Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper 19
`Entered: October 29, 2014
`
`
`
`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., TOSHIBA
`CORPORATION, and THE GILLETTE COMPANY
`Petitioners,
`v.
`ZOND, LLC,
`Patent Owner.
`____________
`Cases IPR2014-00781 and IPR2014-007821
`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.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 IPR2014-00845, IPR2014-00985, and IPR2014-01047 have been joined with
`IPR2014-00781 and IPR2014-00850, IPR2014-00986, and IPR2014-01059 have
`been joined with IPR2014-00782.
`
`
`571-272-7822
`
`
`
`
` Paper 19
`Entered: October 29, 2014
`
`
`
`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., TOSHIBA
`CORPORATION, and THE GILLETTE COMPANY
`Petitioners,
`v.
`ZOND, LLC,
`Patent Owner.
`____________
`Cases IPR2014-00781 and IPR2014-007821
`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.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 IPR2014-00845, IPR2014-00985, and IPR2014-01047 have been joined with
`IPR2014-00781 and IPR2014-00850, IPR2014-00986, and IPR2014-01059 have
`been joined with IPR2014-00782.
`
`
`
`IPR2014-00781 and IPR2014-00782
`Patent 7,147,759 B2
`
`
`We instituted an inter partes review in each of the following proceedings,
`challenging U.S. Patent No. 7,147,759 B2: IPR2014-00781 and IPR2014-00782
`(“the TSMC reviews”), as well as IPR2014-01083, IPR2014-01086, and
`IPR2014-01087 (“the GlobalFoundries reviews”). Paper 13.2 For efficiency, we
`entered a single Scheduling Order that sets forth the due dates for the parties to
`take action in all five reviews, ensuring that the reviews will be completed within
`one year of institution. Paper 14. After institution, we also granted the revised
`Motions for Joinder filed by Fujitsu Semiconductor Limited and Fujitsu
`Semiconductor America, Inc. (collectively, “Fujitsu”), Advanced Micro Devices,
`Inc., Renesas Electronics Corporation, Renesas Electronics America, Inc.,
`GLOBALFOUNDRIES 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 (collectively,
`“AMD”), and The Gillette Company (“Gillette”). Papers 16, 17, 18. A list of
`these Joinder Cases is provided in the Appendix of the instant Order.
`An initial conference call was held on October 27, 2014, between respective
`counsel for the parties for all five above-identified reviews and Judges Turner,
`Stephens, Chang, Mitchell, and Meyer. Counsel for each of the Joinder Cases also
`attended the conference call. The purpose of the call was to discuss any proposed
`
`
`2 For the purpose of clarity and expediency, we treat IPR2014-00781 as
`representative, and all citations are to IPR2014-00781 unless otherwise noted.
`
`2
`
`
`
`IPR2014-00781 and IPR2014-00782
`Patent 7,147,759 B2
`
`changes to the Scheduling Order (Paper 14), as well as any motions that the parties
`intend to file.
`
`Trial Schedule
`
`During the conference call, we explained that the trial schedule for all five
`above-identified reviews had been synchronized. The parties indicated that they
`do not, at this time, foresee any problems with meeting their due dates. They also
`expressed that they may stipulate to different dates for certain due dates. If the
`parties decide to stipulate to different due dates, the parties should file a notice of
`stipulation that includes a copy of the due date appendix of the Scheduling Order,
`showing the new due dates next to the original due dates. Paper 14, 2, 6.
`We further noted that the oral hearings for all five reviews are scheduled on
`the same day. We explained that, although Petitioners for the TSMC reviews and
`the GlobalFoundries reviews are different, the oral hearings for all five reviews
`could be combined and the transcript from the combined oral hearing could be
`useable across all five reviews, given the similarity in claimed subject matter and
`overlapping asserted prior art. The parties may request a single-combined oral
`hearing in their requests for oral hearing before or on Due Date 4. Id. at 6.
`
`The Procedure for Consolidated Filings and Discovery
`
`As we noted during the conference call, the Decisions on the revised
`Motions for Joinder (“the Joinder Decisions”) did not change the grounds of
`unpatentability on which a trial was instituted or the Scheduling Order, in each of
`the TSMC reviews and the GlobalFoundries reviews. Papers 16, 17, 18. And the
`Joinder Decisions set forth a procedure for consolidated filings and discovery.
`3
`
`
`
`IPR2014-00781 and IPR2014-00782
`Patent 7,147,759 B2
`
`Paper 18. Upon inquiry from the Board, the parties stated that they are in
`agreement with the procedure. Id. at 5–7.
`The parties indicated that they have been in discussions regarding the
`discovery schedule. Given the similarity in claimed subject matter and
`overlapping asserted prior art and that Petitioners submitted declarations from the
`same expert witness in each review, the parties further expressed the desire to
`coordinate and combine discovery between all five reviews. For example, the
`cross-examination of Petitioners’ expert witness may be combined and useable in
`all five reviews, for efficiency and consistency.
`
`Incorporation by Reference is Prohibited
`
`During the conference call, we directed the parties’ attention to 37 C.F.R.
