Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper 16
`Entered: October 31, 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 IPR2014-00800, IPR2014-00802, and IPR2014-00805
`Patent 7,811,421 B21
`____________
`
`Before 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 This Order addresses the same issue in all of the above-identified cases.
`Therefore, we issue one Order to be filed in all cases.
`
`
`571-272-7822
`
`
`
`
` Paper 16
`Entered: October 31, 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 IPR2014-00800, IPR2014-00802, and IPR2014-00805
`Patent 7,811,421 B21
`____________
`
`Before 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 This Order addresses the same issue in all of the above-identified cases.
`Therefore, we issue one Order to be filed in all cases.
`
`
`
`Cases IPR2014-00800, IPR2014-00802, and IPR2014-00805
`Patent 7,811,421 B2
`
`
`On October 6, 2014, we instituted an inter partes review in each of the
`
`above-identified proceedings to review the claims of U.S. Patent No. 7,811,421 B2
`
`(“the ’421 patent). Paper 9.2 For efficiency, we entered a single Scheduling Order
`
`that sets forth the due dates for the parties to take action in all three reviews,
`
`ensuring that the reviews will be completed within one year of institution.
`
`Paper 10. 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 12, 13. A list of these Joinder Cases is provided in
`
`the Appendix of the instant Order.
`
`An initial conference call was held on October 29, 2014, between respective
`
`counsel for the parties for the above-identified reviews and Judges 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 changes to
`
`the Scheduling Order (Paper 10), as well as any motions that the parties intend to
`
`file.
`
`
`
`2 For the purpose of clarity and expediency, we treat IPR2014-00800 as
`representative, and all citations are to IPR2014-00800 unless otherwise noted.
`
`2
`
`
`
`Cases IPR2014-00800, IPR2014-00802, and IPR2014-00805
`Patent 7,811,421 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 10, 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. They also expressed that they may stipulate to
`
`different dates for certain due dates as to Due Dates 1 through 5. If the parties
`
`decide to stipulate to different due dates, the parties should file promptly 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 10, 2, 5.
`
`We further noted that the oral hearings for all three reviews are scheduled on
`
`the same day. We explained that the oral hearings will be merged and conducted
`
`at the same time, and the transcript from the combined oral hearing could be
`
`useable across all three reviews, given the similarity in claimed subject matter and
`
`overlapping asserted prior art.
`
`Currently, the oral hearing is scheduled on June 4, 2015 (Due Date 7).
`
`Paper 10, 6. We indicated that, due to a scheduling conflict for the Board’s
`
`hearing rooms, the oral hearing is rescheduled to June 8, 2015. If the parties are
`
`not available on June 8, 2015, the revised date for the oral hearing, they should
`
`notify the Board within 2 business days via electronic mail, and jointly propose
`
`several dates for the oral hearing near the same timeframe. We will enter a revised
`
`Scheduling Order, to reflect the change to Due Date 7, in due course.
`
`3
`
`
`
`Cases IPR2014-00800, IPR2014-00802, and IPR2014-00805
`Patent 7,811,421 B2
`
`
`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 above-identified reviews. See, e.g., Paper 13. And the Joinder Decisions set
`
`forth a procedure for consolidated filings and discovery. Id. at 5–7. Upon inquiry
`
`from the Board, the parties stated that they are in agreement with the procedure.
`
`The parties indicated that they have been engaging 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 three reviews and, possibly, also
`
`with other proceedings that involve the parties. We observed that such
`
`coordination and consolidation may be helpful in streamlining the proceedings, and
`
`reduced the cost and burden on the parties. For example, cross-examination of
`
`Petitioners’ expert witness may be combined and useable in all three reviews, for
`
`efficiency and consistency. Should the parties combine discovery of the
`
`above-identified reviews, which involve the ’421 patent, with other proceedings
`
`that involve another patent, the parties are encouraged to keep the record clear as
`
`to each proceeding and each patent.
`
`
`
`
`
`4
`
`
`
`Cases IPR2014-00800, IPR2014-00802, and IPR2014-00805
`Patent 7,811,421 B2
`
`
`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 14. 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 15. Petitioners
`
`further provided a list of other cases in which Petitioners filed such a motion, to
`
`assist the Board in expediting our decisions on the motions.
`
`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). Upon inquiry from the Board, Patent Owner
`
`stated that it will not oppose Petitioners’ motions for pro hac vice admission of
`
`Mr. Fitzpatrick, as the parties agreed not to oppose the motions for pro hac vice
`
`admission of each party’s respective litigation counsel. As we articulated during
`
`the conference call, we are not a party to such an agreement and we will not
`
`enforce such an agreement. 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.
`
`5
`
`
`
`
`
`
`
`
`
`Cases IPR2014-00800, IPR2014-00802, and IPR2014-00805
`Patent 7,811,421 B2
`
`
`It is
`
`ORDER
`
`ORDERED that, if the parties are not available on June 8, 2015 for the oral
`
`hearing, the parties should notify the Board within 2 business day from the entry of
`
`the instant Order, via electronic mail, and jointly propose several dates for the oral
`
`hearing; and
`
`FURTHER ORDERED that the parties are authorized to consolidate
`
`discovery for all three above-identified inter partes reviews, so that the
`
`cross-examination and redirect examination may be usable in the reviews.
`
`
`
`
`
`
`
`6
`
`
`
`Cases IPR2014-00800, IPR2014-00802, and IPR2014-00805
`Patent 7,811,421 B2
`
`
`
`
`APPENDIX
`
`Pending inter partes reviews for
`U.S. Patent No. 7,811,421 B2
`
`Joinder Cases
`
`IPR2014-00800 (TSMC)
`
`IPR2014-00802 (TSMC)
`
`IPR2014-00805 (TSMC)
`
`
`
`
`
`IPR2014-00844 (Fujitsu),
`IPR2014-00991 (Gillette),
`IPR2014-01037 (AMD)
`
`IPR2014-00848 (Fujitsu),
`IPR2014-00992 (Gillette),
`IPR2014-01071 (AMD)
`
`IPR2014-00851 (Fujitsu),
`IPR2014-00990 (Gillette),
`IPR2014-01069 (AMD)
`
`
`
`7
`
`
`
`Cases IPR2014-00800, IPR2014-00802, and IPR2014-00805
`Patent 7,811,421 B2
`
`
`
`For PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`bbarker@chsblaw.com
`
`
`For PETITIONERS:
`
`TSMC and Fujitsu:
`
`David L. McCombs
`david.mccombs.ipr@haynesboone.com
`
`David M O’Dell
`david.odell.ipr@haynesboone.com
`
`Richard C. Kim
`rckim@duanemorris.com
`
`
`GlobalFoundries:
`
`David Tennant
`dtennant@whitecase.com
`
`Dohm Chankong
`dohm.chankong@whitecase.com
`
`
`Gillette:
`
`Michael A. Diener
`michael.diener@wilmerhale.com
`
`Larissa B. Park
`larissa.park@wilmerhale.com
`
`
`
`8
`
`
`
`Cases IPR2014-00800, IPR2014-00802, and IPR2014-00805
`Patent 7,811,421 B2
`
`
`AMD:
`
`David M. Tennant
`dtennant@whitecase.com
`
`Brian M. Berliner
`bberliner@omm.com
`
`Byan K. Yagura
`ryagura@omm.com
`
`Xin-Yi Zhou
`vzhou@omm.com
`
`
`
`9
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