`IPR2014-00782 (U.S. 7,147,759)
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`Paper No.
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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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`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.,
`TOSHIBA CORPORATION, and
`THE GILLETTE COMPANY,
`Petitioners,
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`v.
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`ZOND, LLC,
`Patent Owner
`____________________________________________
`
`Case IPR2014-007821
`Patent 7,147,759 B2
`____________________________________________
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`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION
`PURSUANT TO 37 C.F.R. § 42.10(C)
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`1 Cases IPR 2014-00850, IPR 2014-00986, and IPR 2014-01059 have been joined
`with the instant proceeding.
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`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00782 (U.S. 7,147,759)
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`This Motion for Pro Hac Vice admission is filed solely on behalf of Taiwan
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`Semiconductor Manufacturing Company, Ltd. and TSMC North America
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`(collectively “TSMC” or “Petitioner”). TSMC respectfully moves that the Board
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`recognize Mr. Anthony J. Fitzpatrick as counsel pro hac vice during this
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`proceeding.
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`1. Time for Filing
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`This Motion for Pro Hac Vice Admission is being filed no sooner than
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`twenty one (21) days after service of the petition. (IPR2013-00639, Paper No. 7).
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`2. Statement of Facts Showing Good Cause for Counsel Pro Hac Vice
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`Petitioner has been authorized to file motions seeking admission pro hac
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`vice under 37 C.F.R. 42.10(c). (Paper No. 4). Petitioner’s lead and back-up
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`counsel are registered practitioners:
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`Lead Counsel: David L. McCombs, USPTO Reg. No. 32,271; and
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`Backup Counsel: David M. O’Dell, USPTO Reg. No. 42,044.
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`The following statement of facts shows that there is good cause for the
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`Board to recognize Mr. Fitzpatrick pro hac vice on behalf of Petitioner.
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` In summary, Mr. Fitzpatrick is an experienced litigator, has established
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`familiarity with the subject matter at issue in this proceeding from his participation
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`in co-pending litigation involving the subject patent, and if admitted, will be
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`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00782 (U.S. 7,147,759)
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`involved in the depositions that occur in this proceeding. Specifically, U.S. Patent
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`No. 7,147,759 is currently asserted against Petitioner in co-pending litigation, in
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`the District of Massachusetts, 1:13-cv-11634-WGY (Zond v. Fujitsu, et al.) (“the
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`co-pending litigation”). Mr. Fitzpatrick is a member of the Massachusetts bar in
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`good standing, and is representing the Petitioner, in the co-pending litigation.
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`Mr. Fitzpatrick has analyzed prior art references and claim charts in
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`connection with invalidity contentions and has been involved in forming claim
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`construction positions related to the claimed inventions, all of which are relevant to
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`the petition requesting inter partes review of U.S. Patent No. 7,147,759. Petitioner
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`wishes to apply Mr. Fitzpatrick’s knowledge of the patent by employing him as
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`counsel in this proceeding. Admission of Mr. Fitzpatrick pro hac vice will enable
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`Petitioner to avoid unnecessary expense and duplication of work between this
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`proceeding and the co-pending litigation.
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`Petitioner’s lead and backup counsel are registered practitioners and Mr.
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`Fitzpatrick is an experienced litigation attorney having familiarity with the subject
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`matter at issue in this proceeding. Therefore, Petitioners respectfully submit that
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`there is good cause for the Board to recognize Mr. Fitzpatrick as counsel pro hac
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`vice during this proceeding.
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`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00782 (U.S. 7,147,759)
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`3. Affidavit of Individual Seeking to Appear
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`This Motion for Pro Hac Vice Admission is supported by an Affidavit of
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`Respectfully submitted,
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`/David L. McCombs/
`David L. McCombs
`Lead Counsel for Petitioner TSMC
`Registration No. 32,271
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`Mr. Fitzpatrick (Ex. 1321).
