Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00803 (U.S. 7,808,184)
`
`Paper No.
`
`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
`____________________________________________
`
`Case IPR2014-008031
`Patent 7,808,184 B2
`____________________________________________
`
`PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION
`PURSUANT TO 37 C.F.R. § 42.10(C)
`
`1 Case IPR2014-00858 has been joined with the instant proceeding.
`
`
`IPR2014-00803 (U.S. 7,808,184)
`
`Paper No.
`
`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
`____________________________________________
`
`Case IPR2014-008031
`Patent 7,808,184 B2
`____________________________________________
`
`PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION
`PURSUANT TO 37 C.F.R. § 42.10(C)
`
`1 Case IPR2014-00858 has been joined with the instant proceeding.
`
`
`
`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00803 (U.S. 7,808,184)
`
`This Motion for Pro Hac Vice admission is filed solely on behalf of Taiwan
`
`Semiconductor Manufacturing Company, Ltd. and TSMC North America
`
`Corporation (collectively “TSMC” or “Petitioner”). TSMC respectfully moves
`
`that the Board recognize Mr. Anthony J. Fitzpatrick as counsel pro hac vice during
`
`this proceeding.
`
`1. Time for Filing
`
`This Motion for Pro Hac Vice Admission is being filed no sooner than
`
`twenty one (21) days after service of the petition. (IPR2013-00639, Paper No. 7).
`
`2. Statement of Facts Showing Good Cause for Counsel Pro Hac Vice
`
`Petitioner has been authorized to file motions seeking admission pro hac
`
`vice under 37 C.F.R. 42.10(c). (Paper No. 3). Petitioner’s lead and back-up
`
`counsel are registered practitioners:
`
`Lead Counsel:
`
`David M. O’Dell, USPTO Reg. No. 42,044; and
`
`Backup Counsel: David L. McCombs, USPTO Reg. No. 32,271.
`
`The following statement of facts shows that there is good cause for the
`
`Board to recognize Mr. Fitzpatrick pro hac vice on behalf of Petitioner.
`
`In summary, Mr. Fitzpatrick is an experienced litigator, has established
`
`familiarity with the subject matter at issue in this proceeding from his participation
`
`in co-pending litigation involving the subject patent, and if admitted, will be
`
`–1–
`
`
`
`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00803 (U.S. 7,808,184)
`
`involved in the depositions that occur in this proceeding. Specifically, U.S. Patent
`
`No. 7,808,184 is currently asserted against Petitioner in co-pending litigation, in
`
`the District of Massachusetts, 1:13-cv-11634-WGY (Zond v. Fujitsu, et al.) (“the
`
`co-pending litigation”). Mr. Fitzpatrick is a member of the Massachusetts bar in
`
`good standing, and is representing the Petitioner, in the co-pending litigation.
`
`Mr. Fitzpatrick has analyzed prior art references and claim charts in
`
`connection with invalidity contentions and has been involved in forming claim
`
`construction positions related to the claimed inventions, all of which are relevant to
`
`the petition requesting inter partes review of U.S. Patent No. 7,808,184. Petitioner
`
`wishes to apply Mr. Fitzpatrick’s knowledge of the patent by employing him as
`
`counsel in this proceeding. Admission of Mr. Fitzpatrick pro hac vice will enable
`
`Petitioner to avoid unnecessary expense and duplication of work between this
`
`proceeding and the co-pending litigation.
`
`Petitioner’s lead and backup counsel are registered practitioners and Mr.
`
`Fitzpatrick is an experienced litigation attorney having familiarity with the subject
`
`matter at issue in this proceeding. Therefore, Petitioners respectfully submit that
`
`there is good cause for the Board to recognize Mr. Fitzpatrick as counsel pro hac
`
`vice during this proceeding.
`
`–2–
`
`
`
`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00803 (U.S. 7,808,184)
`
`3. Affidavit of Individual Seeking to Appear
`
`This Motion for Pro Hac Vice Admission is supported by an Affidavit of
`
`Mr. Fitzpatrick (Ex. 1124).
`
`Date: October 28, 2014
`
`Respectfully submitted,
`
`/David M. O’Dell/
`David M. O’Dell
`Lead Counsel for Petitioner TSMC
`Registration No. 42,044
`
`–3–
`
`
`
`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00803 (U.S. 7,808,184)
`
`Petitioners’ Updated Exhibit List
`October 28, 2014
`
`Description
`U.S. Patent No. 7,808,184 (“the ‘184 Patent”)
`
`Declaration of Dr. Richard DeVito (“DeVito Decl.”)
`
`D.V. Mozgrin and V.N. Skerbov, 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”)
`
`A. A. Kudryavtsev, et al, Ionization relaxation in a plasma
`produced by a pulsed inert-gas discharge, Sov. Phys. Tech.
`Phys. 28(1), pp. 30-35, January 1983 (“Kudryavtsev”)
`
`U.S. Pat. No. 6,413,382 (“Wang”)
`
`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 for Mozgrin Thesis
`
`File History for U.S. Pat. No. 7,808,184, Office Action of
`December 8, 2009 (“12/08/09 Office Action”)
`
`File History for U.S. Pat. No. 7,808,184, Response dated June
`3, 2010 (“06/03/10 Response”)
`
`File History for U.S. Pat. No. 7,808,184, Notice of
`Allowance, (“06/28/10 Notice of Allowance”)
`
`Plasma Etching: An Introduction, by Manos and Flamm, pp.
`185-258, Academic Press (1989) (“Manos”)
`
`–4–
`
`Exhibit
`
`1101
`
`1102
`
`1103
`
`1104
`
`1105
`
`1106
`
`1107
`
`1108
`
`1109
`
`1110
`
`1111
`
`1112
`
`
`
`1113
`
`1114
`
`1115
`
`1116
`
`1117
`
`1118
`
`1119
`
`1120
`
`1121
`
`1122
`
`1123
`
`1124
`
`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00803 (U.S. 7,808,184)
`
`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”)
`
`J. T. Gudmundsson et al., Evolution of the electron energy
`distribution and plasma parameters in a pulsed magnetron
`discharge, Applied Physics Letters, 78(22), pp. 3427-3429,
`2001 (“Gudmundsson”)
`
`J. A. Thornton Magnetron sputtering: basic physics and
`application to cylindrical magnetrons, J. Vac. Sci. Technol.,
`15(2), pp. 171-177,1978 (“Thornton”)
`
`European Patent Application 1560943, Response of April 21,
`2008 (“04/21/08 Response in EP 1560943”)
`
`Leipold et al., High Electron Density, Atmospheric Pressure
`Air Glow Discharges, IEEE, pp. 130-133, (2002) (“Leipold”)
`
`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 the
`Mozgrin Thesis”)
`
`Claim Chart Based on Wang and Kudryavtsev as used in
`1:13-cv-11570-RGS (“Claim Chart based on Wang and
`Kudryavtsev”)
`
`Claim Chart Based on Wang, Kudryavtsev and Mozgrin as
`used in 1:13-cv-11570-RGS (“Claim Chart based on Wang,
`Kudryavtsev and Mozgrin”)
`
`List of Related Litigations
`
`Affidavit of Mr. Fitzpatrick in Support of Motion for Pro Hac
`Vice Admission
`
`–5–
`
`
`
`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00803 (U.S. 7,808,184)
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
`
`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
`
`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 1124.
`
`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 M. O’Dell/
`David M. O’Dell
`Lead Counsel for Petitioner TSMC
`Registration No. 42,044
`
`–6–
`
`
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