATION AS TO WHY TERMINATION IS
`APPROPRIATE
`
`
`
`Inasmuch as no final written decision has yet been entered, and because
`
`Patent Owner and TSMC are jointly making this motion, termination of this IPR as
`
`to TSMC is appropriate, as the Board has not yet “decided the merits of the
`
`proceeding.” 35 U.S.C. § 317(a). Further, because Patent Owner and TSMC
`
`jointly request this termination as to TSMC’s involvement in this Inter Partes
`
`Review, no estoppel under 35 U.S.C. § 315(e) shall attach to TSMC.
`
`Because the merits of any of the IPRs have not been determined, concluding
`
`these IPR proceedings as to TSMC promotes the Congressional goal to establish a
`
`more efficient and streamlined patent system that, inter alia, limits unnecessary
`
`and counterproductive litigation costs. See “Changes to Implement Inter Partes
`
`Review Proceedings, Post-Grant Review Proceedings, and Transitional Program
`
`6
`
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`JOINT MOTION TO TERMINATE
`
`for Covered Business Method Patents,” Final Rule, 77 Fed. Reg., no. 157, p. 48680
`
`(Tuesday, August 14, 2012). By permitting termination of IPR proceedings as to
`
`the parties upon settlement, the PTAB provides certainty as to the outcome of these
`
`proceedings. Terminating IPRs upon settlement fosters an environment that
`
`promotes settlements, thereby creating a timely, cost-effective alternative to
`
`litigation. Should the Board decide to continue the present proceedings as to
`
`TSMC, the Congressional goal of speedy dispute resolutions will be chilled.
`
`Also, both Zond and TSMC have initiated an effort with the remaining
`
`Petitioners in these proceedings to create a plan to address any impact that TSMC’s
`
`withdrawal may have upon them. In accordance with the instructions given by the
`
`Board during the conference on March 9, 2015, a separate motion will be filed by
`
`the remaining Petitioners to provide the details of that plan to the Board.
`
`III. STATUS OF RELATED LITIGATION
`
`As noted above, the related litigation between the Parties has been settled
`
`and the cases have been dismissed with prejudice. Ex. 2012.
`
`IV. REQUEST TO TREAT SETTLEMENT AGREEMENT AS
`CONFIDENTIAL INFORMATION
`
`Pursuant to 37 C.F.R. § 42.74(b), the Parties’ settlement agreement and any
`
`collateral agreements made in contemplation of termination of the proceedings are
`
`in writing, and true and correct copies of such documents are being filed herewith
`
`7
`
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`JOINT MOTION TO TERMINATE
`
`
`as Exhibit 2011 (the “Settlement Agreement”). The Parties desire that the
`
`Settlement Agreement be maintained as business confidential information and be
`
`kept separate from the files of the above captioned IPR under 37 C.F.R. § 42.74(c)
`
`and a separate joint request to that effect is being filed on even date herewith.
`
`V. CONCLUSION
`
`
`
`For the foregoing reasons, Patent Owner and TSMC jointly request that the
`
`Board terminate this Inter Partes Review proceeding as to TSMC.
`
`Respectfully submitted,
`
`For Patent Owner:
`ZOND, LLC
`
`
`
`
`
`/Gregory J. Gonsalves/
`Dr. Gregory J. Gonsalves
`Reg. No. 43,639
`2216 Beacon Lane
`Falls Church, Virginia 22043
`gonsalves@gonsalveslawfirm.com
`
`
`
`
` For Petitioner:
`TAIWAN SEMICONDUCTOR
`MANUFACTURING COMPANY LTD,
`and TSMC NORTH AMERICA CORP.
`
`
`/David L. McCombs/
` David L. McCombs, Reg. No. 32,271
`David M. O’Dell, Reg. No. 42,044
`Haynes and Boone, LLP
`2323 Victory Avenue, Suite 700
`Dallas, TX 75219
`david.mccombs.ipr@haynesboone.com;
`david.odell.ipr@haynesboone.com
`
`Dated: March 10, 2015
`
`
`
`
`
`
`8
`
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`JOINT MOTION TO TERMINATE
`
`
`PETITIONER’S UPDATED EXHIBIT LIST
`
`MARCH 10, 2015
`
`Exhibit
`No.
`Ex. 2001 Affidavit for pro hac vice motion
`
`Description
`
`Ex. 2002 Affidavit for pro hac vice motion
`
`Ex. 2003 Affidavit for pro hac vice motion
`
`Ex. 2004 U.S. Patent 6,398,929
`
`Ex. 2005 Dr. Hartsough’s Expert Declaration
`
`Ex. 2006 Control Systems by Sinha
`
`Ex. 2007 System Dynamics and Control by Eronini
`
`Ex. 2008 Fundamentals of Automatic Control by Weyrick
`
`Ex. 2009 Automatic Control Systems by Luo
`
`Ex. 2010 Mr. DeVito Deposition Transcript
`
`Ex. 2011 Settlement Agreement
`
`Ex. 2012 Stipulations of Dismissals
`
`9
`
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`
`CERTIFICATE OF SERVICE
`
`
`
`
`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that I caused to be served a
`
`true and correct copy of the foregoing “JOINT MOTION TO TERMINATE
`
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.72” as detailed below:
`
`Date of service March 10, 2015
`
`Manner of service email
`
`Documents served JOINT MOTION TO TERMINATE PURSUANT TO 35
`U.S.C. § 317 AND 37 C.F.R. § 42.72; and
`Exhibits 2011-2012
`
`
`Persons Served
`
` David L. McCombs
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`david.mccombs.ipr@haynesboone.com
`USPTO Reg. No. 32,271
`
`David O’Dell
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`david.odell.ipr@haynesboone.com
`USPTO Reg. No. 42,044
`
`
`
`
`/Gregory J. Gonsalves/
`Gregory J. Gonsalves, Reg. No. 43,639
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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