Paper 15
`Trials@uspto.gov
`571-272-7822
`
` Entered: October 9, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ADVANCED MICRO DEVICES, INC., RENESAS ELECTRONICS
`CORPORATION, RENESAS ELECTRONICS AMERICA, INC.,
`GLOBAL FOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG, TOSHIBA AMERICA ELECTRONIC
`COMPONENTS, INC., TOSHIBA AMERICA INC., TOSHIBA
`AMERICA INFORMATION SYSTEMS, INC., and
`TOSHIBA CORPORATION,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-01059
`Patent 7,147,759 B2
`____________
`
`
`
`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.
`
`DECISION
`Granting Revised Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
` Entered: October 9, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ADVANCED MICRO DEVICES, INC., RENESAS ELECTRONICS
`CORPORATION, RENESAS ELECTRONICS AMERICA, INC.,
`GLOBAL FOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG, TOSHIBA AMERICA ELECTRONIC
`COMPONENTS, INC., TOSHIBA AMERICA INC., TOSHIBA
`AMERICA INFORMATION SYSTEMS, INC., and
`TOSHIBA CORPORATION,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-01059
`Patent 7,147,759 B2
`____________
`
`
`
`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.
`
`DECISION
`Granting Revised Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`
`IPR2014-01059
`Patent 7,147,759 B2
`
`
`
`
`
`
`INTRODUCTION
`
`Petitioners (collectively, “AMD”) filed a Petition requesting an inter
`
`partes review of claims 22–33, 37, 46, 48, and 50 of U.S. Patent
`
`7,147,759 B2 (Ex. 1301, “the ’759 patent”). Paper 2 (“Pet.”). Pursuant to
`
`37 C.F.R. § 42.122(b), AMD also filed a revised Motion for Joinder with
`
`Taiwan Semiconductor Manuf. Co., Ltd. v. Zond, LLC., Case
`
`IPR2014-00782 (PTAB) (“IPR2014-00782”). Paper 9 (“Mot.”).
`
`The Petitioners1 in IPR2014-007822 do not oppose AMD’s revised
`
`Motion for Joinder. Mot. 1. Patent Owner, Zond, LLC (“Zond”), filed a
`
`Preliminary Response to the Petition (Paper 7, “Prelim. Resp.”) and
`
`an Opposition to AMD’s revised Motion for Joinder (Paper 10, “Opp.”).
`
`In a separate decision, entered concurrently, we institute an inter partes
`
`review as to the same claims on the same grounds of unpatentability for
`
`which we instituted trial in IPR2014-00782. For the reasons set forth below,
`
`AMD’s revised 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. 35 U.S.C. § 315. The statutory
`
`
`1 The Petitioners in IPR2014-00782 are:
`
`(1) Taiwan Semiconductor Manufacturing Company, Ltd. and TSMC North
`America Corporation (collectively, “TSMC”); and
`
`(2) Fujitsu Semiconductor Limited and Fujitsu Semiconductor America, Inc.
`(collectively, “Fujitsu”).
`2 IPR2014-00850 has been joined with IPR2014-00782.
`2
`
`
`
`
`
`IPR2014-01059
`Patent 7,147,759 B2
`
`
`
`
`
`
`provision governing joinder of inter partes review proceedings is
`
`35 U.S.C § 315(c), which 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.
`
`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 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, AMD bears the burden to show that joinder is
`
`appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). In its revised Motion for
`
`Joinder, AMD 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. 6);
`
`(2) AMD’s Petition is substantively identical to TSMC’s Petition filed in
`
`IPR2014-00782 (id. at 6–7); (3) AMD agrees to consolidated filings and
`
`discovery (id. at 7–8); (4) joinder would not affect the schedule in
`
`IPR2014-00782 (id. at 8); (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 9).
`
`
`
`3
`
`
`
`IPR2014-01059
`Patent 7,147,759 B2
`
`
`
`
`
`
`We agree that the substantive issues in IPR2014-00782 would not be
`
`affected by joinder, because AMD’s Petition is substantively identical to
`
`TSMC’s Petition filed in IPR2014-00782. Notably, AMD’s Petition asserts
`
`identical grounds of unpatentability, challenging the same claims of the ’759
`
`patent. Compare Pet. 18– 60, with IPR2014-00782, Paper 2 (“’782 Pet.”),
`
`18–59. AMD also submits identical claim constructions, as well as the same
`
`Declaration of Dr. Uwe Kortshagen. Compare Pet. 15–18, with ’782 Pet.
`
`15–18; compare Ex. 1302, with ’782 Ex. 1302. Moreover, we institute the
`
`instant trial based on the same grounds for which we instituted trial in
`
`IPR2014-00782. Therefore, AMD’s Petition raises no new issues beyond
`
`those already before us in IPR2014-00782.
`
`In its Opposition, Zond indicates that it is not opposed to joinder.
`
`Opp. 1. Rather, Zond proposes a procedure for the joined proceeding to
`
`consolidate the schedule, filings, and discovery. Opp. 2–3.