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`Date: October 27, 2014
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`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00782 (U.S. 7,147,759)
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`Petitioner’s Updated Exhibit List
`October 27, 2014
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`Exhibit
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`1301
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`1302
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`U.S. Patent No. 7,147,759
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`Kortshagen Declaration
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`a)
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`Description
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`1303
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`1304
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`1305
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`1306
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`1307
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`1308
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`1309
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`1310
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`1311
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`1312
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`D.V. Mozgrin, et al, High-Current Low-Pressure Quasi-
`Stationary Discharge in a Magnetic Field: Experimental
`Research, Plasma Physics Reports, Vol. 21, No. 5, pp. 400-
`409, 1995 (“Mozgrin”)
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`A. A. Kudryavtsev and V. N. Skerbov, Ionization relaxation
`in a plasma produced by a pulsed inert-gas discharge, Sov.
`Phys. Tech. Phys. 28(1) pp. 30-35, January 1983
`(“Kudryavtsev”)
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`U.S. Pat. No. 6,413,382 (“Wang”)
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`Plasma Etching: An Introduction, by Manos and Flamm, pp.
`185-258, Academic Press (1989) (“Manos”)
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`File History for U.S. Pat. No. 7,147,759, Response of June 14,
`2004 (“06/14/04 Response”)
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`File History for U.S. Pat. No. 7,147,759, Office Action of
`August 30, 2004 (“08/30/04 Office Action”)
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`File History for U.S. Pat. No. 7,147,759, Response of
`February 24, 2005 (“02/24/05 Response”)
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`File History for U.S. Pat. No. 7,147,759, Office Action of
`May 27, 2005, (“05/27/05 Office Action”)
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`File History for U.S. Pat. No. 7,147,759, Request for
`Continued Examination of October 27, 2005 (“10/27/05
`RCE”)
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`File History for U.S. Pat. No. 7,147,759, Office Action of
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`January 11, 2006 (“01/11/06 Office Action”)
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`File History for U.S. Pat. No. 7,147,759,Response of May 2,
`2006 (“05/02/06 Response”)
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`File History for U.S. Pat. No. 7,147,759, Response of August
`28, 2006 (“08/28/2006 Response”)
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`File History for U.S. Pat. No. 7,147,759, Notice of Allowance
`Mailed October 11, 2006 (“10/11/2006 Allowance”)
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`European Patent Application 1560943, Response of April 21,
`2008 (“04/21/08 Response in EP 1560943”)
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`Claim Chart based on Mozgrin and Kudryavtsev as used in
`1:13-cv-11570-RGS (“Claim Chart Based on Mozgrin and
`Kudryavtsev”)
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`Claim Chart based on Wang and Kudryavtsev as used in 1:13-
`cv-11570-RGS (“Claim Chart based on Wang and
`Kudryavtsev”)
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`Claim Chart based on Wang, Kudryavtsev and Mozgrin as
`used in 1:13-cv-11570-RGS (“Claim Chart based on Wang,
`Kudryavtsev and Mozgrin”)
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`List of Related Litigations
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`Affidavit of Mr. Fitzpatrick in Support of Motion for Pro Hac
`Vice Admission
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
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`caused to be served a true and correct copy of the foregoing “PETITIONER’S
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`MOTION FOR PRO HAC VICE ADMISSION PURSUANT TO 37 C.F.R. §
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`42.10(C)” as detailed below:
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`Date of service October 27, 2014
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`Manner of service Email: gonsalves@gonsalveslawfirm.com;
`bbarker@chsblaw.com; kurt@rauschenbach.com
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`Documents served PETITIONER’S MOTION FOR PRO HAC VICE
`ADMISSION PURSUANT TO 37 C.F.R. § 42.10(C);
`Updated Petitioner’s Exhibit List; and
`Exhibit 1321
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`Persons Served Dr. Gregory J. Gonsalves
`2216 Beacon Lane
`Falls Church, Virginia 22043
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`Bruce Barker
`Chao Hadidi Stark & Barker LLP
`176 East Mail Street, Suite 6
`Westborough, MA 01581
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`/David McCombs/
`David McCombs
`Registration No. 32,271
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