`Trials@uspto.gov
`571-272-7822
`
` Entered: October 15, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FUJITSU SEMICONDUCTOR LIMITED and
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioner,
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-00846
`Patent 7,604,716 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`MEYER, Administrative Patent Judge.
`
`
`DECISION
`Granting Revised Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`
`
`IPR2014-00846
`Patent 7,604,716 B2
`
`
`
`
`
`
`INTRODUCTION
`Fujitsu Semiconductor Limited and Fujitsu Semiconductor America,
`Inc. (collectively, “Fujitsu”) filed a Petition requesting inter partes review of
`claims 14–18 and 25–32 of U.S. Patent No. 7,604,716 B2 (Ex. 1201,
`“the ’716 patent”). Paper 1 (“Pet.”). Pursuant to 37 C.F.R. § 42.122(b),
`Fujitsu also filed a revised Motion for Joinder, seeking to join the instant
`proceeding with Taiwan Semiconductor Manuf. Co. v. Zond, LLC., Case
`IPR2014-00807 (PTAB) (“IPR2014-00807”). Paper 9 (“Mot.”).
`Taiwan Semiconductor Manufacturing Company, Ltd. and TSMC
`North America Corp. (collectively, “TSMC”), the Petitioner in IPR2014-
`00807, does not oppose Fujitsu’s revised Motion for Joinder. Mot. 2. Patent
`Owner, Zond, LLC (“Zond”), filed a Preliminary Response to the Petition
`(Paper 8, “Prelim. Resp.”), and an Opposition to Fujitsu’s revised Motion for
`Joinder (Paper 10, “Opp.”). In a separate decision, we institute inter partes
`review as to the same claims on the same ground of unpatentability for
`which we instituted trial in IPR2014-00807. For the reasons set forth below,
`Fujitsu’s revised Motion for Joinder is granted.
`
`ANALYSIS
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
`284 (2011) (“AIA”) permits joinder of like review proceedings. The Board,
`acting on behalf of the Director, has the discretion to join an inter partes
`review with another inter partes review. See 35 U.S.C. § 315(c). Joinder
`may be authorized when warranted, but the decision to grant joinder is
`discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. When exercising its
`discretion, the Board is mindful that patent trial regulations, including the
`
`
`
`2
`
`
`
`IPR2014-00846
`Patent 7,604,716 B2
`
`
`
`
`
`
`rules for joinder, must be construed to secure the just, speedy, and
`inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b);
`37 C.F.R. § 42.1(b). The Board considers the impact of both substantive
`issues and procedural matters on the proceedings.
`As the moving party, Fujitsu bears the burden to show that joinder is
`appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). In its revised Motion for
`Joinder, Fujitsu contends that joinder, in this particular situation, is
`appropriate because: (1) “it is the most expedient way to secure the just,
`speedy, and inexpensive resolution of the related proceedings” (Mot. 5);
`(2) Fujitsu’s Petition is substantively identical to TSMC’s Petition filed in
`IPR2014-00807 (id. at 5–6); (3) Fujitsu agrees to consolidated filings and
`discovery (id. at 6–7); (4) joinder would not affect the schedule in
`IPR2014-00807 (id. at 7–8); (5) joinder would streamline the proceedings,
`reduce the costs and burdens on the parties, and increase efficiencies for the
`Board without any prejudice to Zond (id. at 8).
`We agree that the substantive issues in IPR2014-00807 would not be
`affected by joinder, because Fujitsu’s Petition is substantively identical to
`TSMC’s Petition filed in IPR2014-00807. Notably, Fujitsu’s Petition asserts
`identical grounds of unpatentability, challenging the same claims of the
`’716 patent. Compare Pet. 14–59, with IPR2014-00807, Paper 1 (“’807
`Pet.”), 14–59. Fujitsu also submits identical proposed claim constructions,
`as well as the same Declaration of Dr. Uwe Kortshagen. Compare Pet. 12–
`14, with ’807 Pet. 12–14; compare Ex. 1202, with ’807 Ex. 1202. Moreover,
`we institute the instant trial based on the same ground for which we
`instituted trial in IPR2014-00807. Therefore, Fujitsu’s Petition raises no
`new issues beyond those already before us in IPR2014-00807.
`3
`
`
`
`
`
`IPR2014-00846
`Patent 7,604,716 B2
`
`
`
`
`
`
`In its Opposition, Zond indicates that it is not opposed to joinder.
`Opp. 1. Rather, Zond proposes a procedure for the joined proceeding to
`consolidate the schedule, filings, and discovery. Opp. 2–3.
