`Tel: 571-272-7822
`
`
`Paper 26
`Entered: December 1, 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.
`________________________
`
`Case IPR2014-007811
`Patent 7,147,759 B2
`____________
`
`Before KEVIN F. TURNER, Administrative Patent Judge.
`
`
`
`DECISION
`
`Motions for Pro Hac Vice Admission of Mr. Etai Lahav
`Motions for Pro Hac Vice Admission of Dr. Maria Granovsky
`Motions for Pro Hac Vice Admission of Mr. Tigran Vardanian
`
`
`
`1 This Decision addresses the same issues in the inter partes reviews listed in
`the Appendix. Therefore, we issue one Decision to be filed in all of the
`cases. The parties, however, are not authorized to use this style of filing in
`subsequent papers.
`
`
`
`
`IPR2014-00781 (Patent 7,147,759 B2) et al.
`IPR2014-OO781 (Patent 7,147,759 B2) et a1.
`
`
`37 C.F.R. § 42.10
`37 C.F.R. § 42.10
`
`
`
`2
`
`
`
`IPR2014-00781 (Patent 7,147,759 B2) et al.
`
`
`Patent Owner Zond, LLC (hereafter “Zond”) filed Motions for Pro
`
`Hac Vice Admission of Mr. Etai Lahav, Dr. Maria Granovsky, and Mr.
`
`Tigran Vardanian in each of the proceedings identified in the Appendix.
`
`Papers 25, 26, 27 (“Mot. 1,” “Mot. 2,” “Mot. 3,” respectively).2 Zond
`
`indicates that these Motions were being filed without opposition. Mots. 1–3,
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`2. For the reasons provided below, Zond’s Motions are granted.
`
`Pursuant to 37 C.F.R. § 42.10(c), we may recognize counsel pro hac
`
`vice during a proceeding upon a showing of good cause, subject to the
`
`condition that lead counsel be a registered practitioner. The Order
`
`authorizing motions for pro hac vice admission requires a statement of facts
`
`showing there is good cause for us to recognize counsel pro hac vice, and an
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`affidavit or declaration of the individual seeking to appear in the proceedings
`
`identified in the Appendix.
`
`In the proceedings at issue, lead counsel for Zond, Dr. Gregory J.
`
`Gonsalves, is a registered practitioner. Mots. 1–3, 2. Zond’s Motions
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`indicate that there is good cause for us to recognize Mr. Etai Lahav, Dr.
`
`Maria Granovsky, and Mr. Tigran Vardanian pro hac vice during these
`
`proceedings, and is supported by a Declaration of each (Exs. 2001, 2002,
`
`2003). Mots. 1–3, 4. We address each individual seeking admission below,
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`in turn.
`
`Mr. Lahav declares that he is an experienced patent litigation attorney
`
`and has been practicing law, with a focus on patent litigation and other
`
`
`
`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
`
`
`
`IPR2014-00781 (Patent 7,147,759 B2) et al.
`
`
`intellectual property matters. Ex. 2001 ¶ viii. Mr. Lahav also declares that
`
`he has established familiarity with the subject matter at issue in the
`
`proceedings identified in the Appendix, as he has been representing Zond in
`
`the related district court litigation that involves the same patents being
`
`challenged in the proceedings before us. Id. ¶ ix. Additionally, Mr. Lahav’s
`
`Declaration complies with the requirements set forth in the Board’s Order
`
`authorizing motions for pro hac vice admission. Id. ¶¶ i–ix.
`
`On this record, we determine that Mr. Lahav has sufficient legal and
`
`technical qualifications to represent Zond in the proceedings identified in the
`
`Appendix. We further recognize that there is a need for Zond to have its
`
`counsel in the co-pending litigation involved in the proceedings before us.
`
`Accordingly, Zond has established that there is good cause for Mr. Lahav’s
`
`admission.
`
`Dr. Granovsky declares that she is an experienced patent litigation
`
`attorney and has been practicing law, with a focus on patent litigation and
`
`other intellectual property matters. Ex. 2002 ¶ viii. Dr. Granovsky also
`
`declares that she has established familiarity with the subject matter at issue
`
`in the proceedings identified in the Appendix, as she has been representing
`
`Zond in the related district court litigation that involves the same patents
`
`being challenged in the proceedings before us. Id. ¶ ix. Additionally, Dr.
`
`Granovsky’s Declaration complies with the requirements set forth in the
`
`Board’s Order authorizing motions for pro hac vice admission. Id. ¶¶ i–ix.
