Paper 12
`Trials@uspto.gov
`571-272-7822
`
` Entered: November 12, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
`TSMC NORTH AMERICA CORP., FUJITSU SEMICONDUCTOR
`LIMITED, and FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01481
`Patent 6,896,773 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, SUSAN L.C. MITCHELL,
`and JENNIFER M. MEYER, Administrative Patent Judges.
`
`
`TURNER, Administrative Patent Judge.
`
`DECISION
`Granting Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
` Entered: November 12, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
`TSMC NORTH AMERICA CORP., FUJITSU SEMICONDUCTOR
`LIMITED, and FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01481
`Patent 6,896,773 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, SUSAN L.C. MITCHELL,
`and JENNIFER M. MEYER, Administrative Patent Judges.
`
`
`TURNER, Administrative Patent Judge.
`
`DECISION
`Granting Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-01481
`Patent 6,896,773 B2
`
`
`
`
`
`
`INTRODUCTION
`
`Taiwan Semiconductor Manufacturing Company, Ltd., TSMC North
`
`America Corp., Fujitsu Semiconductor Limited, and Fujitsu Semiconductor
`
`America (collectively, “Petitioner”) filed a Petition requesting inter partes
`
`review of claims 21–33 and 40 of U.S. Patent No. 6,896,773 B2 (Ex. 1101,
`
`“the ’773 Patent”). Paper 3 (“Pet.”). Pursuant to 37 C.F.R. § 42.122(b),
`
`Petitioner also filed a Motion for Joinder, seeking to join the instant
`
`proceeding with The Gillette Company v. Zond, LLC, Case IPR2014-00726
`
`(PTAB) (“IPR2014-00726”). Paper 5 (“Mot.”).
`
`The Gillette Company (“Gillette”), the Petitioner in IPR2014-00726,
`
`does not oppose the instant Petitioner’s Motion for Joinder. Mot. 2. Patent
`
`Owner, Zond, LLC (“Zond”), filed a Preliminary Response to the Petition
`
`(Paper 10, “Prelim. Resp.”), and an Opposition to Petitioner’s Motion for
`
`Joinder (Paper 9, “Opp.”). In a separate decision, we institute inter partes
`
`review as to the same claims on the same ground of unpatentability for
`
`which we instituted trial in IPR2014-00726. For the reasons set forth below,
`
`Petitioner’s Motion for Joinder is granted.
`
`ANALYSIS
`
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
`
`284 (2011) (“AIA”) permits joinder of like review proceedings. The Board,
`
`acting on behalf of the Director, has the discretion to join an inter partes
`
`review with another inter partes review. See 35 U.S.C. § 315(c). Joinder
`
`may be authorized when warranted, but the decision to grant joinder is
`
`discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. When exercising its
`
`discretion, the Board is mindful that patent trial regulations, including the
`
`
`
`2
`
`
`
`IPR2014-01481
`Patent 6,896,773 B2
`
`
`
`
`
`
`rules for joinder, must be construed to secure the just, speedy, and
`
`inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b);
`
`37 C.F.R. § 42.1(b). The Board considers the impact of both substantive
`
`issues and procedural matters on the proceedings.
`
`As the moving party, Petitioner bears the burden to show that joinder
`
`is appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). In its Motion for Joinder,
`
`Petitioner contends that joinder, in this particular situation, is appropriate
`
`because: (1) “it is the most expedient way to secure the just, speedy, and
`
`inexpensive resolution of the related proceedings” (Mot. 4); (2) Petitioner’s
`
`Petition is substantively identical to Gillette’s Petition filed in IPR2014-
`
`00726 (id. at 5); (3) Petitioner agrees to consolidated filings and discovery
`
`(id. at 5–6); (4) joinder would not affect the schedule in IPR2014-00726
`
`(id. at 6–7); and (5) joinder would streamline the proceedings, reduce the
`
`costs and burdens on the parties, and increase efficiencies for the Board
`
`without any prejudice to Zond (id. at 7).
`
`We agree that the substantive issues in IPR2014-00726 would not be
`
`affected by joinder, because the instant Petition is substantively identical to
`
`Gillette’s Petition filed in IPR2014-00726. Notably, the instant Petition
`
`asserts identical grounds of unpatentability, challenging the same claims of
`
`the ’773 Patent. Compare Pet. 22–35, 47–50, 54–58, with IPR2014-00726,
`
`Paper 3 (“’726 Pet.”), 23–36, 47–50, 55–59. Petitioner also submits
`
`identical proposed claim constructions, as well as the same Declaration of
`
`Mr. Richard DeVito. Compare Pet. 4–6, with ’726 Pet. 4–6; compare
`
`Ex. 1105, with ’726 Ex. 1105. Moreover, we institute the instant trial based
`
`on the same ground for which we instituted trial in IPR2014-00726.
`
`
`
`3
`
`
`
`IPR2014-01481
`Patent 6,896,773 B2
`
`
`
`
`
`
`Therefore, the instant Petition raises no new issues beyond those already
`
`before us in IPR2014-00726.
`
`In its Opposition, Zond indicates that it has specific requirements for
`
`joinder, although it does not raise specific objections. Opp. 1. Zond
`
`proposes a procedure for the joined proceeding to consolidate the schedule,
`
`filings, and discovery. Opp. 1–3.