`We agree with the parties that conducting a single joined proceeding
`for reviewing claims 14–18 and 25–32 of the ’716 patent is more efficient
`than conducting multiple proceedings, eliminating duplicate filings and
`discovery. As previously indicated, Fujitsu agrees to consolidated filings for
`all substantive papers. Mot. 6–7. Fujitsu further indicates that it will not file
`any paper with arguments separate from those advanced by the consolidated
`filings, eliminating duplicate briefing. Id. at 7. Fujitsu further agrees to
`consolidated discovery, as each Petitioner proffers the same Declaration of
`Dr. Kortshagen. Id. Fujitsu indicates that Petitioners collectively will
`designate an attorney to conduct the cross-examination of any witnesses
`produced by Zond and the redirect of any witnesses produced by Petitioners,
`within the timeframe normally allotted by the rules for one party. Id.
`Moreover, joinder will not require any change to the trial schedule in
`IPR2014-00807, allowing the trial still to be completed within one year. Id.
`at 7–8. Given that Fujitsu’s Petition raises no new issues, and Petitioners
`agree to consolidated filings and discovery, the impact of joinder on
`IPR2014-00807 will be minimal, and joinder will streamline the
`proceedings, reducing the costs and burdens on the parties and the Board.
`For the foregoing reasons, Fujitsu has met its burden of demonstrating
`that joinder of the instant proceeding with IPR2014-00807 is warranted
`under the circumstances.
`
`
`
`4
`
`
`
`IPR2014-00846
`Patent 7,604,716 B2
`
`
`
`
`ORDER
`
`
`
`Accordingly, it is:
`ORDERED that Fujitsu’s Motion for Joinder with IPR2014-00807 is
`granted;
`FURTHER ORDERED that the instant proceeding is joined with
`IPR2014-00807;
`FURTHER ORDERED that the grounds of unpatentability on which a
`trial was instituted in IPR2014-00807 are unchanged;
`FURTHER ORDERED that the Scheduling Order for IPR2014-00807
`(Paper 11) shall govern the joined proceeding; the initial conference call for
`the joined proceeding is scheduled on November 20, 2014 at 3:00 PM ET;
`FURTHER ORDERED that the instant proceeding is instituted,
`joined, and terminated under 37 C.F.R. § 42.72, and all further filings in the
`joined proceeding shall be made only in IPR2014-00807;
`FURTHER ORDERED that, throughout IPR2014-00807, Petitioners
`(TSMC and Fujitsu) will file papers, except for motions which do not
`involve the other parties, as consolidated filings1; TSMC will identify each
`such filing as a consolidated filing and will be responsible for completing all
`consolidated filings; the page limits set forth in 37 C.F.R. § 42.24 will apply
`to all consolidated filings; no individual Petitioner will receive any
`additional pages in addition to the page limits set forth in 37 C.F.R. § 42.24
`for one party;
`
`
`1 The parties are directed to the Board’s website, in particular FAQs C3, D5,
`and G8, for information regarding filings in the Patent Review Processing
`System (PRPS). See http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`5
`
`
`
`
`
`IPR2014-00846
`Patent 7,604,716 B2
`
`
`
`
`
`
`FURTHER ORDERED that Zond will conduct the cross-examination
`of witnesses, as well as the redirect examination of any witness it produces,
`in the timeframes set forth in 37 C.F.R. § 42.53(c);
`FURTHER ORDERED that Petitioners collectively will designate
`attorneys to conduct the cross-examination of any witnesses produced by
`Zond and the redirect examination of any witnesses produced by Petitioners,
`within the timeframes set forth in 37 C.F.R. § 42.53(c) for one party; no
`individual Petitioner will receive any cross-examination or redirect
`examination time in addition to the time normally allotted by 37 C.F.R.
`§ 42.53(c) for one party;
`FURTHER ORDERED that Petitioners collectively will designate
`attorneys to present at the oral hearing (if requested) as a consolidated
`presentation;
`FURTHER ORDERED that the case caption in IPR2014-00807 shall
`be changed to reflect the joinder with the instant proceeding in accordance
`with the attached example; and
`FURTHER ORDERED that a copy of this Decision be entered into
`the file of IPR2014-00807.
`
`
`
`
`6
`
`
`
`IPR2014-00846
`Patent 7,604,716 B2
`
`
`
`
`
`
`For PETITIONER:
`David McCombs
`david.mccombs.ipr@haynesboone.com
`
`David M. O’Dell
`david.odell.ipr@haynesboone.com
`
`Richard C. Kim
`rckim@duanemorris.com
`
`PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`bbarker@chsblaw.com
`
`
`
`
`
`
`7
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
`TSMC NORTH AMERICA CORP., FUJITSU SEMICONDUCTOR
`LIMITED, and FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-008071
`Patent 7,604,716 B2
`____________
`
`
`1 Case IPR2014-00846 has been joined with the instant proceeding.
`
`
`
`