`IPR2014-00802 (U.S. 7,811,421)
`
`Paper No.
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`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.,
`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 IPR2014-008021
`Patent 7,811,421 B2
`____________________________________________
`
`PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION
`PURSUANT TO 37 C.F.R. § 42.10(C)
`
`1 Cases IPR 2014-00848, IPR 2014-00992, and IPR 2014-01071 have been joined
`with the instant proceeding.
`
`
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`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00802 (U.S. 7,811,421)
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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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`Corporation (collectively “TSMC” or “Petitioner”). TSMC respectfully moves
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`that the Board recognize Mr. Anthony J. Fitzpatrick as counsel pro hac vice during
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`this 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. 3). Petitioner’s lead and back-up
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`counsel are registered practitioners:
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`Lead Counsel:
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`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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`–1–
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`
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`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00802 (U.S. 7,811,421)
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`involved in the depositions that occur in this proceeding. Specifically, U.S. Patent
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`No. 7,811,421 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. 7,811,421. 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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`–2–
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`
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`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00802 (U.S. 7,811,421)
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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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`Mr. Fitzpatrick (Ex. 1226).
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`Date: October 28, 2014
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`Respectfully submitted,
`
`/David L. McCombs/
`David L. McCombs
`Lead Counsel for Petitioner TSMC
`Registration No. 32,271
`
`–3–
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`
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`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00802 (U.S. 7,811,421)
`
`Petitioners’ Updated Exhibit List
`October 28, 2014
`
`Exhibit
`1201
`
`1202
`
`Description
`U.S. Patent No. 7,811,421
`
`Kortshagen Declaration
`
`1203
`
`1204
`
`1205
`
`1206
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`1207
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`1208
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`1209
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`1210
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`1211
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`1212
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`1213
`
`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”)
`
`U.S. Patent No. 6,413,382 (“Wang”)
`
`U.S. Patent No. 6,190,512 (“Lantsman”)
`
`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”)
`
`Certified Translation of D.V. Mozgrin, High-Current Low-
`Pressure Quasi-Stationary Discharge in a Magnetic Field:
`Experimental Research, Thesis at Moscow Engineering
`Physics Institute, 1994 (“Mozgrin Thesis”)
`
`Mozgrin Thesis (Original Russian)
`
`Catalogue Entry at the Russian State Library for the Mozgrin
`Thesis
`
`WO 02/103078 A1 (“Kouznetsov”)
`
`U.S. Patent No. 7,147,759 (the “‘759 Patent”)
`
`File History for U.S. Pat. No. 7, 147,759 , Response of May 2,
`2006 (“05/02/06 Resp. of ‘759 Patent file history”)
`
`Plasma Etching: An Introduction, by Manos and Flamm,
`Academic Press (1989) (“Manos”)
`
`–4–
`
`
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`1214
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`1215
`
`1216
`
`1217
`
`1218
`
`1219
`
`1220
`
`1221
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`1222
`
`1223
`
`1224
`
`1225
`
`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00802 (U.S. 7,811,421)
`
`The Materials Science of Thin Films, by Ohring M.,
`Academic Press (1992) (“Ohring”)
`
`File History for U.S. Pat. No. 7,811,421, Office Action dated
`April 21, 2010 (“04/21/10 Office Action”)
`
`File History for U.S. Pat. No. 7,811,421, Response dated June
`23, 2010 (“06/23/10 Response”)
`
`File History for U.S. Pat. No. 7,811,421, Notice of Allowance
`dated August 19, 2010 (“08/19/10 Notice of Allowance”)
`
`File History for U.S. Pat. No. 7,811,1421, Originally Filed
`Application dated July 18, 2005 (“‘421 Application”)
`
`File History for European Patent Application 1560943,
`Response of April 21, 2008 (“04/21/08 Response in EP
`1560943”)
`
`Claim Chart Based on Mozgrin and Kudryavtsev as used in
`1:13-cv-11570-RGS (“Claim Chart Based on Mozgrin and
`Kudryavtsev”)
`
`Claim Chart Based on Mozgrin and Mozgrin Thesis as used in
`1:13-cv-11570-RGS (“Claim Chart Based on Mozgrin and
`Mozgrin Thesis”)
`
`Claim Chart Based on Mozgrin, Lantsman and Kudryavtsev
`as used in 1:13-cv-11570-RGS (“Claim Chart Based on
`Mozgrin, Lantsman and Kudryavtsev”)
`
`Claim Chart Based on Mozgrin, Lantsman and Mozgrin
`Thesis as used in 1:13-cv-11570-RGS (“Claim Chart Based
`on Mozgrin, Lantsman and Mozgrin Thesis”)
`
`Claim Chart Based on Wang and Kudryavtsev as used in
`1:13-cv-1157
`
`0-RGS (“Claim Chart Based on Wang and Kudryavtsev”)
`
`Claim Chart Based on Wang and Mozgrin Thesis as used in
`1:13-cv-11570-RGS (“Claim Chart Based on Wang and
`
`–5–
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`
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`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00802 (U.S. 7,811,421)
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`Mozgrin Thesis”)
`
`1226
`
`Affidavit of Mr. Fitzpatrick in Support of Motion for Pro Hac
`Vice Admission
`
`–6–
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`
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`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00802 (U.S. 7,811,421)
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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 “PETITIONERS’
`
`MOTION FOR PRO HAC VICE ADMISSION PURSUANT TO 37 C.F.R. §
`
`42.10(C)” as detailed below:
`
`Date of service October 28, 2014
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`Manner of service Email: gonsalves@gonsalveslawfirm.com;
`bbarker@chsblaw.com; kurt@rauschenbach.com
`
`Documents served PETITIONERS’ MOTION FOR PRO HAC VICE
`ADMISSION PURSUANT TO 37 C.F.R. § 42.10(C);
`Updated Petitioners’ Exhibit List; and
`Exhibit 1226.
`
`Persons Served Dr. Gregory J. Gonsalves
`2216 Beacon Lane
`Falls Church, Virginia 22043
`
`Bruce Barker
`Chao Hadidi Stark & Barker LLP
`176 East Mail Street, Suite 6
`Westborough, MA 01581
`
`/David L. McCombs/
`David McCombs
`Registration No. 32,271
`
`–7–
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`