`
`On this record, we determine that Dr. Granovsky has sufficient legal
`
`and technical qualifications to represent Zond in the proceedings identified
`
`in the Appendix. We further recognize that there is a need for Zond to have
`
`4
`
`
`
`IPR2014-00781 (Patent 7,147,759 B2) et al.
`
`
`its counsel in the co-pending litigation involved in the proceedings before
`
`us. Accordingly, Zond has established that there is good cause for Dr.
`
`Granovsky’s admission.
`
`Mr. Vardanian declares that he is an experienced patent litigation
`
`attorney and has been practicing law, with a focus on patent litigation and
`
`other intellectual property matters. Ex. 2003 ¶ viii. Mr. Vardanian also
`
`declares that he has established familiarity with the subject matter at issue in
`
`the proceedings identified in the Appendix, as he has been representing
`
`Zond in the related district court litigation that involves the same patents
`
`being challenged in the proceedings before us. Id. ¶ ix. Additionally, Mr.
`
`Vardanian’s Declaration complies with the requirements set forth in the
`
`Board’s Order authorizing motions for pro hac vice admission. Id. ¶¶ i–ix.
`
`On this record, we determine that Mr. Vardanian has sufficient legal
`
`and technical qualifications to represent Zond in the proceedings identified
`
`in the Appendix. We further recognize that there is a need for Zond to have
`
`its counsel in the co-pending litigation involved in the proceedings before
`
`us. Accordingly, Zond has established that there is good cause for Mr.
`
`Vardanian’s admission.
`
`For the foregoing reasons, it is
`
`ORDERED that Zond’s motions for pro hac vice admission of Mr.
`
`Lahav, Dr. Granovsky, and Mr. Vardanian for the instant proceeding are
`
`granted; they are authorized to represent Patent Owner as back-up counsel in
`
`the proceedings identified in the Appendix;
`
`FURTHER ORDERED that Patent Owner is to continue to have a
`
`registered practitioner as lead counsel in the instant proceedings; and
`
`5
`
`
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`IPR2014-00781 (Patent 7,147,759 B2) et al.
`
`
`FURTHER ORDERED that Mr. Lahav, Dr. Granovsky, and Mr.
`
`Vardanian are to comply with the Office Patent Trial Practice Guide and the
`
`Board’s Rules of Practice for Trials, as set forth in Title 37, Part 42 of the
`
`C.F.R., and they are to be subject to the Office’s disciplinary jurisdiction
`
`under 37 C.F.R. § 11.19(a), and the USPTO Rules of Professional Conduct
`
`set forth in 37 C.F.R. §§ 11.101 et seq.
`
`
`
`
`
`6
`
`
`
`IPR2014-00781 (Patent 7,147,759 B2) et al.
`
`
`APPENDIX
`
`
`
`U.S. Patent Numbers
`
`Inter Partes Reviews
`
`Paper Nos. for Motions
`
`7,147,759 B2
`
`6,853,142 B2
`
`7,811,421 B2
`
`
`
`
`
`IPR2014-00781
`IPR2014-00782
`IPR2014-01083
`IPR2014-01086
`IPR2014-01087
`IPR2014-00818
`IPR2014-00819
`IPR2014-00821
`IPR2014-00827
`IPR2014-01098
`IPR2014-00800
`IPR2014-00802
`IPR2014-00805
`
`25, 26, 27
`23, 24, 25
`17, 18, 19
`19, 20, 21
`17, 18, 19
`21, 22, 23
`21, 22, 23
`21, 22, 23
`21, 22, 23
`16, 17, 18
`20, 21, 22
`20, 21, 22
`20, 21, 22
`
`7
`
`
`
`IPR2014-00781 (Patent 7,147,759 B2) et al.
`
`
`For PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`CHAO HADIDI STARK & BARKER LLP
`bbarker@chsblaw.com
`
`
`For PETITIONER:
`
`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
`
`
`
`8
`
`
`
`IPR2014-00781 (Patent 7,147,759 B2) et al.
`
`
`AMD:
`
`David M. Tennant
`WHITE & CASE LLP
`dtennant@whitecase.com
`
`Brian M. Berliner
`Byan K. Yagura
`Xin-Yi Zhou
`O’MELVENY & MEYERS LLO
`bberliner@omm.com
`ryagura@omm.com
`vzhou@omm.com
`
`9
`
`