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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
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`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD. and
`TSMC NORTH AMERICA CORP.
`Petitioner
`
`v.
`
`ZOND, INC.
`Patent Owner
`
`Case IPR2014-00807
`U.S. PATENT NO. 7,604,716
`CLAIMS 14-18, 25-32
`Title: Methods and apparatus for generating high-density plasma
`____________________________________________
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`
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`__________________________________________________________________
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`
`PETITIONER’s MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c)
`AND 37 C.F.R. § 42.22 AND § 42.122(b)
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`Petitioner's Motion for Joinder (IPR2014-00807)
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`INTRODUCTION
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`Taiwan Semiconductor Manufacturing Co., Ltd and TSMC North America
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`Corp. (“TSMC”) filed the present petition for inter partes review IPR2014-00807
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`(the “TSMC IPR”) and hereby moves for joinder of the TSMC IPR with IPR2014-
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`00522, filed by Intel Corporation (the “Intel IPR”). The TSMC IPR is identical to
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`the Intel IPR in all substantive respects, includes identical exhibits, and relies upon
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`the same expert declarant. Intel Corporation does not oppose this motion.
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`BACKGROUND AND RELATED PROCEEDINGS
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`
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`The TSMC IPR and Intel IPR are among a family of inter partes review
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`proceedings relating to seven patents that are being asserted by Zond, Inc.
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`(“Zond”) against numerous defendants in the District of Massachusetts: 1:13-cv-
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`11570-RGS (Zond v. Intel Corp.); 1:13-cv-11577-DPW (Zond v. AMD, Inc., et al);
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`1:13-cv-11581-DJC (Zond v. Toshiba Am. Elec. Comp. Inc.); 1:13-cv-11625-NMG
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`(Zond v. Renesas Elec. Corp.); 1:13-cv-11634-WGY (Zond v. Fujitsu1 and TSMC);
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`and 1:13-cv-11567-DJC (Zond v. Gillette, Co.).
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`In particular, a first complaint in 1:13-cv-11570-RGS (Zond v. Intel) was
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`served on defendant Intel Corporation on July 9, 2013, and a first complaint in
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`1:13-cv-11634-WGY (Zond v. Fujitsu and TSMC) was served on defendants
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`1 “Fujitsu” as used herein refers to Fujitsu Semiconductor Limited and Fujitsu
`Semiconductor America, Inc., collectively.
`2
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`Petitioner's Motion for Joinder (IPR2014-00807)
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`Fujitsu and TSMC on July 9, 2013 and September 5, 2013, respectively.
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`Accordingly, all petitions for inter partes review that have been filed by defendants
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`Intel, TSMC, and Fujitsu are timely as prescribed by 35 U.S.C. § 315(b).
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`On April 18, 2014, in 1:13-cv-11570-RGS (Zond v. Intel), the Court entered
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`an order granting Intel’s Motion to Stay pending inter partes review, indicating the
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`Court will benefit from the expert claim analysis of the PTO.
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`On June 2, 2014, as clarified on June 3, 2014, in 1:13-cv-11634-WGY (Zond
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`v. Fujitsu and TSMC), the Court entered an order to administratively close the case
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`pending conclusion of inter partes reviews or until May 9, 2016, whichever shall
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`occur first.
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`Currently, the family of inter partes review proceedings relating to the seven
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`Zond patents (the “Zond IPRs”) consists of the following proceedings that involve
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`Intel, TSMC, and Fujitsu:2
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`
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`2 Gillette Co. filed petitions for inter partes review of other patents asserted by
`Zond in 1:13-cv-11567-DJC (Zond v. Gillette, Co.), namely IPR2014-00477 and
`IPR2014-00479 (U.S. Patent No. 8,125,155); IPR2014-00580 and IPR2014-00726
`(U.S. Patent No. 6,896,773); and IPR2014-00578 and IPR2014-00604 (U.S. Patent
`No. 6,896,775). Other Gillette filings are ongoing.