`
`We agree with the parties that conducting a single joined proceeding
`
`for reviewing claims 22–33, 37, 46, 48, and 50 of the ’759 patent is more
`
`efficient than conducting multiple proceedings, eliminating duplicate filings
`
`and discovery. AMD agrees to consolidated filings for all substantive
`
`papers. Mot. 7–8. AMD indicates that it will not file any paper with
`
`arguments different from those advanced by the consolidated filings,
`
`eliminating duplicate briefing. Id. AMD further agrees to consolidated
`
`discovery, as each Petitioner proffers the same Declaration of
`
`Dr. Kortshagen. Id. AMD indicates that Petitioners of the joined
`
`proceeding 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
`
`
`
`4
`
`
`
`IPR2014-01059
`Patent 7,147,759 B2
`
`
`
`
`
`
`the rules for one party. Id. at 7. Moreover, joinder will not require any
`
`change to the trial schedule in IPR2014-00782, allowing the trial still to be
`
`completed within one year. Id. at 8. Given that AMD’s Petition raises no
`
`new issues, and Petitioners agree to consolidated filings and discovery, the
`
`impact of joinder on IPR2014-00782 will be minimal, and joinder will
`
`streamline the proceedings, reducing the costs and burdens on the parties
`
`and the Board.
`
`For the foregoing reasons, AMD has met its burden of demonstrating
`
`that joinder of the instant proceeding with IPR2014-00782 is warranted
`
`under the circumstances.
`
`In consideration of the foregoing, it is hereby:
`
`ORDER
`
`ORDERED that AMD’s Motion for Joinder with IPR2014-00782 is
`
`granted;
`
`FURTHER ORDERED that the instant proceeding is joined with
`
`IPR2014-00782;
`
`FURTHER ORDERED that the grounds of unpatentability on which a
`
`trial was instituted in IPR2014-00782 are unchanged;
`
`FURTHER ORDERED that the Scheduling Order for IPR2014-00782
`
`(Paper 12) shall govern the joined proceeding; the initial conference call for
`
`the joined proceeding is scheduled on October 27, 2014 at 2:00 p.m. 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 IPR2014-00782;
`
`
`
`5
`
`
`
`IPR2014-01059
`Patent 7,147,759 B2
`
`
`
`
`
`
`FURTHER ORDERED that, throughout IPR2014-00782, Petitioners
`
`(TSMC, Fujitsu, and AMD) will file papers, except for motions which do
`
`not involve the other parties, as consolidated filings3; TSMC will identify
`
`each such filing as a consolidated filing and will be responsible for
`
`completing all consolidated filings; the page limits set forth in 37 C.F.R.
`
`§ 42.24 will apply to all consolidated filings (e.g., a consolidated filing of a
`
`reply to a patent owner response should be 15 pages or less);
`
`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 IPR2014-00782 shall
`
`be changed to reflect the joinder with the instant proceeding in accordance
`
`with the attached example; and
`
`
`3 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.
`
`
`
`6
`
`
`
`IPR2014-01059
`Patent 7,147,759 B2
`
`
`
`
`
`
`FURTHER ORDERED that a copy of this Decision be entered into
`
`the file of IPR2014-00781.
`
`
`
`
`
`7
`
`
`
`IPR2014-01059
`Patent 7,147,759 B2
`
`
`
`
`
`
`For 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
`
`David Tennant
`White & Case LLP
`dtennant@whitecase.com
`
`Brian Berliner
`Ryan Yagura
`Xin-Yi Zhou
`O’Melveny & Meyers LLO
`bberliner@omm.com
`ryagura@omm.com
`vzhou@omm.com
`
`Robinson Vu
`Baker Botts LLP
`Robinson.vu@bakerbotts.com
`
`John Feldhaus
`Pavan Agarwal
`Michael Houston
`Foley & Lardner LLP
`jfeldhaus@foley.com
`pagarwal@foley.com
`mhouston@foley.com
`
`
`
`PATENT OWNER:
`
`
`
`
`8
`
`
`
`IPR2014-01059
`Patent 7,147,759 B2
`
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`CHAO HADIDI STARK & BARKER LLP
`bbarker@chsblaw.com
`
`
`
`
`
`
`
`
`
`
`
`9
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
`TSMC NORTH AMERICA CORPORATION,
`FUJITSU SEMICONDUCTOR LIMITED,
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`ADVANCED MICRO DEVICES, INC., RENESAS ELECTRONICS
`CORPORATION, RENESAS ELECTRONICS AMERICA, INC.,
`GLOBAL FOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG, TOSHIBA AMERICA ELECTRONIC
`COMPONENTS, INC., TOSHIBA AMERICA INC., TOSHIBA
`AMERICA INFORMATION SYSTEMS, INC., and
`TOSHIBA CORPORATION
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-007821
`Patent 7,147,759 B2
`____________
`
`
`
`
`
`
`1 Cases IPR2014-00850 and IPR2014-01059 have been joined with the
`instant proceeding.
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