`
`We agree with the parties that conducting a single joined proceeding
`
`for reviewing claims 21–33 and 40 of the ’773 Patent is more efficient than
`
`conducting multiple proceedings, eliminating duplicate filings and
`
`discovery. As previously indicated, Petitioner agrees to consolidated filings
`
`for all substantive papers. Mot. 5–6. Petitioner further indicates that it will
`
`not file any paper with arguments separate from those advanced by the
`
`consolidated filings, eliminating duplicate briefing. Id. at 6. Petitioner
`
`further agrees to consolidated discovery, as each Petitioner proffers the same
`
`Declaration of Mr. DeVito. Id. Petitioner indicates that Petitioners of the
`
`joined proceeding (Gillette and Petitioner) collectively will designate an
`
`attorney to conduct the cross-examination of any witnesses produced by
`
`Zond and the redirect of any witnesses produced by Petitioners, within the
`
`timeframe normally allotted by the rules for one party. Id. Moreover,
`
`joinder will not require any change to the trial schedule in IPR2014-00726,
`
`allowing the trial still to be completed within one year. Id. at 8–9. Given
`
`that the instant Petition raises no new issues, and Petitioners agree to
`
`consolidated filings and discovery, the impact of joinder on IPR2014-00726
`
`will be minimal, and joinder will streamline the proceedings, reducing the
`
`costs and burdens on the parties and the Board.
`
`
`
`4
`
`
`
`IPR2014-01481
`Patent 6,896,773 B2
`
`
`
`
`
`
`For the foregoing reasons, Petitioner has met its burden of
`
`demonstrating that joinder of the instant proceeding with IPR2014-00726 is
`
`warranted under the circumstances.
`
`Accordingly, it is:
`
`ORDER
`
`ORDERED that Petitioner’s Motion for Joinder with IPR2014-00726
`
`is granted;
`
`FURTHER ORDERED that the instant proceeding is joined with
`
`IPR2014-00726;
`
`FURTHER ORDERED that the grounds of unpatentability on which a
`
`trial was instituted in IPR2014-00726 are unchanged;
`
`FURTHER ORDERED that the Scheduling Order for IPR2014-00726
`
`(Paper 9) shall govern the joined proceeding, with the exception of the initial
`
`conference call; the initial conference call for this proceeding is scheduled
`
`on November 13, 2014 at 2:00 PM ET;
`
`FURTHER ORDERED that the instant proceeding is instituted,
`
`joined, and terminated under 37 C.F.R. § 42.72, and all further filings in the
`
`joined proceeding shall be made only in IPR2014-00726;
`
`FURTHER ORDERED that, throughout IPR2014-00726, Petitioners
`
`(Gillette and Petitioner) will file papers, except for motions which do not
`
`involve the other parties, as consolidated filings1; Gillette will identify each
`
`such filing as a consolidated filing and will be responsible for completing all
`
`
`1 The parties are directed to the Board’s website, in particular FAQs C3, D5,
`and G8, for information regarding filings in the Patent Review Processing
`System (PRPS). See http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`
`
`
`5
`
`
`
`IPR2014-01481
`Patent 6,896,773 B2
`
`
`
`
`
`
`consolidated filings; the page limits set forth in 37 C.F.R. § 42.24 will apply
`
`to all consolidated filings; no individual Petitioner will receive any
`
`additional pages in addition to the page limits set forth in 37 C.F.R. § 42.24
`
`for one party;
`
`FURTHER ORDERED that Zond will conduct the cross-examination
`
`of witnesses, as well as the redirect examination of any witness it produces,
`
`in the timeframes set forth in 37 C.F.R. § 42.53(c);
`
`FURTHER ORDERED that Petitioners collectively will designate
`
`attorneys to conduct the cross-examination of any witnesses produced by
`
`Zond and the redirect examination of any witnesses produced by Petitioners,
`
`within the timeframes set forth in 37 C.F.R. § 42.53(c) for one party; no
`
`individual Petitioner will receive any cross-examination or redirect
`
`examination time in addition to the time normally allotted by 37 C.F.R.
`
`§ 42.53(c) for one party;
`
`FURTHER ORDERED that Petitioners collectively will designate
`
`attorneys to present at the oral hearing (if requested) as a consolidated
`
`presentation;
`
`FURTHER ORDERED that the case caption in IPR2014-00726 shall
`
`be changed to reflect the joinder with the instant proceeding in accordance
`
`with the attached example; and
`
`FURTHER ORDERED that a copy of this Decision be entered into
`
`the file of IPR2014-00726.
`
`
`
`
`
`6
`
`
`
`IPR2014-01481
`Patent 6,896,773 B2
`
`
`For PETITIONER:
`
`
`
`
`
`David M. O’Dell
`David L. McCombs
`Haynes and Boone, LLP
` david.odell.ipr@haynesboone.com
`david.mccombs.ipr@haynesboone.com
`
`
`PATENT OWNER:
`
`Gregory Gonsalves
`The Gonsalves Law firm
`gonsalves@gonsalveslawfirm.com
`
`Bruce Barker
`Chao Hadidi Stark & Barker LLP
`bbarker@chsblaw.com
`
`
`
`
`7
`
`
`
`
`
`
`
`
`
`
`
`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.,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-007261
`Patent 6,896,773 B2
`____________
`
`
`1 Case IPR2014-01481 has been joined with the instant proceeding.
`
`
`
`
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