`Trials@uspto.gov
`571-272-7822
`
` Entered: October 16, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`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,
`Petitioners,
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01065
`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
`
`
`
`
`
`
`IPR2014-01065
`Patent 7,604,716 B2
`
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`I. INTRODUCTION
`Petitioners (collectively, “AMD”) filed a Petition requesting inter
`partes review of claims 14–18 and 25–32 (“the challenged claims”) 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), AMD 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”) and Fujitsu Semiconductor
`Limited and Fujitsu Semiconductor America, Inc. (collectively, “Fujitsu”),
`the First Petitioner and Second Petitioner, respectively, in the joined
`proceeding IPR2014-00807, do not oppose AMD’s revised Motion for
`Joinder. Mot. 1. Patent Owner, Zond, LLC (“Zond”), filed a Preliminary
`Response to the Petition (Paper 7, “Prelim. Resp.”) and an Opposition to
`AMD’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, AMD’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
`
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`IPR2014-01065
`Patent 7,604,716 B2
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`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
`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, AMD 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, AMD 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. 6);
`(2) AMD’s Petition is substantively identical to TSMC’s Petition filed in
`IPR2014-00807 (id. at 7); (3) AMD agrees to consolidated filings and
`discovery (id. at 7–8); (4) joinder would not affect the schedule in
`IPR2014-00807 (id. at 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 8–9).
`We agree that the substantive issues in IPR2014-00807 would not be
`affected by joinder, because AMD’s Petition is substantively identical to
`TSMC’s Petition filed in IPR2014-00807. Notably, AMD’s Petition asserts
`identical grounds of unpatentability, challenging the same claims of the ’716
`patent. Compare Pet. 13–60, with IPR2014-00807, Paper 1 (“’807 Pet.”),
`14–59. AMD also submits identical proposed claim constructions, as well as
`the same Declaration of Dr. Uwe Kortshagen. Compare Pet. 11–13, with
`’807 Pet. 12–14; compare Ex. 1202, with ’807 Ex. 1202. Moreover, we
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`IPR2014-01065
`Patent 7,604,716 B2
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`institute the instant trial based on the same ground for which we instituted
`trial in IPR2014-00807. Therefore, AMD’s Petition raises no new issues
`beyond those already before us in IPR2014-00807.
`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, AMD agrees to consolidated filings for
`all substantive papers. Mot. 7. AMD further indicates that it will not file
`any paper with arguments separate from those advanced by the consolidated
`filings, eliminating duplicate briefing. Id. AMD further agrees to
`consolidated discovery, as each Petitioner proffers the same Declaration of
`Dr. Kortshagen. Id. at 8. AMD 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.
`Given that AMD’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.
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`IPR2014-01065
`Patent 7,604,716 B2
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`For the foregoing reasons, AMD has met its burden of demonstrating
`that joinder of the instant proceeding with IPR2014-00807 is warranted
`under the circumstances.
`
`ORDER
`
`Accordingly, it is:
`ORDERED that AMD’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, Fujitsu, and AMD) 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.
`
`
`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.
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`IPR2014-01065
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`§ 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;
`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.
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`IPR2014-01065
`Patent 7,604,716 B2
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`For PETITIONER:
`
`Robinson Vu
`BAKER BOTTS LLP
`robinson.vu@bakerbotts.com
`
`Brian M. Berliner
`bberliner@omm.com
`
`Ryan K. Yagura
`ryagura@omm.com
`
`Xin-Yi Zhou
`vzhou@omm.com
`
`John Feldhaus
`jfeldhaus@foley.com
`
`Pavan K. Agarwal
`pagarwal@foley.com
`
`John J. Feldhaus
`jfeldhaus@foley.com
`
`Mike R. Houston
`mhouston@foley.com
`
`David M. Tennant
`dtennant@whitecase.com
`
`PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`CHAO HADIDI STARK & BARKER LLP
`bbarker@chsblaw.com
`
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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 CORP., 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., and TOSHIBA CORPORATION
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-008071
`Patent 7,604,716 B2
`____________
`
`
`
`
`1 Cases IPR2014-00846 and IPR2014-01065 have been joined with the
`instant proceeding.
`
`
`
`