Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 15
`
`Entered: November 4, 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, and FUJITSU SEMICONDUCTOR AMERICA, INC.,
`
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-00799 and IPR2014-00803
`Patent 7,808,184 B21
`____________
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, SUSAN L. C. MITCHELL, and
`JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 This Order addresses the same issues in all of the above-identified cases.
`Therefore, we issue one Order to be filed in all cases.
`
`
`
`571-272-7822
`
`
`
`Paper 15
`
`Entered: November 4, 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, and FUJITSU SEMICONDUCTOR AMERICA, INC.,
`
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-00799 and IPR2014-00803
`Patent 7,808,184 B21
`____________
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, SUSAN L. C. MITCHELL, and
`JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 This Order addresses the same issues in all of the above-identified cases.
`Therefore, we issue one Order to be filed in all cases.
`
`
`
`
`Cases IPR2014-00799 and IPR2014-00803
`Cases IPR2014-00799 and IPR2014-00803
`Patent 7,808,184 B2
`Patent 7,808,184 B2
`
`
`
`
`
`
`2
`
`
`
`Cases IPR2014-00799 and IPR2014-00803
`Patent 7,808,184 B2
`
`
`On October 1, 2014, we instituted an inter partes review in each of the
`
`above-identified proceedings to review the claims of U.S. Patent No. 7,808,184 B2
`
`(“the ’184 patent). Paper 10.2 For efficiency, we entered a single Scheduling
`
`Order that sets forth the due dates for the parties to take action in both reviews,
`
`ensuring that the reviews will be completed within one year of institution.
`
`Paper 11. After institution, we also granted the revised Motions for Joinder filed
`
`by Fujitsu Semiconductor Limited and Fujitsu Semiconductor America, Inc.
`
`(collectively, “Fujitsu”). IPR2014-00855, Paper 12; IPR2014-00858, Paper 13. A
`
`list of these Joinder Cases and a list of the cases awaiting decision at the time of
`
`the conference call that also seek joinder are provided in the Appendix to the
`
`instant Order.
`
`An initial conference call was held on October 28, 2014, between respective
`
`counsel for the parties for the above-identified reviews and Judges Chang, Turner,
`
`Stephens, Mitchell, and Meyer. Counsel for The Gillette Company, a Petitioner
`
`seeking joinder, and counsel seeking pro hac vice admission on behalf of Taiwan
`
`Semiconductor Manufacturing Company, Ltd. and TSMC North America
`
`Corporation (collectively, “TSMC”) also attended the conference call. The
`
`purpose of the call was to discuss any proposed changes to the Scheduling Order
`
`(Paper 11), as well as any motions that the parties intend to file.
`
`
`
`2 For the purpose of clarity and expediency, we treat IPR2014-00799 as
`representative, and all citations are to IPR2014-00799 unless otherwise noted.
`
`3
`
`
`
`Cases IPR2014-00799 and IPR2014-00803
`Patent 7,808,184 B2
`
`
`Trial Schedule
`
`During the conference call, we explained that the trial schedule for the
`
`above-identified reviews had been synchronized. The Scheduling Order provides
`
`certain flexibility for the parties to change Due Dates 1 through 5. Paper 11, 2.
`
`Should the parties believe that there is a good reason for changing other due dates,
`
`they may contact the Board to set up a conference call with us. The parties
`
`indicated that they do not, at this time, foresee any problems with meeting their
`
`due dates.
`
`In Petitioners’ Notice of Proposed Motions, they indicated that they are
`
`discussing possible changes to dates in the Scheduling Order, and stated during the
`
`conference that the parties were close to agreement, but none had been reached yet.
`
`As the Petitioners acknowledged in their Notice of Proposed Motions, if an
`
`agreement to adjust the due dates is reached, the parties should file promptly a
`
`notice of stipulation, which should include a copy of the due date appendix of the
`
`Scheduling Order, showing the new due dates next to the original due dates.
`
`Paper 11, 2, 6.
`
`We further noted that the oral hearings for both reviews are scheduled on the
`
`same day. The oral hearings will be merged and conducted at the same time, and
`
`the transcript from the combined oral hearing is useable across both reviews, given
`
`the similarity in claimed subject matter and overlapping asserted prior art.
`
`The Procedure for Consolidated Filings and Discovery
`
`The Joinder Decisions set forth a procedure for consolidated filings and
`
`discovery. IPR2014-00855 (Paper 12) 5–6; IPR2014-00858 (Paper 13) 5–6. Upon
`
`4
`
`
`
`Cases IPR2014-00799 and IPR2014-00803
`Patent 7,808,184 B2
`
`
`inquiry from the Board, the parties stated that they understand and did not have any
`
`issues with the procedure.
`
`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 expressed the desire to coordinate and combine discovery
`
`between both reviews and, possibly, also with other proceedings that involve the
`
`parties. Should the parties combine discovery of the above-identified reviews,
`
`which involve the ’184 patent, with other proceedings that involve another patent,
`
`the parties are encouraged to keep the record clear as to each proceeding and each
`
`patent.
`
`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 13. We previously authorized the
`
`parties to file motions for pro hac vice admission. Paper 3, 2. On October 28,
`
`2014, Petitioners filed a motion for pro hac vice admission of Mr. Anthony J.
`
`Fitzpatrick in the above-identified reviews. Paper 14. We stated that we could
`
`expedite resolution of the motion if Patent Owner did not oppose the motion.
`
`Counsel for Patent Owner offered a tentative agreement not to oppose the motion
`
`pending agreement by Patent Owner.
`
`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 3, 2;
`
`Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639, slip op. at 3
`
`(PTAB Oct. 15, 2013) (Paper 7). Because we have no unequivocal representation
`
`5
`
`
`
`Cases IPR2014-00799 and IPR2014-00803
`Patent 7,808,184 B2
`
`
`that Patent Owner does not oppose the pro hac vice admission of Mr. Fitzpatrick,
`
`each 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.
`
`
`
`It is
`
`ORDER
`
`ORDERED that the parties are authorized to consolidate discovery for both
`
`of the above-identified inter partes reviews, so that the cross-examination and
`
`redirect examination may be usable in each of the reviews.
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`Cases IPR2014-00799 and IPR2014-00803
`Patent 7,808,184 B2
`
`
`APPENDIX
`
`
`
`Pending inter partes reviews for
`U.S. Patent No. 7,808,184 B2
`
`Joinder Cases
`
`IPR2014-00799 (TSMC)
`
`IPR2014-00803 (TSMC)
`
`
`
`
`
`
`IPR2014-00855 (Fujitsu)
`
`Awaiting Decision:
`IPR2014-00995 (Gillette),
`IPR2014-01042 (AMD)
`
`IPR2014-00858 (Fujitsu)
`
`Awaiting Decision:
`IPR2014-00996 (Gillette),
`IPR2014-01061 (AMD)
`
`
`
`7
`
`
`
`Cases IPR2014-00799 and IPR2014-00803
`Patent 7,808,184 B2
`
`
`
`For PETITIONERS:
`
`David L. McCombs
`david.mccombs.ipr@haynesboone.com
`
`David M O’Dell
`david.odell.ipr@haynesboone.com
`
`
`
`For PATENT OWNER:
`
`Bruce J. Barker
`bbarker@chsblaw.com
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`
`
`
`
`
`
`8
`
`
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