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`3
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`Petitioner's Motion for Joinder (IPR2014-00807)
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`Intel IPRs
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`TSMC IPRs
`
`Fujitsu IPRs
`
`Claims
`
`Patent
`
`Intel
`
`Intel
`
`TSMC
`
`TSMC
`
`Fujitsu
`
`Fujitsu
`
`Ref
`
`Filed
`
`Ref
`
`Filed
`
`Ref
`
`Filed
`
`Claims in IPR
`
`6805779
`
`2014-
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`5/16/14 2014-
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`5/28/14 2014-
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`5/30/14 30-37, 39-40
`
`00765
`
`00828
`
`00856
`
`2014-
`
`5/27/14 2014-
`
`5/28/14 2014-
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`5/30/14 16, 28, 41, 42, 45, 46
`
`00820
`
`00829
`
`00859
`
`2014-
`
`4/9/14
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`1-4, 10-15, 17, 18, 24-
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`00598
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`27, 29
`
`2014-
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`4/24/14
`
`n/a
`
`n/a
`
`n/a
`
`n/a
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`5, 6, 8, 19, 22, 23, 43
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`00686
`
`2014-
`
`6/6/14 2014-
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`6/9/14 2014-
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`6/9/14 7, 9, 20, 21, 38, 44
`
`00913
`
`00917
`
`00918
`
`6806652
`
`2014-
`
`5/29/14 2014-
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`5/30/14 2014-
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`5/30/14
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`18-34
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`00843
`
`00861
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`00864
`
`2014-
`
`6/12/14
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`00945
`
`2014-
`
`6/10/14
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`00923
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`1-17
`
`35
`
`6853142
`
`2014-
`
`3/13/14 2014-
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`5/27/14 2014-
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`5/30/14 1, 3-10, 12, 15, 17-20,
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`00494
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`00818
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`00866
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`42
`
`2014-
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`3/13/14 2014-
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`5/27/14 2014-
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`5/30/14 2, 11, 13, 14, 16
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`00495
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`00821
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`00863
`
`2014-
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`3/13/14 2014-
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`5/27/14 2014-
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`5/30/14 21, 24, 26-28, 31, 32,
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`00496
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`00819
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`00867
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`37, 38
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`2014-
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`3/13/14 2014-
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`5/28/14 2014-
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`5/30/14 22, 23, 25, 29, 30, 33-
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`00497
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`00827
`
`00865
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`36, 39, 43
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`2014-
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`3/13/14
`
`n/a
`
`n/a
`
`n/a
`
`n/a
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`40, 41
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`00498
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`
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`
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`4
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`Petitioner's Motion for Joinder (IPR2014-00807)
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`Intel IPRs
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`TSMC IPRs
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`Fujitsu IPRs
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`Claims
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`Patent
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`Intel
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`Intel
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`TSMC
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`TSMC
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`Fujitsu
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`Fujitsu
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`Ref
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`Filed
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`Ref
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`Filed
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`Ref
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`Filed
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`Claims in IPR
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`7147759
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`2014-
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`3/6/14 2014-
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`5/19/14 2014-
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`5/29/14 20, 21, 34-36, 38, 39,
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`00445
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`00781
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`00845
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`47, 49
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`2014-
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`3/6/14 2014-
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`5/19/14 2014-
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`5/29/14 22-33, 37, 46, 48, 50
`
`00446
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`00782
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`00850
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`2014-
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`3/6/14
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`n/a
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`n/a
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`n/a
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`n/a
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`1, 4, 10-12, 17, 18, 44
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`00443
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`2014-
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`3/6/14
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`n/a
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`n/a
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`n/a
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`n/a
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`2, 3, 5-9, 13-16, 19, 41-
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`00444
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`43, 45
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`2014-
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`3/6/14
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`n/a
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`n/a
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`n/a
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`n/a
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`40
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`00447
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`7604716
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`2014-
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`3/27/14 2014-
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`5/23/14 2014-
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`5/29/14 14-18, 25-32
`
`00807
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`00846
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`00522
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`2014-
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`3/27/14 2014-
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`5/23/14 2014-
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`5/29/14 19-24
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`00523
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`00808
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`00849
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`2014-
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`3/27/14
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`n/a
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`n/a
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`n/a
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`n/a
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`1-11, 33
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`00520
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`2014-
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`3/27/14
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`n/a
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`n/a
`
`n/a
`
`n/a
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`12, 13
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`00521
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`7808184
`
`2014-
`
`3/7/14 2014-
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`5/22/14 2014-
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`5/30/14 1-5, 11-15
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`00455
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`00799
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`00855
`
`2014-
`
`3/7/14 2014-
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`5/22/14 2014-
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`5/30/14 6-10, 16-20
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`00456
`
`00803
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`00858
`
`7811421
`
`2014-
`
`3/7/14 2014-
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`5/22/14 2014-
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`5/29/14 1, 2, 8, 10-13, 15-17,
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`00468
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`00800
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`00844
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`22-25, 27-30, 33, 34,
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`38, 39, 42, 43, 46-48
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`2014-
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`3/7/14 2014-
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`5/22/14 2014-
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`5/29/14 9, 14, 21, 26, 35, 37
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`00470
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`00802
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`00848
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`2014-
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`3/7/14 2014-
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`5/23/14 2014-
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`5/30/14 3-7, 18-20, 31, 32, 36,
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`00473
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`00805
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`00851
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`40, 41, 44, 45
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`5
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`Petitioner's Motion for Joinder (IPR2014-00807)
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`The petitions for IPR filed by TSMC and by Fujitsu correspond exactly to
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`the petitions first filed by Intel against the same patent claims, and are identical to
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`the Intel petitions in all substantive respects. They include identical grounds,
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`analysis, and exhibits and rely upon the same expert declarants and declarations.
