Trials@uspto.gov IPR2014-00781 Paper 5
`
` IPR2014-00782 Paper 5
`571-272-7822
`
` Entered: May 29, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`Petitioner
`v.
`
`ZOND, LLC
`Patent Owner
`____________
`
`Cases IPR2014-00781
`IPR2014-00782
`Patent 7,147,759 B21
`____________
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L. C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order addresses overlapping issues in the above-identified cases. Therefore,
`we issue one order to be filed in both cases. The parties, however, are not
`authorized to use this style heading in subsequent papers.
`
`
`
`

`
`Cases IPR2014-00781 and IPR2014-00782
`Patent 7,147,759 B2
`
`
`
`
`
`
`Taiwan Semiconductor Manufacturing Company, LTD. (“TSMC”) filed a
`petition requesting an inter partes review of U.S. Patent 7,147,759 B2 (“the ’759
`patent”) in each of the above-identified proceedings. Paper 2.2 A conference call
`was held on May 27, 2014, between Judges Turner, Stephens, Chang, Mitchell,
`and Meyer, and respective counsel for TSMC and Patent Owner, Zond, LLC
`(“Zond”).3 Counsel for Intel Corporation (“Intel”) also participated in the
`conference call, because Intel filed a petition, challenging the ’759 patent, in each
`of IPR2014-00445 and IPR2014-00446 in which TSMC seeks to join.
`TSMC initiated the conference call to request authorization to file a motion
`for joinder in each of its proceedings. During the conference call, TSMC indicated
`that its petition for IPR2014-00781 is substantially identical to Intel’s petition filed
`in IPR2014-00445, and that its petition for IPR2014-00782 is also substantially
`identical to Intel’s petition filed in IPR2014-00446. TSMC further notified the
`Board that the expert declaration filed in each of TSMC’s proceedings is from the
`same declarant as Intel, and that the declaration is substantively the same. TSMC
`sought additional guidance from the Board regarding filing a motion for joinder so
`that it could minimize the burden on the Board and help streamline the
`proceedings.
`Intel stated that it will not oppose TSMC’s motion for joinder. Zond,
`however, indicated that it opposes TSMC’s joinder, arguing that joinder would
`increase the costs and burden to Zond due to additional filings of papers. Zond
`
`2 For the purpose of clarity and expediency, we treat IPR2014-00781 as
`representative, and all citations are to IPR2014-00781 unless otherwise noted.
`3 Although Zond has not filed its mandatory notice to designate its counsel for the
`above-identified proceedings, Messrs. Gregory J. Gonsalves and Bruce J. Barker,
`counsel for Zond in IPR2014-00445 and IPR2014-00446, indicated that they have
`authorization to participate in the conference call.
`2
`
`
`
`

`
`Cases IPR2014-00781 and IPR2014-00782
`Patent 7,147,759 B2
`
`
`
`
`
`
`also alleges that TSMC’s motion for joinder is premature because the Board has
`not determined whether to institute an inter partes review in Intel’s proceedings.
`TSMC’s motion for joinder would be moot if the Board denies Intel’s petitions.
`As articulated by the Board during the call, prior authorization for filing a
`motion for joinder—prior to one month after the institution date of any inter partes
`review for which joinder is requested—is not required. See 37 C.F.R. § 42.122(b).
`Zond is not required to file a patent owner preliminary response in TSMC’s
`proceedings, especially in view of the fact that TSMC’s petitions are substantially
`the same as Intel’s petitions. Zond did not explain sufficiently why it would be
`more efficient to have two separate proceedings than one consolidated proceeding.
`The Board explained that having the motion for joinder at the time it decides
`Intel’s petitions would help streamline the proceedings, in that it could decide
`TSMC’s and Intel’s petitions near the same timeframe. Additionally, TSMC
`indicated that it will work with Zond to minimize the burden on the parties.
`For additional guidance, the Board noted that 35 U.S.C. § 315(c) provides:
`JOINDER.—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.
`In that regard, the Board will determine whether to grant joinder on a case-
`by-case basis, taking into account the particular facts of each case, substantive and
`procedural issues, and other considerations. When exercising its discretion, the
`Board is mindful that patent trial regulations, including the 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).
`3
`
`
`
`

`
`Cases IPR2014-00781 and IPR2014-00782
`Patent 7,147,759 B2
`
`
`
`
`
`
`As a moving party, TSMC has the burden of proof in establishing
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A motion for
`joinder should: (1) set forth the reasons why joinder is appropriate; (2) identify
`any new grounds of unpatentability asserted in the petition; (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing review;
`and (4) address specifically how briefing and discovery may be simplified. In
`addition, although TSMC indicated that its petitions are substantially the same as
`Intel’s petitions, TSMC’s motions for joinder should indicate whether it would
`withdraw non-instituted grounds of unpatentability should the Board institute an
`inter partes review with less than all of the asserted grounds of unpatentability in
`Intel’s proceedings. For more information, see Kyocera Corporation v. Softview
`LLC, IPR2013-00004 (PTAB April 24, 2013) (Paper 15); Motorola Mobility LLC
`v. SoftView LLC, IPR2013-00256 (PTAB June 20, 2013) (Paper 10); Avaya, Inc. v.
`Network-1 Security Solutions, Inc., IPR2013-00071 (PTAB June 25, 2013)
`(Paper 26); Dell, Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385
`(PTAB Jul. 29, 2013) (Paper 17); Sony Corporation v. Network-1 Security
`Solutions, Inc., IPR2013-00386 (PTAB Jul. 29, 2013) (Paper 16).
`During the conference call, Zond requested authorization for filing an
`opposition to TSMC’s motion for joinder. In response, the Board authorized Zond
`to file an opposition if TSMC files a motion for joinder.
`In consideration of the foregoing, it is hereby:
`ORDERED that, should TSMC file a motion for joinder, Zond is authorized
`to file an opposition to TSMC’s motion for joinder within ten business days,
`limited to ten pages; and
`FURTHER ORDERED that no reply is authorized.
`
`4
`
`
`
`
`
`

`
`
`
`Cases IPR2014-00781 and IPR2014-00782
`Patent 7,147,759 B2
`
`
`
`
`PETITIONER:
`
`David L. McCombs
`David M. O’Dell
`HAYNES AND BOONE, LLP
`david.mccombs.ipr@haynesboone.com
`david.odell.ipr@haynesboone.com
`
`Richard C. Kim
`DUANE MORRIS LLP
`rckim@duanemorris.com
`
`PATENT OWNER:
`
`RAUSCHENBACH PATENT LAW GROUP, LLC
`P.O. BOX 849
`Franconia, NH 03580
`
`
`
`
`5