`§ 42.6(a)(3), which provides “[a]rguments must not be incorporated by reference
`from one document into another document.” We observed that, in a family of
`cases challenging the same patent, as here, briefing papers may cross-reference
`between different inter partes reviews, but incorporation by reference is still
`prohibited. For example, the Patent Owner Response or Reply to a Patent Owner
`Response filed in one proceeding may not incorporate by reference arguments
`submitted in another proceeding. Each briefing paper must stand on its own, with
`appropriate supporting evidence.
`
`Objection and Motion to Exclude Evidence
`
`As we noted during the conference call, certain due dates are set forth in the
`Scheduling Order (Paper 14, 6), but the times for serving objections to evidence
`are set forth in 37 C.F.R. § 42.64(b). For instance, the parties are not required to
`4
`
`
`
`IPR2014-00781 and IPR2014-00782
`Patent 7,147,759 B2
`
`seek prior authorization for filing a motion to exclude evidence under 37 C.F.R.
`§ 42.64(c), a motion for observation regarding cross-examination of reply witness,
`and a response to observation because the Scheduling Order sets forth the due date
`for these motions and responses. See Paper 14, 6. However, any objection to
`evidence submitted during a preliminary proceeding must be served within ten
`business days of the institution of the trial. After institution, any objection must be
`served within five business days of service of evidence to which the objection is
`directed. The parties further should note that a motion to exclude evidence must
`identify and explain the objections.
`
`Motion for pro hac vice admission under 37 C.F.R. § 42.10(c).
`
`Petitioners filed a notice of proposed motions indicating that they will file a
`motion for pro hac vice admission. Paper 19. We previously authorized the
`parties to file motions for pro hac vice admission. Paper 4, 2. On October 27,
`2014, Petitioners filed a motion for pro hac vice admission of Mr. Anthony J.
`Fitzpatrick. Paper 20. Patent Owner is authorized to file an opposition no later
`than one week after the filing of the Petitioners’ motion for pro hac vice admission.
`See Paper 4, 2; Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639,
`slip op. at 3 (PTAB Oct. 15, 2013) (Paper 7). Petitioners’ motion will be decided
`in due course, after the expiration of the one-week time period or the filing of an
`opposition, whichever is earlier. For any future motion for pro hac vice admission,
`the parties may agree in advance and notify the Board that the motion is
`unopposed, so that the Board may expedite its decision on the motion.
`
`5
`
`
`
`IPR2014-00781 and IPR2014-00782
`Patent 7,147,759 B2
`
`
`ORDER
`
`It is
`ORDERED that the parties are authorized to request a single-combined oral
`hearing for all five above-identified inter partes reviews; and
`FURTHER ORDERED that the parties are authorized to consolidate
`discovery for all five above-identified inter partes reviews, so that the
`cross-examination and redirect examination may be usable in all five reviews.
`
`
`
`
`
`
`6
`
`
`
`IPR2014-00781 and IPR2014-00782
`Patent 7,147,759 B2
`
`
`
`
`APPENDIX
`
`Inter partes reviews for
`U.S. Patent No. 7,147,759 B2
`
`Joinder Cases
`
`IPR2014-00781 (TSMC)
`
`IPR2014-00782 (TSMC)
`
`IPR2014-00845 (Fujitsu),
`IPR2014-00985 (Gillette),
`IPR2014-01047 (AMD)
`
`IPR2014-00850 (Fujitsu),
`IPR2014-00986 (Gillette),
`IPR2014-01059 (AMD)
`
`IPR2014-01083 (Global Foundries)
`
`IPR2014-00988 (Gillette)
`
`IPR2014-01086 (Global Foundries)
`
`IPR2014-00981 (Gillette)
`
`IPR2014-01087 (Global Foundries)
`
`IPR2014-00984 (Gillette)
`
`
`
`
`
`
`
`7
`
`
`
`IPR2014-00781 and IPR2014-00782
`Patent 7,147,759 B2
`
`For PETITIONERS:
`TSMC and Fujitsu:
`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
`
`GlobalFoundries:
`David Tennant
`Dohm Chankong
`WHITE & CASE LLP
`dtennant@whitecase.com
`dohm.chankong@whitecase.com
`
`Gillette:
`Michael A. Diener
`Larissa B. Park
`WILMER, CUTLER, PICKERING, HALE AND DORR, LLP
`michael.diener@wilmerhale.com
`larissa.park@wilmerhale.com
`
`AMD:
`David M. Tennant
`WHITE & CASE LLP
`dtennant@whitecase.com
`
`
`8
`
`
`
`IPR2014-00781 and IPR2014-00782
`Patent 7,147,759 B2
`
`Brian M. Berliner
`Byan K. Yagura
`Xin-Yi Zhou
`O’MELVENY & MEYERS LLO
`bberliner@omm.com
`ryagura@omm.com
`vzhou@omm.com
`
`For PATENT OWNER:
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`Bruce J. Barker
`CHAO HADIDI STARK & BARKER LLP
`bbarker@chsblaw.com
`
`9
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