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`In addition to this motion, TSMC and Fujitsu are presently filing motions for
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`joinder of each of their Zond IPR petitions with the corresponding petitions first
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`filed by Intel, subject to the same conditions sought by this motion. Intel does not
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`oppose the TSMC and Fujitsu motions.
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`
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`In its May 29, 2014 Order (Paper 5) in IPR2014-00781 and IPR2014-00782,
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`the Board articulated that prior authorization for filing a motion for joinder is not
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`required if sought prior to one month after the institution date of any inter partes
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`review for which joinder is requested. See 37 C.F.R. § 42.422(b). That order
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`resulted from a May 27, 2014 Board conference call initiated by TSMC and
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`attended by Zond and Intel. TSMC advised the Board that multiple Zond IPR
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`petitions were in the process of being filed and sought guidance from the Board on
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`filing of motions for joinder that will minimize the burden on the Board and help
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`streamline the proceedings.
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`Since the May 29, 2014 Order, petitioners Intel, TSMC, and Fujitsu have
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`completed their filings of the Zond IPR petitions identified above, directed to all
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`seven patents in the District of Massachusetts litigation.
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`6
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`Petitioner's Motion for Joinder (IPR2014-00807)
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`DISCUSSION
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`If the Director institutes an inter partes review, TSMC respectfully requests
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`that the Board exercise its discretion to grant joinder of the TSMC IPR and Intel
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`IPR proceedings pursuant to 35 U.S.C. § 315(c), 37 C.F.R. § 42.22, and 37 C.F.R.
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`§ 42.122(b). In support of this motion, TSMC proposes consolidated filings and
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`other procedural accommodations designed to streamline the proceedings.
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`1. Reasons Why Joinder is Appropriate
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`Joinder is appropriate in this case because it is the most expedient way to
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`secure the just, speedy, and inexpensive resolution of the related proceedings. See
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`35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). Intentionally, the TSMC IPR is
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`substantively identical to the corresponding Intel IPR in an effort to avoid
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`multiplication of issues before the Board. Given the duplicative nature of these
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`petitions, joinder of the related proceedings is appropriate. Further, TSMC will
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`agree to consolidated filings and discovery, and procedural concessions, which
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`Intel does not oppose.
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`a. Substantively Identical Petitions
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`TSMC represents that the TSMC IPR is identical to the Intel IPR in all
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`substantive respects. It includes identical grounds, analysis, and exhibits and relies
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`upon the same expert declarant and declaration. Accordingly, if instituted,
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`7
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`Petitioner's Motion for Joinder (IPR2014-00807)
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`maintaining the TSMC IPR proceeding separate from that of Intel would entail
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`needless duplication of effort.
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`b. Consolidated Filings and Discovery
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`Because the grounds of unpatentability in the TSMC IPR and Intel IPR are
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`the same, the case is amenable to consolidated filings. TSMC will agree to
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`consolidated filings for all substantive papers in the proceeding (e.g., Reply to the
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`Patent Owner’s Response, Opposition to Motion to Amend, Motion for
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`Observation on Cross Examination Testimony of a Reply Witness, Motion to
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`Exclude Evidence, Opposition to Motion to Exclude Evidence and Reply).
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`Specifically, TSMC will agree to incorporate its filings with those of Intel in a
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`consolidated filing, subject to the ordinary rules for one party on page limits. Intel
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`and TSMC will be jointly responsible for the consolidated filings.
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`TSMC agrees not to be permitted any arguments separate from those
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`advanced by TSMC and Intel in the consolidated filings. These limitations avoid
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`lengthy and duplicative briefing.
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`Consolidated discovery is also appropriate given that TSMC and Intel are
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`using the same expert declarant who has submitted the same, identical declaration
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`in the two proceedings. TSMC and Intel will designate an attorney to conduct the
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`cross-examination of any given witness produced by Zond and the redirect of any
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`given witness produced by TSMC or Intel within the timeframe normally allotted
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`8
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`Petitioner's Motion for Joinder (IPR2014-00807)
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`by the rules for one party. TSMC and Intel will not receive any separate cross-
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`examination or redirect time.
