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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
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`Paper No. ___
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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.,
`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.,
`TOSHIBA CORPORATION, and
`THE GILLETTE COMPANY,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner
`____________________________________________
`
`Case IPR2014-008001
`U.S. PATENT NO. 7,811,421 B2
`____________________________________________
`
`
`MOTION TO DESIGNATE LEAD PETITIONER
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`1 Cases IPR 2014-00844, IPR2014-00991, and IPR2014-01037 have been joined
`with the instant proceeding.
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`
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`Motion to Designate Lead Petitioner
`IPR2014-00800 (U.S. 7,811,421)
`
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`Pursuant to the Board’s March 10, 2015, Order following a conference call
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`between the Board and respective counsel for the parties Patent Owner ZOND
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`LLC (“Patent Owner”) and Petitioners TAIWAN SEMICONDUCTOR
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`MANUFACTURING COMPANY, LTD., TSMC NORTH AMERICA
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`CORPORATION (jointly, “TSMC”), FUJITSU SEMICONDUCTOR LIMITED,
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`FUJITSU SEMICONDUCTOR AMERICA, INC. (jointly, “Fujitsu”),
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`ADVANCED MICRO DEVICES, INC. (“AMD”), RENESAS ELECTRONICS
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`CORPORATION, RENESAS ELECTRONICS AMERICA INC. (jointly,
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`“Renesas”), GLOBALFOUNDRIES U.S., INC., GLOBALFOUNDRIES
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`DRESDEN MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
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`MODULE TWO LLC & CO. KG (jointly, “GlobalFoundries”), TOSHIBA
`
`AMERICA ELECTRONIC COMPONENTS, INC., TOSHIBA AMERICA INC.,
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`TOSHIBA AMERICA INFORMATION SYSTEMS, INC., TOSHIBA
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`CORPORATION (jointly, “Toshiba”), and THE GILLETTE COMPANY
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`(“Gillette”) (jointly, “Petitioner2”) (collectively with Patent Owner, “the Parties”)
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`have reached an agreement regarding designation of new Lead Counsel for
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`Petitioner. This motion is submitted for the Board’s review concurrently with the
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`Joint Motion to Terminate filed by Patent Owner and TSMC.
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`2 The above-listed Petitioners are parties to the inter partes review proceedings for
`which TSMC is Lead Counsel and may not necessarily be a party in the instant
`proceeding.
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`1
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`
`
`Motion to Designate Lead Petitioner
`IPR2014-00800 (U.S. 7,811,421)
`
`
`I.
`
`DESIGNATION OF NEW LEAD COUNSEL
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`TSMC counsel is currently designated as Lead Counsel on seventeen (17)
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`inter partes review proceedings involving seven (7) of Patent Owner’s patents.
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`The table below lists the proceedings for which TSMC counsel is Lead Counsel:
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`Patent
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`7,808,184
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`6,853,142
`
`6,805,779
`
`7,604,716
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`7,811,421
`
`7,147,759
`
`8,806,652
`
`Case Nos.
`IPR2014-00799
`IPR2014-00803
`IPR2014-00818
`IPR2014-00821
`IPR2014-00819
`IPR2014-00827
`IPR2014-00828
`IPR2014-00829
`IPR2014-00917
`IPR2014-00807
`IPR2014-00808
`IPR2014-00800
`IPR2014-00802
`IPR2014-00805
`IPR2014-00781
`IPR2014-00782
`
`IPR2014-00861
`
`
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`2
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`
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`Motion to Designate Lead Petitioner
`IPR2014-00800 (U.S. 7,811,421)
`
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`Following withdrawal by TSMC from the above proceedings, Petitioner
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`requests that the Board designate the following Petitioners as Lead and Backup
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`Counsel:
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`Patent
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`7,808,184
`
`6,853,142
`
`6,805,779
`
`7,604,716
`
`7,811,421
`
`7,147,759
`
`Case Nos.
`IPR2014-00799
`IPR2014-00803
`IPR2014-00818
`IPR2014-00821
`IPR2014-00819
`IPR2014-00827
`IPR2014-00828
`IPR2014-00829
`IPR2014-00917
`IPR2014-00807
`IPR2014-00808
`IPR2014-00800
`IPR2014-00802
`IPR2014-00805
`IPR2014-00781
`IPR2014-00782
`
`Lead Counsel
`
`Backup Counsel
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`Gillette
`
`GlobalFoundries
`
`GlobalFoundries
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`Gillette
`
`GlobalFoundries
`
`Gillette
`
`AMD
`
`GlobalFoundries
`
`Toshiba
`
`GlobalFoundries
`
`Renesas
`
`GlobalFoundries
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`8,806,652
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`IPR2014-00861
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`GlobalFoundries
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`Gillette
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`Counsel information for each of the Petitioners is summarized below.
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`3
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`
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`Motion to Designate Lead Petitioner
`IPR2014-00800 (U.S. 7,811,421)
`
`
`Attorney
`Petitioner
`David L. Cavanaugh
`Gillette
`GlobalFoundries David M. Tennant
`Ryan K. Yagura
`AMD
`John J. Feldhaus
`Renesas
`Robinson Vu
`Toshiba
`
`Registration No.
`36,476
`48,362
`47,191
`28,822
`60,211
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`
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`As stated in the Board’s Decision Granting Renewed Motion for Joinder, the
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`Lead Counsel will be primarily responsible for consolidated filings for all
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`substantive papers on behalf of Petitioner and will not file any paper with
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`arguments separate from those advanced by the consolidated filings. Lead Counsel
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`further agrees to consolidated discovery, including the designation of an attorney
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`to conduct the cross-examination of any witnesses produced by Patent Owner and
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`the redirect of any witnesses produced by Petitioner, within the timeframe
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`normally allotted by the rules for one party. Petitioner requests that the parties
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`designated as Backup Counsel be so-designated as to allow them filing rights in the
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`event that the Lead Counsel is unable to successfully complete its consolidated
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`filings.
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`II. CONCLUSION
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`For the foregoing reasons, the Parties jointly request that the Board
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`designate new Lead Parties for each of the seventeen TSMC-led inter partes
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`review proceedings.
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`4
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`
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`Motion to Designate Lead Petitioner
`IPR2014-00800 (U.S. 7,811,421)
`
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`Respectfully submitted,
`
`
`/Bruce Barker/
`Mr. Bruce Barker
`Reg. No. 33,291
`176 East Main Street, Suite 6
`Westborough, MA 01581
`(508) 366-3800
`bbarker@chsblaw.com
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`5
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`Dated: March 16, 2015
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`
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`Motion to Designate Lead Petitioner
`IPR2014-00800 (U.S. 7,811,421)
`
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`CERTIFICATE OF SERVICE
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`
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`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that I caused to be served a
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`true and correct copy of the foregoing “MOTION TO DESIGNATE LEAD
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`PETITIONER” as detailed below:
`
`Date of service March 16, 2015
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`Manner of service email
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`Documents served MOTION TO DESIGNATE LEAD PETITIONER
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`Persons Served
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` David L. McCombs
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`david.mccombs.ipr@haynesboone.com
`USPTO Reg. No. 32,271
`
`David O’Dell
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`david.odell.ipr@haynesboone.com
`USPTO Reg. No. 42,044
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`
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`/Bruce Barker/
`Bruce Barker, Reg. No. 33,291
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`6
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`Motion to Designate Lead Petitioner
`IPR2014-00800 (U.S. 7,811,421)
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`1
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