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`2. No New Grounds of Unpatentability
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`The TSMC IPR raises no new grounds of unpatentability from those of the
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`Intel IPR because, in fact, the petitions are identical.
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`3. No Impact on IPR Trial Schedule
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`The small difference between the filing date of the TSMC IPR and the Intel
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`IPR is without consequence should the proceedings be joined. The trial schedule
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`for the Intel IPR would not need to be delayed to effect joinder based on Zond’s
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`preliminary response and later-filed TSMC IPR. The joint proceeding would allow
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`the Board and parties to focus on the merits in one consolidated proceeding
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`without unnecessary duplication of effort, and in a timely manner.
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`4. Briefing and Discovery Will Be Simplified
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`Joinder will simplify briefing and discovery because TSMC seeks an order
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`similar to that issued in Motorola Mobility LLC v. Softview LLC, IPR2013-00256
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`(PTAB June 20, 2013) (Paper 10). As discussed above, TSMC and Intel will
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`engage in consolidated filings and discovery, which will simplify the briefing and
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`discovery process.
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`9
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`Petitioner's Motion for Joinder (IPR2014-00807)
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`5. No Prejudice to Zond if Proceedings are Joined
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`TSMC proposes joinder to streamline the proceedings and reduce the costs
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`and burdens on the parties. TSMC believes joinder will achieve these goals for
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`several reasons. First, joinder will most certainly decrease the number of papers
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`the parties must file, by eliminating a duplicative proceeding. Second, joinder will
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`also reduce by half the time and expense for depositions and other discovery
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`required in separate proceedings. Third, joinder creates case management
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`efficiencies for the Board and parties without any prejudice to Zond.
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`PROPOSED ORDER
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`Petitioner proposes a joinder order for consideration by the Board as
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`follows, which Intel does not oppose:
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`• If review is instituted on any ground in the Intel IPR, the TSMC IPR
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`will be instituted and will be joined with the Intel IPR on the same
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`grounds. Grounds not instituted because the Intel IPR failed to
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`establish a reasonable likelihood of prevailing, if any, will be similarly
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`denied in the TSMC IPR.
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`• The scheduling order for the Intel IPR will apply for the joined
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`proceeding.
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`• Throughout the proceeding, Intel and TSMC will file papers as
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`consolidated filings, except for motions that do not involve the other
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`10
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`Petitioner's Motion for Joinder (IPR2014-00807)
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`party, in accordance with the Board's established rules regarding page
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`limits. So long as they both continue to participate in the merged
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`proceeding, Intel and TSMC will identify each such filing as a
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`Consolidated Filing and will be responsible for completing all
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`consolidated filings.
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`• Intel and TSMC will designate an attorney to conduct the cross
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`examination of any given witness produced by Zond and the redirect
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`of any given witness produced by Intel or TSMC within the timeframe
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`normally allotted by the rules for one party. Intel and TSMC will not
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`receive any separate cross-examination or redirect time.
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`• Zond will conduct any cross examination of any given witness jointly
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`produced by Intel or TSMC and the redirect of any given witness
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`produced by Zond within the timeframe normally allotted by the rules
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`for one cross-examination or redirect examination.
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`CONCLUSION
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`For the foregoing reasons, if the Director institutes inter partes review,
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`TSMC respectfully requests that the Board grant joinder of the TSMC IPR and
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`Intel IPR proceedings.
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`Petitioner's Motion for Joinder (IPR2014-00807)
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`Respectfully submitted,
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`/David L. McCombs/
`David L. McCombs
`Reg. No. 32,271
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`Counsel for Petitioner
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`Date: June 30, 2014
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`HAYNES AND BOONE, LLP.
`2323 VICTORY AVENUE SUITE 700
`DALLAS TEXAS 75219
`TEL: (214) 651-5533
`FAX: (214) 200-0853
`EMAIL: david.mccombs.ipr@haynesboone.com
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`Petitioner's Motion for Joinder (IPR2014-00807)
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`CERTIFICATE OF SERVICE
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`
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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 "PETITIONER’S
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`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22
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`AND 42.122(b)” as detailed below:
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`Date of service June 30, 2014
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`Manner of service Email: gonsalves@gonsalveslawfirm.com;
`bbarker@chsblaw.com; kurt@rauschenbach.com
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`Documents served PETITIONER’S MOTION FOR JOINDER UNDER 35
`U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
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`Persons Served Dr. Gregory J. Gonsalves
`2216 Beacon Lane
`Falls Church, Virginia 22043
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`Bruce Barker
`Chao Hadidi Stark & Barker LLP
`176 East Mail Street, Suite 6
`Westborough, MA 01581
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`
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`
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`/David L. McCombs/
`David L. McCombs
`Registration No. 32,271
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